International Copyright: Principles, Law, and Practice

International Copyright:Principles, Law, and Practice

Paul Goldstein

OXFORD UNIVERSITY PRESS

International Copyright

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Principles, Law, and Practice

12001

International Copyright

�

Paul Goldstein

Lillick Professor of Law

Stanford University

3Oxford New York

Athens Auckland Bangkok Bogotá Buenos Aires CalcuttaCape Town Chennai Dar es Salaam Delhi Florence Hong Kong Istanbul

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Copyright © 2001 by Paul Goldstein

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All rights reserved. No part of this publication may be reproduced,stored in a retrieval system, or transmitted, in any form or by any means,

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Library of Congress Cataloging-in-Publication DataGoldstein, Paul, 1943–

International copyright : principles, law, and practice /Paul Goldstein.

p. cm.Includes index.

ISBN 0-19-512885-01. Copyright. 2. Copyright, International. I. Title.

K1420.5 .G65 2000341.7'582—dc21 00-024776

1 3 5 7 9 8 6 4 2

Printed in the United States of Americaon acid-free paper

To Jan and Elizabeth

preface

This book surveys the law of copyright between and among nations. Apartfrom applicable legal rules, the book describes the practices that animateinternational copyright and the principles that underlie it. The practicinglawyer engaged in licensing or litigating a copyrighted work abroad, or over-seeing the exploitation of a foreign work in his own country, will find guid-ance in these pages; so too will the researcher or student who wants to under-stand the forces that shape the copyright and neighboring rights laws of othercountries and that control their interplay in the international system.

National laws on copyright and neighboring rights are far more similarthan they are different, a fact that makes it possible to treat the laws of manycountries in a single volume. Widespread adherence to the Berne Conven-tion for the Protection of Literary and Artistic Works explains much of thisharmony—140 countries today belong to the Berne Union—and the con-vergence of national law promises to grow closer still, as the TRIPs Agree-ment, with 135 adherents, brings national laws into more immediate com-pliance with Berne norms as well as with norms introduced by the TRIPsAgreement itself. For those cases where national laws diverge, the bookclosely analyzes the rules of private international law to guide determina-tions of applicable law.

Because of the connection it connotes between one legal culture and an-other, no attribute of a legal rule or principle is more satisfying than univer-sality. A handful of universal principles underpin national copyright laws.One is the axiom that copyright law will protect only original expression,leaving ideas—the building blocks of creativity—free for all to use. Legisla-tion or case law in every country holds that a literary work’s themes, plots,and stock characters are unprotectible, as are discrete colors and shapes invisual art, and rhythm, notes and harmony in music. Every national lawrecognizes that to give one author a monopoly over such fundamental cre-

ative elements would overreward that author while at the same time stunt-ing the efforts of later authors.

A second universal principle, freedom of contract, informs copyright trans-actions around the world. It is widely thought that contractual freedom is theprevailing norm only in common law countries and that civil law countries,by contrast, regulate copyright contracts closely. In fact, and as a rule, courtseverywhere enforce copyright contracts according to their terms. Legislaturesand courts have, to be sure, carved out exceptions to freedom of contract, butthese exceptions are no more evident in civil law countries than in commonlaw countries. The German Copyright Act, for example, will invalidate at-tempted transfers of the right to exploit a work in unknown technologies, butthis exception to the prevailing German norm of contractual freedom differsonly in degree from the general presumption against such transfers in theUnited States and, indeed, is a less severe inroad on freedom of contract thanprovisions in the United States Copyright Act giving authors a nonwaivableright to terminate their copyright transfers after a prescribed period.

Writers commonly identify the “author’s right” tradition of civil law coun-tries with principles of natural right and the “copyright” tradition of com-mon law countries with principles of utilitarianism. Whatever force this di-vision may once have had—and it is not clear that the division was ever morethan symbolic—it surely has little practical or intellectual force today. Anexplicit natural rights strain did not emerge in the literature on authors’rights until late in the nineteenth century, well after the first enactment ofcopyright laws on the European continent; almost a century earlier, a dis-tinctly utilitarian ideology was already at play in the French revolutionarycopyright laws. Similarly, while an indisputably utilitarian thread runsthrough much of the intellectual history of English and American copyright,so too does a vibrant motif that the author has a natural right to profit fromhis ingenuity and labor. The history of the legislative process in civil law andcommon law countries reveals that if philosophic inclinations play any roleat all in copyright lawmaking, the more accurate division is between theprinciples that motivate the creation of new rights and the principles thatinform the limitations on these rights. Protectionist impulses of natural right,not rigorous utilitarian calibrations, have historically characterized the cre-ation of new rights, and the extension of old ones, in common law and civillaw countries alike, just as a pragmatic weighing of benefits and costs, witha particular focus on transaction costs, characterizes the imposition of limi-tations on rights—even moral rights—in civil law no less than in commonlaw countries.

Differences in legislative style partially distinguish the civil law and com-mon law systems, and I have chosen the French and German statutes andthe British and American statutes, respectively, as the main objects of com-parison. The French and German statutes are, to be sure, no more typical ofthe civil law tradition than the U.K. and U.S. statutes are typical of the com-

viii Preface

mon law tradition. One reason for choosing these countries as the principalobjects of consideration is that, taken together, they embody the dominantapproaches to the protection of literary and artistic works around the world.(Diverging approaches taken in other countries are considered where appro-priate.) Another reason is that these laws are the most widely discussed inlegal commentary. Each of the four laws also embodies an influential traitof the tradition to which it belongs. The French statute represents the dual-ist approach to author’s right, pragmatically separating the author’s eco-nomic rights (limited in time, transferable) from his moral rights (perpetual,nominally inalienable), while the German statute represents the monistapproach, fusing economic and moral interests into a single right that is lim-ited in time and is at least conceptually inalienable. Britain’s legislation ap-proaches the continental model of its European Union partners in severalrespects—highly specific exceptions from rights, for example, though witha less robust moral right—while the U.S. legislation takes an even more stint-ing approach to moral right and a far looser approach to exceptions, as re-flected in its fair use defense.

Human rights undeniably intertwine copyright, but the predominantforces that have shaped the law are economic. Global communities of eco-nomic interest among copyright owners have been far more potent thanideology—or, for that matter, than the preoccupations of individual nation-states—in forming copyright doctrine. In the world of copyright policymaking,a Canadian book publisher has far more in common with a Japanese bookpublisher than it does with a Canadian librarian who wants to make freephotocopies for library patrons. When, through the latter part of the nine-teenth century, British authors and publishers pressed an isolationist UnitedStates to extend copyright to English works, it was American authors andpublishers, not British readers, who rallied to their cause.

Not all copyright principles are universal, nor are all divisions false. To takejust one example, a distinctive commitment in the United States to individualautonomy in political and economic life has left a visible mark on the nation’scopyright law. American fair use doctrine, permitting the free use of copy-righted works under circumstances that other countries would find hard toexcuse, clearly mirrors the special place of free speech in the American con-stitutional scheme. In excusing certain new technological uses of copyrightedworks, fair use and other statutory exemptions also reflect the Americanresistance to collective administration—a common institution in Europe andelsewhere—as a solution to the transaction costs that arise at the intersec-tion of copyright and new technologies. While collecting societies have flour-ished in other countries, traditions of individualized bargaining continue toconstrain the role of collecting societies in the United States.

Universal legal rules may mask profound economic and political divisions.The division between economically developed and developing countries isan example, particularly as vexed by the independence movement of the

Preface ix

1950s that freed many economically undeveloped countries from the Euro-pean colonial powers. The 1971 copyright compromise in Paris betweendeveloped and developing countries only partially resolved the long-simmeringdiscontent that had erupted in the 1967 Stockholm Protocol RegardingDeveloping Countries, and the TRIPs Agreement’s introduction of copyrightinto the trade process has done little to meliorate the persisting rift. Experi-ence and common sense teach that copyright cannot correct such deep eco-nomic disparities; but experience just as surely teaches that a too rigid insis-tence on compliance with universal norms can exacerbate such disparities,impoverishing the educational and political development that is essential tothe growth of markets for literary and artistic works in these parts of theworld.

The idea for this book originated in a conversation with Lewis Flacks morethan a dozen years ago. Although death has sadly stilled Lew’s voice, hiswisdom on matters of international copyright endures and, I hope, is re-flected, however faintly, in the pages that follow.

I am indebted to Professor W. R. Cornish of Cambridge University andProfessor Jane C. Ginsburg of Columbia Law School for reviewing and com-menting on the manuscript. Collaboration and conversations with my col-leagues in the Intellectual Property Group at Morrison & Foerster have en-riched my understanding of international copyright law and practice. Inparticular, the discussion of licensing and contract choice of law has ben-efited from my work with William Schwartz and other lawyers in the group’slicensing practice, and the treatment of E.C. directives has benefited from mywork with Thomas Vinje in the firm’s Brussels office.

At Stanford Law School, my colleagues John Barton and John Merrymanpatiently advised me on points of international and comparative law. Sev-eral research assistants devoted long hours to compiling bibliographies,tracking down sources, and checking references for accuracy: Rey Barcelò,Christine Lyon, Julia Martin, Phil Poirier, Michael Robinson, and BarbaraTevarotto have my deepest gratitude. A bequest from the Claire and MichaelBrown Estate supported their work. As so often in the past, I also dependedheavily on the services of the superb Stanford Law Library staff, especiallyDavid Bridgman, Arline (Andy) Eisenberg, Andrew Gurthet, Paul Lomio, andErika Wayne.

Finally, and as ever, I am indebted to Lynne Anderson for coordinating andtyping the manuscript through its several drafts and for keeping the projecton track with her incomparable energy, wit, and good humor.

Portola Valley, California P. G.1 August 2000

x Preface

contents

Abbreviations xix

PART ONE: PRINCIPLES OF INTERNATIONAL COPYRIGHT

§1. The Legal Traditions 3

§1.1. The Copyright Tradition 5

§1.2. The Traditions of Author’s Right and Neighboring Rights 8

§1.2.1. Author’s Right 8

§1.2.2. Neighboring Rights 10

§2. The Norms of International Copyright 13

§2.1. Copyright Treaties 14

§2.1.1. Bilateral Copyright Treaties 16

§2.1.2. Multilateral Copyright Treaties 19

§2.1.2.1. The Berne Convention 19

§2.1.2.2. The Universal Copyright Convention 28

§2.1.2.3. The WIPO Copyright Treaty 32

§2.1.3. Regional Copyright Arrangements 34

§2.1.3.1. Inter-American Copyright Agreements 34

§2.1.3.2. The European Union 35

xii Contents

§2.2. Neighboring Rights Treaties 36

§2.2.1. International Convention for the Protection ofPerformers, Producers of Phonograms andBroadcasting Organizations (Rome Convention) 37

§2.2.1.1. History 37

§2.2.1.2. Protection of Performers 38

§2.2.1.3. Protection of Producers of Phonograms 39

§2.2.1.4. Protection of Broadcasters 39

§2.2.1.5. Conditions and Exceptions 40

§2.2.1.6. Institutional and Structural Provisions 40

§2.2.2. Convention for the Protection of Producersof Phonograms Against Unauthorized Duplicationof Their Phonograms (Geneva PhonogramsConvention) 41

§2.2.3. WIPO Performances and Phonograms Treaty 42

§2.2.4. Convention Relating to the Distribution ofProgramme-Carrying Signals Transmitted bySatellite (Brussels Satellite Convention) 44

§2.3. Trade Arrangements 47

§2.3.1. North American Free Trade Agreement 48

§2.3.1.1. Conditions of Protection 48

§2.3.1.2. Subject Matter 50

§2.3.1.3. Ownership and Term 51

§2.3.1.4. Rights and Remedies 51

§2.3.2. TRIPs Agreement 52

§2.3.2.1. History 52

§2.3.2.2. Conditions for Protection 55

§2.3.2.3. Subject Matter, Ownership, and Term 56

§2.3.2.4. Rights and Remedies 58

§3. Territoriality, National Treatment, and Choice of Law 61

§3.1. The Territoriality Principle 63

§3.1.1. Territoriality in International Law 64

Contents xiii

§3.1.2. Territoriality in Copyright Law 65

§3.1.2.1. Where Acts of Infringement Occur in Morethan One Country 66

§3.1.2.2. Where Elements of Infringement Occur inMore than One Country 69

§3.1.2.3. Where Acts Defeating Protection OccurOutside the Protecting Country 71

§3.2. National Treatment 72

§3.2.1. The Trade Economics of National Treatment 75

§3.2.2. “Works” Subject to National Treatment 77

§3.2.2.1. Berne Convention 77

§3.2.2.2. TRIPs Agreement 79

§3.2.3. “Rights” Subject to National Treatment 80


§3.2.3.2. TRIPs Agreement 84

§3.2.4. Most-Favored-Nation Requirement 84

§3.2.4.1. “Works” Subject to Most-Favored-NationRequirement 85

§3.2.4.2. “Rights” Subject to Most-Favored-NationRequirement 86

§3.2.4.3. Exemptions from Coverage 87

§3.3. Choice of Forum and Choice of Law 89

§3.3.1. Choice of Forum in Copyright Cases with ForeignElements 90

§3.3.1.1. Subject Matter Jurisdiction 91

§3.3.1.2. Forum Non Conveniens 95

§3.3.1.3. Contractual Choice of Forum 98

§3.3.2. Choice of Law in Copyright Cases withForeign Elements 99

§3.3.2.1. Where No Contract PrescribesApplicable Law 99

§3.3.2.2. Law of the Contract as Applicable Law 107

xiv Contents

PART TWO: PROTECTION OF FOREIGN WORKSUNDER DOMESTIC LAW

§4. Protectibility of Foreign Works 123

§4.1. Protectibility of U.S. Works in Other Countries 124

§4.1.1. Copyright 126


§4.1.1.2. Universal Copyright Convention 133

§4.1.1.3. Other Copyright Treaties 135

§4.1.1.4. What Treaty Governs? 136

§4.1.2. Neighboring Rights 143

§4.1.2.1. International Convention for the Protection ofPerformers, Producers of Phonogramsand Broadcasting Organizations(Rome Convention) 143

§4.1.2.2. Convention for the Protection of Producersof Phonograms Against UnauthorizedDuplication of Their Phonograms(Geneva Phonograms Convention) 146

§4.2. Protectibility of Foreign Works in the United States 147

§4.2.1. Unpublished Works 148

§4.2.2. Published Works 149

§4.2.2.1. Nationality or Domicile 150

§4.2.2.2. Place of Publication 151

§4.2.2.3. Presidential Proclamation 152

§4.2.2.4. Place of Fixation 153

§4.2.2.5. U.N. and O.A.S. Works 154

§4.2.2.6. Retroactive Protection for Works Lacking aPoint of Attachment 154

§4.2.3. Moral Rights and Neighboring Rights 155

§5. Protection Under Copyright and Neighboring Rights 157

§5.1. Subject Matter 157

Contents xv

§5.1.1. Literary and Artistic Works 159

§5.1.1.1. Protectible Subject Matter 160

§5.1.1.2. Unprotectible Subject Matter 184

§5.1.1.3. Formalities 187

§5.1.1.4. Fixation 196

§5.1.2. Performances, Phonograms (Sound Recordings),Broadcasts, and Other Productions 197

§5.1.2.1. Performances 199

§5.1.2.2. Phonograms 200

§5.1.2.3. Broadcasts 201

§5.1.2.4. Formalities 202

§5.2. Ownership 203

§5.2.1. Original Ownership 205

§5.2.1.1. Individual Authorship 205

§5.2.1.2. Collaborative (Joint) Authorship 207

§5.2.1.3. Collective Works 209

§5.2.1.4. Works Made for Hire 210

§5.2.1.5. Audiovisual Works (IncludingCinematographic Works) 212

§5.2.2. Ownership by Transfer 217

§5.2.2.1. Limitations and Constructionof Transfers 220

§5.2.2.2. Formalities and Priorities 225

§5.2.2.3. Collecting Organizations 228

§5.3. Term 230

§5.3.1. Term of Protection Under Treaties andNational Law 231

§5.3.1.1. Copyright 231

§5.3.1.2. Neighboring Rights 236

§5.3.2. Comparison of Terms 238


xvi Contents

§5.3.2.2. Universal Copyright Convention 242

§5.3.2.3. E.C. Term Directive 243

§5.3.3. Retroactivity 245

§5.4. Rights 246

§5.4.1. Economic Rights 247

§5.4.1.1. Copyright 249

§5.4.1.2. Neighboring Rights 274

§5.4.1.3. Auxiliary Rights: Copyright ProtectionSystems 281

§5.4.2. Moral Rights 283

§5.4.2.1. Right of Paternity 285

§5.4.2.2. Right of Integrity 287

§5.4.2.3. Right of Divulgation 289

§5.4.2.4. Right of Withdrawal 290

§5.4.2.5. Limitation and Waiver of Moral Rights 291

§5.5. Exemptions, Statutory Licenses, and Other Limitations onExclusive Rights 292

§5.5.1. Reproduction and Adaptation Rights 296

§5.5.1.1. Private Uses 297

§5.5.1.2. Public Uses 300

§5.5.1.3. Incidental Uses 304

§5.5.1.4. Exhaustion (First Sale) 306

§5.5.1.5. Other Exemptions 308

§5.5.1.6. Statutory Licenses (EquitableRemuneration) 309

§5.5.2. Performance, Broadcast, and CommunicationRights 315

§5.5.2.1. Instructional and Other Nonprofit Uses 316

§5.5.2.2. Incidental Uses 317

§5.5.2.3. Cable Retransmission 318

§5.5.3. Misuse and Abuse of Copyright 319

Contents xvii

§5.6. Remedies 320

§5.6.1. Coercive Remedies 321

§5.6.1.1. Temporary Remedies 321

§5.6.1.2. Permanent Remedies 323

§5.6.2. Monetary Remedies 325

§5.6.3. Criminal Sanctions 327

Appendix

0A1. International Copyright Relations of the United States 331

0A2. Berne Convention for the Protection of Literary and ArtisticWorks [Paris Text, 1971] 341

0A3. Berne Convention for the Protection of Literary and ArtisticWorks [Brussels Text, 1948] 368

0A4. Berne Convention for the Protection of Literary and ArtisticWorks [Rome Text, 1928] 380

0A5. Parties to the Berne Convention for the Protection of Literaryand Artistic Works 389

0A6. Universal Copyright Convention [Paris Text, 1971] 395

0A7. Universal Copyright Convention [Geneva Text, 1952] 410

0A8. Parties to the Universal Copyright Convention (1952), Revisedat Paris (1971) 420

0A9. WIPO Copyright Treaty [with Agreed Statements Concerningthe WIPO Copyright Treaty] 423

A10. Parties to the WIPO Copyright Treaty [Geneva, 1996] 432

A11. WIPO Performances and Phonograms Treaty [with AgreedStatements Concerning the WIPO Performances andPhonograms Treaty] 433

A12. Parties to the WIPO Performances and Phonograms Treaty[Geneva, 1996] 445

A13. International Convention for the Protection of Performers,Producers of Phonograms and Broadcasting Organisations[Rome Convention] 446

A14. Parties to the International Convention for the Protectionof Performers, Producers of Phonograms and BroadcastingOrganisations [Rome Convention, 1961] 455

xviii Contents

A15. Convention for the Protection of Producers of PhonogramsAgainst Unauthorized Duplication of Their Phonograms ofOctober 29, 1971 [Geneva Phonograms Convention] 457

A16. Parties to the Convention for the Protection of Producersof Phonograms Against Unauthorized Duplication of TheirPhonograms [Geneva Phonograms Convention, 1971] 461

A17. Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite [Brussels SatelliteConvention] 462

A18. Parties to the Convention Relating to the Distributionof Programme-Carrying Signals Transmitted by Satellite[Brussels Satellite Convention, 1974] 466

A19. Treaty on the International Registration of Audiovisual Works[and Regulations] 467

A20. Parties to the Treaty on the International Registration ofAudiovisual Works [Film Register Treaty, Geneva, 1989] 481

A21. Buenos Aires Convention 482

A22. Agreement on Trade-Related Aspects of Intellectual PropertyRights, Including Trade in Counterfeit Goods 485

A23. Membership of the World Trade Organization 516

A24. North American Free Trade Agreement, Intellectual PropertyProvisions 518

A25. E.C. Directive on the Legal Protection ofComputer Programs 538

A26. E.C. Directive on Rental Right and Lending Right andon Certain Rights Related to Copyright in the Field ofIntellectual Property 545

A27. E.C. Directive on the Coordination of Certain Rules ConcerningCopyright and Rights Related to Copyright Applicable toSatellite Broadcasting and Cable Retransmission 553

A28. E.C. Directive Harmonizing the Term of Protection of Copyrightand Certain Related Rights 564

A29. E.C. Directive on the Legal Protection of Databases 571

A30. Directive on the Legal Protection of Designs 583

Table of Cases 593

Subject Index 597

Contents xix

abbreviations

Treaties and Statutes

Belgium, Copyright Act Law on Copyright and NeighboringRights (Loi relative au droitd’auteur et aux droits voisins),June 30, 1994

Berne Convention, 1971 Paris Text Berne Convention for the Protectionof Literary and Artistic Works, asrevised at Paris, July 24, 1971

Brussels Convention European Communities Conventionon Jurisdiction and Enforcement ofJudgments in Civil and CommercialMatters, Sept. 27, 1968, 8 I.L.M.229 (1969)

Brussels Satellite Convention Convention Relating to the Distri-bution of Programme-CarryingSignals Transmitted by Satellite,Brussels, May 21, 1974

Canada, Copyright Act Copyright Act (R.S.C. 1985, ch. C-42, Sec. 60)

E.C. Database Directive Council Directive 96/9 of 11 March1996 on the Legal Protection ofDatabases O.J. (L77) 20

E.C. Rental Right Directive Council Directive 92/100 of 19November 1992 on Rental Rightand Lending Right and on CertainRights Related to Copyright in theField of Intellectual Property O.J.(L346) 61

xix

E.C. Satellite and Cable Directive Council Directive 93/83 of 27September 1993 on the Coordinationof Certain Rules Concerning Copy-right and Rights Related to CopyrightApplicable to Satellite Broadcastingand Cable Retransmission O.J.(L248) 15

E.C. Software Directive Council Directive 91/250 of 14 May1991 on the Legal Protection ofComputer Programs O.J. (L122) 42

E.C. Term of Protection Directive Council Directive 93/98 of 29October 1993 Harmonizing the Termof Protection of Copyright andCertain Related Rights O.J. (L290) 9

France, Intellectual Property Code Intellectual Property Code (Code dela propriété intellectuelle), Law No.92-597, July 1, 1992, as amended*

Geneva Phonograms Convention Convention for the Protection of Pro-ducers of Phonograms Against Un-authorized Duplication of their Phono-grams, Geneva, October 29, 1971

Germany, Copyright Act Law on Copyright and NeighboringRights (Urheberrechtsgesetz),September 9, 1965, as amended*

Italy, Copyright Act Law on copyright (Legge sul dirittod’autore), No. 633, April 22, 1941,as amended*

Japan, Copyright Act Copyright Law (Chosakuken Ho),Law No. 48, May 6, 1970*

Lugano Convention European Communities–EuropeanFree Trade Association: Conventionon Jurisdiction and Enforcement ofJudgments in Civil and CommercialMatters, September 16, 1988, 28I.L.M. 620 (1989)

NAFTA North American Free Trade Agree-ment, Ottawa, December 11, 17,1992; Washington, D.C., December8, 17, 1992; and Mexico City,December 14, 17, 1992

Netherlands, Copyright Act Copyright Law (Auteurswet), Septem-ber 23, 1912, as amended*

*As reprinted in UNESCO, Copyright Laws and Treaties of the World (1997).

xx Abbreviations

Rome Contracts Convention Convention on the Law Applicableto Contractual Obligations, Rome,June 19, 1980

Rome Convention International Convention for theProtection of Performers, Produc-ers of Phonograms and Broadcast-ing Organizations, Rome, October26, 1961

Spain, Copyright Act Law on Intellectual Property (Leyde Propiedad Intelectual), Law No.22, November 11, 1987*

Treaty on the International Treaty on the International Regis-Registration of Audiovisual Works stration of Audiovisual Works,

Geneva, April 20, 1989TRIPs Agreement Agreement on Trade-Related

Aspects of Intellectual PropertyRights, Including Trade in Coun-terfeit Goods, Annex 1C to theAgreement Establishing the WorldTrade Organization, Marrakesh,April 15, 1994, 33 I.L.M. 1, 83-111(1994)

United Kingdom, Copyright, Copyright, Designs and Patents ActDesigns, and Patents Act 1988, Statutory Instrument 1989/

816*United States 1909 Copyright Act Act of March 4, 1909, ch. 320, 35

Stat., as amendedUnited States 1976 Copyright Act 17 U.S.C. §§101 et. seq. Pub. L. No.

94-553, 90 Stat. 2541, as amendedUnited States House Report House Report on Copyright Act of

1976, H.R. Rep. No. 1476, 94thCong., 2d. Sess. (1976)

Universal Copyright Convention, Universal Copyright Convention,1971 Paris Text as revised at Paris, Text 1971

WIPO Copyright Treaty WIPO Copyright Treaty, adoptedby the Diplomatic Conference,Geneva, December 20, 1996

WIPO Performances and WIPO Performances and Phono-Phonograms Treaty grams Treaty, adopted by the

Diplomatic Conference, Geneva,December 20, 1996

*As reprinted in UNESCO, Copyright Laws and Treaties of the World (1997).

Abbreviations xxi

Journals

Am. J. Int’l L. American Journal of International Law(American Society of International Law,Washington, D.C.)

Bull. Copr. Soc’y Bulletin of the Copyright Society of theU.S.A.

Cardozo Arts & Ent. L.J. Cardozo Arts & Entertainment Law Journal(Benjamin N. Cardozo School of Law,Yeshiva University, New York)

Colum.-VLA J.L. & Arts Columbia-VLA Journal of Law and the Arts(Columbia University School of Law)

Copyright Copyright (World Intellectual PropertyOrganization, Geneva)

Copyright Reporter Copyright Reporter: Journal of the Copy-right Society of Australia

E.I.P.R. European Intellectual Property Review(ESC Publishing Limited, Oxford)

Ent. L.R. Entertainment Law Reporter (Entertain-ment Law Reporter Publishing Com-pany, Santa Monica)

IDEA IDEA, the Journal of Law and Technol-ogy (Franklin Pierce Law Center, NewHampshire)

I.I.C. International Review of Industrial Propertyand Copyright Law (Max Planck Institutefor Foreign and International Patent,Copyright and Competition Law, Munich)

I.L.M. International Legal Materials (AmericanSociety of International Law, Washing-ton, D.C.)

Int. Prop. J. Intellectual Property Journal (CarswellThomson Professional Publishing,Scarborough, Ontario)

J. Copr. Soc’y Journal of the Copyright Society of theU.S.A.

J. of World Intellectual Property Journal of World Intellectual Property(Werner Publishing Company Ltd.,Geneva)

R.I.D.A. Revue Internationale du Droit d’Auteur(Association Française pour la diffusiondu Droit d’Auteur National et Interna-tional, Paris)

xxii Abbreviations

part one

Principles of International Copyright

§1

the legal traditions

Copyright and author’s right are the two great legal traditions for protect-ing literary and artistic works. The copyright tradition is associated with thecommon law world—England, where the tradition began, the former Brit-ish colonies, and the countries of the British Commonwealth. The traditionof author’s right is rooted in the civil law system and prevails in the coun-tries of the European continent and their former colonies in Latin America,Africa, and Asia.1

In concept, the traditions of copyright and author’s right rest on sharplydiffering premises. Copyright’s philosophical premise is utilitarian: the pur-pose of copyright is to stimulate production of the widest possible variety ofcreative goods at the lowest possible price.2 The ideal copyright legislator willtest every proposal to extend copyright against the criterion of utility andwill vote for the proposed extension only if it is demonstrably necessary tostimulate the creation of new works. By contrast, author’s right is rooted in

1. The socialist approach to copyright that prevailed in the Soviet Union and Eastern Bloccountries following World War II was not so much a tradition, providing a rationale for pro-tecting literary and artistic works, as it was a vehicle for regulating copyright contracts andthe organs of publication. Post-socialist copyright law in Central and Eastern European coun-tries has, not surprisingly, followed the pattern of legislation in Western Europe. See generallyAdolf Dietz, Trends in the Development of Copyright Law in the Countries of Central andEastern Europe, 162 R.I.D.A. 120 (1994). See also György Boytha, The Berne Convention andthe Socialist Countries with Particular Reference to Hungary, 11 Colum.-VLA J.L. & Arts 57(1986); Ernest K. Pakuscher, Recent Trends of the German Copyright Law, 23 Bull. Copr. Soc’y65 (1973); Serge L. Levitsky, Introduction to Soviet Copyright Law (1964).

On subsequent copyright developments in Eastern Europe, see generally Eric J. Schwartz,Recent Developments in the Copyright Regimes of the Soviet Union and Eastern Europe, 38J. Copr. Soc’y 123 (1991).

2. See §1.1, below.

3

4 The Legal Traditions

the philosophy of natural rights: an author is entitled to protection of his workas a matter of right and justice.3 The ideal author’s right legislator will voteto extend protection without any showing of social necessity and will rejectit only if the extended protection would materially hamper socially valuableuses of protected works.

In fact, and on almost every point of consequence, the traditions of copy-right and author’s right are far more alike than they are unlike. One reasonis that the Berne Convention bridges the two traditions, with the result thatits extensive minimum standards have dictated substantively similar rulesfor countries in both camps. Similarities in economic, political, and socialstructures across the two systems also explain the convergence, as do localindustry politics. Professor William Cornish is certainly correct to observethat “[o]ver primary issues of making the rights granted legally effective andso economically meaningful, the two approaches flow together in a singlestream. Where there are divergences, they are often more the product of lowpolitical lobbying than of high and disinterested thought.”4

Copyright politics divides more along sectoral than national lines. A bookpublisher in England has far more in common with a book publisher inFrance—or, for that matter, with a French film or record producer—than itdoes with a library in England; for its part, the English library will have farmore in common with a French library. Battles over what works qualify forprotection and over the proper scope of rights in literary and artistic worksare fought on economic, not philosophical terrain, with producers and dis-tributors typically pitted against users.

Differences traceable to a statute’s philosophical origins, a few possess-ing practical consequence, do sometimes appear in copyright and author’sright legislation. Both common law and civil law countries today protectcomputer programs as literary works, and many common law and civil lawcountries give the same answer to the question whether performance-oriented productions such as sound recordings and broadcasts merit thedignity of full-scale rights or should receive the less exalted status of neigh-boring rights. Rules on transferability of rights may also differ, with civillaw countries sometimes constraining the free alienation of copyright moreextensively than common law countries.5 But even in these two contexts,the differences are of degree rather than kind, and the degree of differenceis often small.

3. See §1.2, below.4. William R. Cornish, Sound Recordings and Copyright, 24 I.I.C. 306, 307 (1993). See gen-

erally Adolf Dietz, Transformation of Authors Rights: Change of Paradigm, 138 R.I.D.A. 22(1988); André Kerever, Copyright: The Achievements and Future Development of EuropeanLegal Culture, 26 Copyright 130 (1990).

5. See §5.2.2, below.

§1.1THE COPYRIGHT TRADITION

The beginnings of copyright in the common law world trace to Caxton’sfounding in 1476 of the first printing establishment in England, and tomeasures initiated by the English Crown to bring this revolutionary newtechnology under its control. One motive for the Crown regulations was po-litical: to suppress the spread of dissenting views through cheap and easy cop-ies. The other motive was economic. By granting court favorites and otherswilling to pay the price the exclusive right to publish particular books, theCrown put itself in a position to profit from the growing market for literaryworks. The Crown’s political control of book publishing, exercised throughthe Licensing Acts, continued through the end of the seventeenth century.By the middle of the sixteenth century, however, the Crown had effectivelyceded economic control of book publishing to the Stationer’s Company, aLondon guild of printers, bookbinders, and booksellers, through a printingpatent that gave the company a monopoly over the English publishingtrade. The grant to the Stationers served the Crown’s political interests aswell, for the Stationers secured their economic monopoly by suppressingtrade not only in unauthorized copies of licensed books, but in unlicensedworks as well; the Company’s seizure of unlicensed works helped the Crownto suppress dissent.6

The expiration of the Licensing Act in 1694, and with it the Stationers’power to seize and destroy offending works, effectively deprived the Companyof its main weapon in the marketplace. After failing to persuade Parliamentto extend its powers, the Stationers shifted their legislative strategy, empha-sizing the interests of authors over publishers. The product of their renewedeffort was the world’s first copyright act, the Statute of Anne,7 entitled “AnAct for the Encouragement of Learning, by vesting the Copies of PrintedBooks in the Authors or Purchasers of such Copies, during the Times thereinmentioned.” The Statute gave the Stationers the coercive remedies theysought and confirmed their existing publication rights. In return, the Stat-

6. This description of copyright’s early history in England draws principally on Lyman RayPatterson, Copyright in Historical Perspective (1968); Howard B. Abrams, The Historic Foun-dation of American Copyright Law: Exploding the Myth of Common Law Copyright, 29 WayneLaw Review 1119 (1983); Augustine Birrell, The Law and History of Copyright in Books (1899);Bruce Bugbee, Genesis of American Patent and Copyright Law (1967); Benjamin Kaplan, AnUnhurried View of Copyright (1967); Harry Ransom, The First Copyright Statute (1956); MarkRose, Authors and Owners: The Invention of Copyright (1993); Thomas Edward Scrutton, TheLaw of Copyright (4th ed. 1903).

7. 8 Anne c. 19 (1710).



ute obliterated the Stationers’ monopoly by entitling anyone—printer orauthor—to obtain copyright by the simple act of enrollment in the Company’sregister. The Statute also substituted a limited term of copyright for the for-merly perpetual monopoly: fourteen years from the work’s publication and,if the author was then alive, a second fourteen-year term.

The Statute of Anne protected only books.8 Successive acts or amend-ments added, among other classes of subject matter, engravings;9 sculp-tures;10 paintings, drawings, and photographs;11 sound recordings;12 andmotion pictures.13 Just as statutory subject matter expanded to embracethe products of new creative technologies, the range of rights expanded toencompass new dissemination technologies. A performance right was addedfor dramatic works in 183314 and for musical works in 1842;15 the com-prehensive 1911 Copyright Act added a reproduction right in sound record-ings.16 Current English copyright legislation is embodied in the 1988 Copy-right, Designs and Patents Act and represents a substantial revision of the1956 Act. It has been regularly amended, often to implement EuropeanUnion copyright directives.

The first U.S. copyright legislation, the Act of 1790,17 “for the encourage-ment of learning,” was closely modeled after the Statute of Anne and wasenacted under a constitutional power that linked copyrights with patents:“. . . to promote the Progress of Science and useful Arts, by securing for lim-ited Times to Authors and Inventors the exclusive Right to their respectiveWritings and Discoveries.”18 The Act, which required registration formali-ties, gave a fourteen-year copyright, renewable once, in books, maps, andcharts, against unauthorized printing, reprinting, publishing, or vending.As in England, the emergence of new information technologies triggered theexpansion of copyright subject matter—photographs were added in 1865,19

motion pictures in 1912,20 sound recordings in 197121 —and also the expan-sion of exclusive rights—a public performance right in 1856,22 and rights to

8. 8 Anne c. 19 (1710).9. 8 Geo. 2, c. 13 (1735).10. 54 Geo 3, c. 56 (1814).11. 25 & 26 Vict. c. 68 (1862).12. Copyright Act, 1&2 Geo 5 c. 46 §19(1) (1911).13. Copyright Act, 1&2 Geo 5 c. 46 §35(1) (1911).14. Dramatic Copyright Act, 3 Will. 4, c. 15 (1833).15. Literary Copyright Act, 5&6 Vict. c. 45 (1842).16. Copyright Act, 1&2 Geo. c. 46 §1(2)(d) (1911).17. Act of May 31, 1790, ch. 15, 1 Stat. 124.18. U.S. Const. Art. I, §8 cl. 8.19. Act of Mar. 3, 1865, ch. 126, 13 Stat. 540.20. Act of Aug. 24, 1912, ch. 356, 37 Stat. 488.21. Act of Oct. 15, 1971, Pub. Law. No. 92–140, 85 Stat. 391.22. Act of Aug. 18, 1856, ch. 169, 11 Stat. 138.

dramatize or translate in 1870.23 The U.S. Congress did not eliminate themandatory notice formality until 1989, under the compulsion of adherenceto the Berne Convention; the prospect of Berne membership explains thedecision in the 1976 Act to extend the general term of copyright to the Berneminimum term of fifty years after the author’s death.24

An indisputably utilitarian thread runs through much of the intellectualhistory of English copyright: Adam Smith’s recognition that a limited statu-tory protection was needed “as an encouragement to the labours of learnedmen”;25 Jeremy Bentham’s observation that “he who has no hope that heshall reap, will not take the trouble to sow”;26 Thomas Babington Macaulay’spragmatic case against a proposal in the House of Commons to extend thecopyright term from twenty-eight to sixty years after the author’s death;27

and Samuel Johnson’s remark, “No man but a blockhead ever wrote exceptfor money.”28 But a vigorous natural rights strain can also be found in theEnglish literature and in the cases. One notable example is Lord Mansfield’svivid contention, in the great case of Millar v. Taylor,29 that a perpetual copy-right existed at common law alongside the limited term of the Statute ofAnne, founded on the premise that “it is just, that an author should reap thepecuniary profits of his own ingenuity and labor.”30

Copyright’s intellectual tradition in the United States is similarly mixed.The phrasing of the copyright statute’s constitutional source, Congress’spower “to promote the progress of science,” has a clear instrumentalist ring,as does the language of the House Report on the comprehensive 1909 copy-right revision, that copyright “is not based upon any natural right that theauthor has in his writing . . . but upon the ground that the welfare of thepublic will be served.”31 However, the great bulk of the state copyright stat-

23. Act of July 8, 1870, ch. 230, §86, 16 Stat. 198, 212.24. Pub. L. No. 94–553, 90 Stat. 2541 (1976). The 1976 Act was amended in 1998 to extend

the standard copyright term to seventy years following the author’s death. See §5.3.1, 1, below.25. Adam Smith, Lectures on Jurisprudence 83 (1762).26. Jeremy Bentham, A Manual of Political Economy, in 3 The Works of Jeremy Bentham

31, 71 (1839) (John Bowring ed. 1962).27. Thomas Babington Macaulay, Prose and Poetry 731, 733–737 (G. Young ed. 1952).28. James Boswell, The Life of Samuel Johnson, Volume II, 12 (April 5, 1776). (Everyman’s

Library 1992).29. 4 Burr 2303, 98 Eng. Rep. 201 (K.B. 1769).30. Id. at 252. A subsequent ruling by the House of Lords in Donaldson v. Becket, 4 Burr.

2408, 98 Eng. Rep. 257 (1774), effectively held that the Statute of Anne displaced the per-petual common law right.

31. U.S. House Rep. No. 60–2222 (“To Amend and Consolidate the Acts Respecting Copy-right”) 7 (1909).

On the economic underpinnings of American copyright law, see generally Paul Goldstein, 1Copyright §1.14 (1998); William M. Landes & Richard A. Posner, An Economic Analysis ofCopyright Law, 18 J. Legal Stud. 325 (1989). For a historical overview of economic thought



utes that preceded the first national copyright act expressly invoked prin-ciples of natural right as their justification, and nineteenth-century Ameri-can treatises regularly invoked principles of natural justice, not public good,as the rationale for extending copyright protection.32

Judged by its results rather than its rhetoric, copyright legislation in thecommon law tradition historically fails any strict utilitarian measure. Whilethe ideal copyright legislator, before voting to extend protection to new sub-ject matter or rights, would require a showing that the extension is neededas an incentive to continued investment, common law legislatures have in factregularly, indeed mostly, extended copyright without any empirical showingthat authors would produce, and publishers publish, fewer works if the exten-sion were not given. To be sure, common law copyright legislation attendsmore closely to the delineation of exceptions from exclusive rights than doescivil law legislation, but in the main, the practicalities of lawmaking in thecommon law countries have consistently led to the same result as the philo-sophical logic of lawmaking in the civil law countries, extending rights intonearly every corner where a work’s value can be economically realized.

§1.2THE TRADITIONS OF AUTHOR’S RIGHT AND

NEIGHBORING RIGHTS

§1.2.1. Author’s Right

As in England, sovereign printing privileges preceded the emergence ofauthors’ rights in France, Germany, and elsewhere on the European conti-nent.33 In France the printing monopolies ended with the revolution. A 1791law laid the foundation for French copyright by giving authors an exclusiveright to perform their works, and a 1793 law gave authors generally a broad-based right against unauthorized reproduction of their works. Until passage

about copyright in England and the United States, see Gillian K. Hadfield, The Economics ofCopyright: An Historical Perspective, 38 ASCAP Copyright L. Symp. 1 (1989); Arnold Plant,The Economic Aspects of Copyright in Books, 2 Economica 167 (1934).

32. See generally Lloyd L. Weinreb, Copyright for Functional Expression, 111 Harv. L. Rev.1149, 1211–1214 (1998).

33. This historical background on the emergence of author’s right is drawn from ElizabethArmstrong, Before Copyright: The French Book-Privilege System 1498–1526 (1990); Jane C.Ginsburg, A Tale of Two Copyrights: Literary Property in Revolutionary France and America,64 Tulane L. Rev. 991 (1990); Carla Hesse, Enlightenment Epistemology and the Laws of Author-ship in Revolutionary France, 1777–1793, 30 Representations 109 (1990); David Saunders,Authorship and Copyright 75–121 (1992).

of the 1957 Copyright Act34 only minor amendments were made to theselaws, and for more than a century and a half the accommodation of Frenchcopyright law to new reproduction and performance technologies was leftalmost exclusively to the courts. The 1985 Act, amending the 1957 Act,35

confronted newer technologies, such as computer programs, and the 1992Intellectual Property Code codified both copyright and neighboring rightslegislation. The Code has been amended to implement relevant E.U. direc-tives and other treaty obligations.36

In the German territorial states the system of sovereign printing privilegeslasted well into the nineteenth century. The first German copyright legisla-tion was an 1837 Prussian act giving protection, for thirty years after theauthor’s death, against the reproduction of works of science and art. Withthe establishment of the Second German Reich in 1871, a national copyrightact was passed granting copyright to literary works, illustrations, musicalcompositions, and dramatic works. Following the 1871 Copyright Act, anAct of 1876 extended copyright to graphic and three-dimensional works ofart. Acts of 1901 and 1907 respectively added provisions on copyright in lit-erary and musical works and artistic works and photography. The 1965 Actcomprehensively revised copyright law in Germany.

The natural rights strain that is commonly associated with the author’s righttradition did not emerge until the latter part of the nineteenth century, bywhich time copyright laws had been enacted throughout the European conti-nent. The rationale for author’s right is usually traced to the work of Otto vonGierke, who, expanding on Kant’s connection of literary creation to the per-sonality of the author, argued for a copyright that rested in the author’s con-trol over every aspect, personal as well as material, of his work’s exploitation.37

Differences over the implications of copyright’s capacity to control boththe economic and personal aspects of a work led to a philosophical split be-tween the dualist theory of copyright, followed most prominently in France,and the monist theory, followed in Germany. French law separates theauthor’s moral, or personal, right from his economic, or property, right.Where the economic right is alienable and subject to a limited term, and toexemptions and compulsory licenses dictated by market realities, moral rightis at least nominally absolute—perpetual, inalienable, imprescriptible.38

German law, following the monist philosophy, fuses personal and economicinterests into a single doctrine and prescribes the same rules for both. Under

34. Law No. 57–298, on Literary and Artistic Property, March 11, 1957.35. Law No. 86–660, on Authors’ and Neighboring Rights, July 3, 1985.36. Law No. 92–597, July 1, 1992.37. See generally Francis J. Kase, Copyright Thought in Continental Europe: Its Development,

Legal Theories and Philosophy 10–11 (1967).38. See §5.4.2, below.

§1.2. Author’s Right and Neighboring Rights 9


German copyright law, both personal and economic interests are, like Frenchmoral right, at least nominally inalienable,39 and both are, like French eco-nomic rights, durationally limited.40

Continental author’s right laws—droit d’auteur in France, Urheberrecht inGermany, diritto d’ autore in Italy—differ from the copyright laws of the com-mon law tradition more in emphasis than in outcome. Moral right, for ex-ample, has sturdier roots in the author’s right tradition than in the copyrighttradition, but compliance with the Berne Convention’s minimum standardfor moral right41 has seeded the common law fields as well.42 Author’s rightcountries are far less disposed than common law countries to locate author-ship in other than flesh-and-blood authors. They have, however, departedfrom this position in the case of computer programs,43 and their rules ontransfer of ownership will, in any event, often make this distinction one with-out a difference.44 It is hard to reconcile the talismanic requirement that fora work to be protected by author’s right it must bear the impress of anauthor’s personality with such quotidian subject matter as the merchandisecatalogues and directories that author’s right laws regularly protect.

Just as natural rights philosophy has infiltrated the copyright laws of thecommon law tradition, utilitarianism has taken root in the author’s rightlaws of the civil law traditions. Professor Jane Ginsburg’s observation that“mixed motives underlay the French revolutionary copyright laws (as wellas their U.S. counterparts)” applies with equal accuracy to contemporarycontinental doctrine generally, as does her observation that “the parliamen-tary speeches and the texts of the laws themselves attest to a certain tensionbetween authors’ personal claims of right and the public interest in accessto works of authorship.”45

§1.2.2. Neighboring Rights

At the same time that philosophies of authorial personality and case law onmoral right were forging a doctrine of author’s right, technologies were

39. See §5.3.1.1, below.40. See generally André Kerever, Copyright: The Achievements and Future Development

of European Legal Culture, 26 Copyright 130 (1990).41. Berne Convention, 1971 Paris Act Art. 6bis.42. See generally §5.4.2, below.43. See §5.2.1.1, below.44. See §5.2.2, below.45. Jane C. Ginsburg, A Tale of Two Copyrights: Literary Property in Revolutionary France

and America, 64 Tulane L. Rev. 991, 1014 (1990). See generally Carla Hesse, EnlightenmentEpistemology in the Laws of Authorship in Revolutionary France, 1777–1793, 30 Represen-tations 109 (1990).

beginning to emerge that would challenge the doctrine’s assumptions re-specting authorship. Photographs, it might be thought, were the productsof a mechanical process, not of an artist’s creative vision; motion pictureswere the product of corporate organizations, not the labors of individualauthors. After some agonizing, civil law countries brought photographsand films within author’s right, but they drew the line there and rejectedauthor’s right protection for performances, sound recordings or phono-grams, and broadcasts.46 Instead they created for these and other new tech-nological productions a regime of neighboring rights—droits voisins inFrance, Leistungsschutzrechte in Germany, diritti connessi in Italy.

Protection for performances, sound recordings, and broadcasts is themainstay of neighboring rights doctrine and the object of the principal neigh-boring rights treaty, the International Convention for the Protection of Per-formers, Producers of Phonograms and Broadcasting Organizations. Thistreaty, also called the Rome Convention, has attracted adherents not onlyfrom civil law countries such as France and Germany, but also common lawcountries such as Australia, Canada, and the United Kingdom. Although theRome Convention’s minimum standards, including term of protection andscope of rights, are lower than the standards the Berne Convention prescribesfor literary and artistic works, many national laws exceed the conventionminima.

The difference between countries that apportion protection between author’sright and neighboring rights and countries that bring both classes of subjectmatter under the rubric of copyright is mainly symbolic. Few sound record-ings, performances, or broadcasts that are protected by copyright will in factenjoy an economic life that begins to approach the copyright term of protec-tion; indeed, their economic value will typically be exhausted even before ex-piration of the shorter, neighboring rights term of protection.

The main consequential difference between the systems of author’s rightand neighboring rights, on the one side, and copyright systems, on the other,lies in the international obligations the two approaches entail. If Country Adefines a form of creative production, such as a performance, phonogram,or broadcast, as being something other than a “literary” or “artistic work,”the subject matter will fall outside the country’s obligation under the BerneConvention to extend the Convention’s minimum standards and nationaltreatment requirement to productions coming from Country B. If CountryB defines the very same production as coming within its copyright law as aliterary or artistic work, it will be obligated to protect such works originat-ing in Country A according to the Berne Convention’s minimum standardsand national treatment requirements.47

46. See generally §5.4.1.2, below.47. See §3.2, below.

§1.2. Author’s Right and Neighboring Rights 11

§2

the norms of international

copyright

The evolution of substantive international copyright norms has generallybeen in the direction of increased minimum standards, both for protectedsubject matter and for exclusive rights. The patterns of protection have alsobecome more complex. The norms of copyright and neighboring rights todayare embodied in an interlocking network formed by the Berne1 and Univer-sal Copyright Conventions2 and the WIPO Copyright Treaty,3 as well as bythe neighboring rights treaties—the Rome,4 Geneva,5 and Brussels Conven-tions6 and the WIPO Performances and Phonograms Treaty.7 The substan-tive and procedural norms of the TRIPs Agreement affect both copyright andneighboring rights.8

The fact that international copyright norms have evolved over time mayseriously complicate the determination of rights in any case. One reason isthat contemporary copyright and neighboring rights norms are not univer-sal. Some countries abide by all the latest treaty standards, while others ad-here only to the lower standards of previous treaty texts. Also, since the copy-right in issue may have been secured at an earlier stage of a country’s history

1. Berne Convention for the Protection of Literary and Artistic Works, 1971 Paris Text.2. Universal Copyright Convention, 1971 Paris Text.3. WIPO Copyright Treaty, Geneva, 1996.4. International Convention for the Protection of Performers, Producers of Phonograms

and Broadcasting Organizations, Rome, 1961.5. Convention for the Protection of Producers of Phonograms Against Unauthorized Du-

plication of Their Phonograms, Geneva, 1971.6. Convention Relating to the Distribution of Programme-Carrying Signals Transmitted

by Satellite, Brussels, 1974.7. WIPO Performances and Phonograms Treaty, Geneva, 1996.8. Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994.

13

14 The Norms of International Copyright

of foreign copyright relations, when applicable standards were lower, it isimportant in these situations to match the history of the copyright in issuewith the local history of the norms that govern it.9

Institutional norms have changed less than substantive norms. Bilateral,regional, and multilateral treaties continue to be the principal means forinternational ordering of copyright and neighboring rights. The principlesof territoriality,10 national treatment,11 and choice of law12 have long pro-vided the mechanisms for determining jurisdiction and applicable law underthe treaties. Although the TRIPs Agreement has put a spotlight on the rela-tionship between copyright and trade, the connection between copyright andtrade measures in fact dates at least to the mid-nineteenth century;13 acountry’s decision whether, and to what countries, to extend copyrightrelations has been a trade decision from the start.

§2.1COPYRIGHT TREATIES

Whether a private right, assertable in court, can be derived directly from acopyright or neighboring rights treaty, or must instead depend upon legis-lation implementing the treaty, will turn in any case on the nature of thetreaty and the constitutional traditions of the protecting country. Most coun-tries, including many that follow the civil law tradition, view treaties as self-executing, a directly applicable source of rights to private parties.14 Bycontrast, countries following the British and Scandinavian constitutional tra-ditions hold that treaties are not self-executing, so that private actions mustbe founded on domestic legislation that implements the treaty.15 This differ-ence in national approaches means, for example, that the owner of world-wide rights in a work, if the work is exploited without the owner’s authority

9. See §4.1.1.4, below.10. See §3.1, below.11. See §3.2, below.12. See §3.3.2, below.13. See Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 25–

26 (1938).14. See Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:

1886–1986 130–131 (1987); Luzius Wildhaber, Treaty-Making Power and Constitution: AnInternational and Comparative Study 202–221 (1971); Paul Edward Geller, Copyright Protec-tion in the Berne Union: Analyzing the Issues, 13 Colum.-VLA J.L. & Arts 435, 439–440 (1989).

15. See Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:1886–1986 131–132 (1987); Luzius Wildhaber, Treaty-Making Power and Constitution: An In-ternational and Comparative Study 190–192 (1971); Paul Edward Geller, Copyright Protectionin the Berne Union: Analyzing the Issues, 13 Colum.-VLA J.L. & Arts 435, 439 (1989).

in a civil law country like Italy, may directly invoke the applicable terms ofthe Berne Convention as the governing law while, in a case arising in Canada,which follows the British tradition, the owner’s rights will be measured ex-clusively by the terms of the Canadian Copyright Act.

The U.S. Constitution contemplates that some, but not all, treaties will beself-executing.16 Courts in the United States weigh several factors to deter-mine whether a treaty is self-executing. If the treaty itself expressly providesfor legislative action, this will weigh against direct application;17 the BerneConvention, for example, provides that “any country party to this Conven-tion undertakes to adopt, in accordance with its constitution, the measuresnecessary to ensure the application of this Convention.”18 Also, Senate res-ervations made in the course of consenting to a treaty may themselves bepersuasive on the point that the treaty is not self-executing.19 In passing the1988 Berne implementation amendments, Congress left no doubt of its viewthat the Berne Convention is not self-executing, and it is generally, althoughnot universally, accepted in the United States that the Convention is not aself-executing treaty.20

The fact that a protecting country views a treaty as self-executing does notmean that the treaty text will necessarily govern every aspect of a work’sexploitation in that country. National legislation may encompass forms of

16. See Louis Henkin, Foreign Affairs and the United States Constitution 198–206 (2d ed.1996); Laurence H. Tribe, American Constitutional Law 225–230 (2d ed. 1988); Luzius Wildhaber,Treaty-Making Power and Constitution: An International and Comparative Study 192–202 (1971).

17. See, e.g., United States v. Postal, 589 F.2d 862, 876–77 (5th Cir. 1979) (analyzing whetherthe Convention on the High Seas is self-executing). See also Louis Henkin, Foreign Affairs andthe United States Constitution 204 (2d ed. 1996).

18. See generally Final Report of the Ad Hoc Working Group on U.S. Adherence to the BerneConvention, Appendix to Hearings Before Subcomm. on Patents, Copyright and Trademarksof Sen. Jud. Comm., 99th Cong. 1st & 2d Sess. (May 16, 1985; April 15, 1986).

19. See Louis Henkin, Foreign Affairs and the United States Constitution 204 (2d ed. 1996).Section 2 of the Berne Convention Implementation Act of 1988 includes three congressional

declarations: that the Berne Convention is “not self-executing under the Constitution and lawsof the United States”; that “[t]he obligations of the United States under the Berne Conventionmay be performed only pursuant to appropriate domestic law”; and that “[t]he amendmentsmade by this Act, together with the law as it exists on the date of the enactment of this Act,satisfy the obligations of the United States in adhering to the Berne Convention and no fur-ther rights or interests shall be recognized or created for that purpose.” Pub. L. No. 100-568,102 Stat. 2853.

20. Berne Convention, 1971 Paris Text, Art. 36(1). Art. 36(2) of the Paris Act provides, “Itis understood that, at the time a country becomes bound by this Convention, it will be in aposition under its domestic law to give effect to the provisions of this Convention.”

Virtually identical language has been construed as indicating that the Paris Conventionfor the Protection of Industrial Property (1883) is not a self-executing treaty. Mannington Mills,Inc. v. Congoleum Corp., 595 F.2d 1287, 1298–99 (3rd Cir. 1979) (construing Article 17 of theParis Convention).



subject matter and extend exclusive rights that are not contemplated by thetreaty’s minimum standards; remedial provisions, only sparely described inthe usual copyright or neighboring rights treaty, will often be more elabo-rately prescribed in domestic law. In addition to determining whether andin what ways local law augments directly applicable treaty provisions, acopyright claimant should determine in any case whether the country im-posed one or more reservations at the time it adhered to the treaty text.

§2.1.1. Bilateral Copyright Treaties

The national copyright laws enacted in Europe over the course of the nine-teenth century generally centered on the circumstances of national authorsand domestic publishing, and if they did not altogether exclude protectionfor works of foreign nationals, they generally conditioned protection for for-eigners on compliance with one or more formal requirements.21 Some coun-tries, including the United Kingdom, at least partially conditioned protectionfor works of foreign authors on the work’s publication within the territoryof the protecting country.22 The German Copyright Act protected works ofGerman nationals, wherever published, and works of foreign nationals onlyif published in Germany by a German publisher.23

Protection of foreign works served the interests of publishers based in copy-right-importing countries no less than it served the interests of publishersbased in copyright-exporting countries, particularly when protection wasconditioned on local publication. The effect of unauthorized copies of foreignworks—French works in Belgium, for example—was to reduce the revenuesnot only of the foreign authors and publishers, but of the domestic authorsand publishers who had to compete with these cheap foreign copies. Conse-quently both groups had a substantial interest in seeing foreign works pro-tected by copyright in the local territory. Conditioning copyright protectionon local publication could further level the playing field between foreign anddomestic publishers.

Most bilateral arrangements concluded during the first part of the nine-teenth century rested on one or another form of reciprocity. In some casesthe treaty required material reciprocity, meaning that Country A wouldprotect works originating in Country B only if Country B gave comparableprotection to works coming from Country A. In other cases, the treaty

21. See Sam Ricketson The Berne Convention for the Protection of Literary and Artistic Works:1886–1986 22–25 (1987); Stephen P. Ladas, 1 The International Protection of Literary and Ar-tistic Property 17–23 (1938).

22. An Act to Amend the Law of Copyright, 5&6 Victoria c. 45, §17, 1842.23. German Law of June 11, 1871, Art. 61, German Law of January 9, 1876 Art. 20.

required national treatment, meaning that Country A would protect worksoriginating in Country B on the condition that Country B gave works origi-nating in Country A protection on the same terms it gave to works of itsown nationals.

Most of these early bilateral arrangements were between net copyright-importing countries. The two major copyright exporters, France and theUnited Kingdom, enjoyed relatively little success in securing foreign pro-tection for works of their nationals through bilateral agreements based onreciprocity. In 1852 France embarked on a radically different tack, extend-ing copyright protection to all foreign works without regard to whether thecountry in which the work originated would reciprocate with protectionfor French works. Although the 1852 decree may have been both altruisticand progressive, as is sometimes claimed,24 it also reflected a fair measureof shrewdness. The decree did not cover the performance of foreign dramasin France, and French protection in any event would be no more extensivethan the protection the work received in its country of origin.25 Also, thedecision to allow foreign publishers to collect revenues on French soil mayhave encouraged their support of bilateral arrangements with France athome. The same year France issued its innovative decree, it entered into abilateral copyright agreement with Belgium, the largest market for unau-thorized copies of French works, and a rapid succession of other bilateraltreaties ensued.26

The United Kingdom, the other major copyright exporter of the nineteenthcentury, ultimately enjoyed substantial success in concluding bilateral trea-ties on the European continent, but not with the United States, the majormarket for unauthorized copies of English works.27 The first U.S. CopyrightAct28 extended protection only to works of authors who were citizens or resi-dents of the United States; by its terms, the Act was not to “be construed toextend to prohibit the importation or vending, reprinting or publishingwithin the United States, of any map, chart, book or books, written, printed,or published by any person not a citizen of the United States, in foreign partsor places without the jurisdiction of the United States.”29

24. Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:1886–1986 20 (1987).

25. Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 28–29(1938).

26. Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 29(1938).

27. See generally James J. Barnes, Authors, Publishers and Politicians: The Quest for an Anglo-American Copyright Agreement, 1815–1854 (1974).

28. Act of May 31, 1790, ch. 15, 1 Stat. 124.29. Act of May 31, 1790 §5. See generally Arpad Bogsch, The Protection of Works of Foreign

Origin, General Revision of the Copyright Law Study No. 20 (1959).



In 1891, under pressure from English publishers as well as from Ameri-can publishers, the U.S. Congress passed the Chace Act, authorizing protec-tion in the United States of works of citizens or subjects of a foreign state ornation “when such foreign state or nation permits to citizens of the UnitedStates of America the benefit of copyright on substantially the same basis asits own citizens; or when such foreign state or nation is a party to an inter-national agreement which provides for reciprocity in the granting of copy-right, by the terms of which agreement the United States of America may,at its pleasure, become a party to such agreement.”30

Early presidential proclamations and bilateral arrangements under theChace Act were issued principally with respect to European countries, in-cluding France,31 Germany,32 and the United Kingdom.33 National treat-ment was the governing principle of these bilateral agreements, whichmeant that, to qualify for protection, a foreign work had to comply withformal features of U.S. copyright law that were typically absent from for-eign law—affixation of copyright notice, registration and deposit of cop-ies, and renewal. The Chace Act also added the so-called manufacturingclause, requiring that books and other specified materials be printed in theUnited States.34

Bilateral copyright treaties, though they established a pattern of inter-national norms for protecting literary and artistic works, were inherentlylimited. One drawback was that bilateral agreements could vary widely intheir terms, requiring publishers to engage in a cumbersome, piecemealanalysis of whether and to what extent a work from Country A wouldbe protected in Countries B, C, and D. Other shortcomings stemmed fromthe fact that many of these agreements included a most-favored-nationclause. As a consequence, levels of copyright protection could shift eachtime the treaty partner entered into bilateral relations with a new partner.35

Also, these treaties had brief terms and were subject to denunciationon short notice, with the result, as Stephen Ladas observed, “that authorswere continually exposed to the danger of forfeiting protection of theirrights.”36

30. Act of March 3, 1891, ch. 565 §13, 26 Stat. 1106.31. Bilateral Agreement of July 1, 1891, 27 Stat. 981 (Proclamation No. 3).32. Bilateral Agreement of April 15, 1892, 27 Stat. 1021 (Proclamation No. 24).33. Bilateral Agreement of July 1, 1891, 27 Stat. 981 (Proclamation No. 3).34. Act of March 3, 1891, ch. 565 §3, 26 Stat. 1106. See generally U.S. Copyright Office,

Report to Subcommittee on Patents, Copyrights and Trademarks of Sen. Comm. on Judi-ciary and to Subcommittee on Western Hemisphere Affairs of H.R. Comm. on Foreign Affairs(1984).

35. Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 66 (1938).36. Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 67

(1938).

§2.1.2. Multilateral Copyright Treaties

§2.1.2.1. The Berne Convention

a. from the 1886 berne act to the 1967 stockholm act

Even before the first bilateral copyright agreement in 1852, French legisla-tors called for a universal law of copyright, invoking the familiar principleof natural right. The universalist movement evolved both in and out of France,starting with an international Congress of Authors and Artists in Brusselsin 1858, attended by delegates of literary societies and universities, as wellas by authors, artists, journalists, librarians, and lawyers. The movementgained momentum at an 1878 international literary congress in Paris pre-sided over by Victor Hugo. These meetings also spurred the eventual forma-tion of the Association Littéraire et Artistique Internationale under VictorHugo’s leadership.37

At an 1882 Congress in Rome, the new Association dropped the agendafor a universal copyright law in favor of a conference proposed by the Ger-man Publishers’ Association, the Boersenverein der deutschen Buchändler,devoted to the formation of an international copyright union. The confer-ence, conducted over three days in September 1883 in Berne, Switzerland,produced a treaty consisting of ten articles. A year later the Swiss govern-ment convened the first diplomatic conference on the proposed treaty and,after two more September conferences, delegates produced a final draft of theConvention for the Protection of Literary and Artistic Works.38 The treatywas signed by ten countries—Germany, Belgium, Spain, France, the UnitedKingdom, Haiti, Italy, Liberia, Switzerland, and Tunisia—and came into

37. The historical background in this and the following paragraph is drawn from StephenP. Ladas, 1 The International Protection of Literary and Artistic Property 71–83 (1938); SamRicketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–198641–80 (1987).

38. The title of the Convention was the product of compromise. According to StephenLadas, the French delegation objected to the Convention’s working title, pour la protectiondes droits d’auteur, a term then commonly used in France to define a dramatist’s rights inhis work’s presentation, and suggested instead, pour la protection de la propiété littéraire etartistique. The German delegation opposed the change on the ground that the word propiétéwas vexed by contemporary controversies over the nature of the author’s right. Followinga proposal from the Swiss delegation, the expression protection des oeuvres littéraires et artistiqueswas adopted, although, according to Ladas, “this was hardly accurate since the Conven-tion purported to protect ‘authors’ and not ‘works.’ However, the Conference made it clearthat in using this expression it did not intend to take any position on the theoretical contro-versies relating to the nature of authors’ rights. The phrase could be translated in eachcountry by the expression usually employed to designate these rights, such as ‘Urheberrecht,’and ‘copyright.’” Stephen P. Ladas, 1 The International Protection of Literary and ArtisticProperty 81–82 (1938).



force on December 5, 1887.39 “Despite this relatively limited membership,”Professor Sam Ricketson has observed, “the geographical sweep of the newUnion was considerable when account is taken of the colonial possessionsof France, Germany, Italy, Belgium, Spain and the UK.”40

The substantive provisions of the 1886 Berne Act did not depart signifi-cantly from the principles already adopted in the bilateral agreements andthe national copyright laws on which they rested. Following the approachtaken in many of the earlier bilateral agreements, the Berne Act adoptednational treatment as its pivotal principle;41 but, like the bilateral agree-ments, the 1886 Act also carved out an exception for term of protection,subjecting it to a rule of national reciprocity.42 The only minimum term pre-scribed in the Act was ten years for translation rights.43 The Act allowedformalities, such as registration and deposit, of the sort commonly requiredunder national laws at the time, subjecting enjoyment of the prescribed rights“to the accomplishment of the conditions and formalities prescribed by lawin the country of origin of the work.”44

The Berne Act expressly guaranteed two of the three rights that were gen-erally protected under national laws of the time, the rights of translation45

and public performance.46 The reproduction right, though regularly pro-tected under national law, did not appear in the 1886 text. One reason mayhave been that the right “was so much taken for granted that it was not evenmentioned.”47 Another possible explanation is that the reproduction rightwas so variously defined under the different national laws that omission wasthe only realistic alternative to divisive debates over the form the right shouldtake as a minimum convention standard.

The Berne Text’s signal departures from the bilateral agreements that pre-ceded it were its intended permanence and universality, attributes capturedin the treaty’s creation of a “Union for the protection of the rights of authorsover their literary and artistic works.”48 The Union was structured to existseparate and apart from any particular act of the treaty, which means that

39. Of these ten countries, only Liberia failed to ratify the treaty. Two other countries, Ja-pan and the United States, sent representatives to the final conference; Japan adhered to theConvention 12 years later, the United States 103 years later.


41. Berne Convention, 1886 Art. II(2).42. Berne Convention, 1886 Art. II(2).43. Berne Convention, 1886 Art. V.44. Berne Convention, 1886 Art. II(2).45. Berne Convention, 1886 Arts. 5 and 6.46. Berne Convention, 1886 Art. IX.47. Stephen M. Stewart & Hamish Sandison, International Copyright and Neighbouring Rights

103 (2d ed. 1989).48. Berne Convention, 1886 Art. I.

the treaty could be revised over time to meet changing conditions, yet noUnion member would have to adhere to the new act as a condition to retain-ing a place at the conference table for future revisions. Also, any countrycould join the Union at any time by adhering to the most recent act of theConvention. Treaty obligations between Union members would be measuredby the terms of the particular act or acts to which they adhered.49

The 1886 Berne Text made its protection available to authors who were“nationals” of Union countries, whether their work was “published in oneof those countries or unpublished.”50 The Act made the work’s country oforigin important for purposes of applying the rule of comparison of terms anddetermining compliance with formalities. In the case of published works, thecountry of origin was the country in which the work was first published;51

in the case of unpublished works, the country of origin was the country ofwhich the author was a national.52 The Act defined protected “literary andartistic works” in encompassing terms—“every production whatsoever in theliterary, scientific, or artistic domain which can be published by any mode ofimpression or reproduction”53—and expressly excluded protection for news-paper or periodical “articles of political discussion” or “news of the day.”54

The 1908 Berlin Act introduced several important changes. The BerlinAct’s prohibition of formalities as a condition to the acquisition, exercise, orenjoyment of copyright55 at least partially explains the subsequent disincli-nation of the United States, with its notice, deposit, registration, and domes-tic manufacturing requirements, to join the Union. The Berlin Act addedprotection for cinematographic productions as derivative works;56 photo-graphs had already been added by the 1896 Paris Additional Act.57 The Ber-lin Act established a minimum term of protection measured by fifty yearsafter the author’s death, subject to the rule of comparison of terms.58 The1908 Act also added a qualified right to make recordings of musical works59

and established the principle that a work’s protection in any country of theUnion is independent of its protection in its country of origin.60

49. On the coordination of obligations inter se of Berne Union members that have adheredto different treaty texts, see §4.1.1.4, below.

50. Berne Convention, 1886 Art. II(1).51. Berne Convention, 1886, Art. II(3).52. Berne Convention 1886, Art. II(4).53. Berne Convention, 1886 Art. IV.54. Berne Convention, 1886 Art. VII(2).55. Berne Convention, 1908 Berlin Text, Art. 4(2).56. Berne Convention, 1908 Berlin Text, Art. 14(2).57. Berne Convention, Paris Additional Act, 1896 Art. II(1) (B).58. Berne Convention, 1908 Berlin Text, Art. 7(1), (2).59. Berne Convention, 1908 Berlin Text, Art. 13.60. Berne Convention, 1909 Berlin Text, Art. 4(2).



Following the Berne Additional Protocol of 1914, which introduced thereprisal clause presently embodied in Article 6(1) of the 1971 Paris Act,61

the 1928 Rome Act added the moral rights of attribution and integrity to theConvention’s minimum rights,62 as well as a right to broadcast copyrightedworks—“communication of . . . works to the public by radio-diffusion”—which could be subjected to a compulsory license under national legisla-tion.63 The Rome Act also provided that the minimum copyright term forjoint works was to be measured from the death of the last surviving au-thor.64 The 1948 Brussels Act strengthened or clarified several minimumConvention rights, including moral right, the adaptation right, and thetranslation right. Among other changes, the Brussels Act expanded thebroadcast right to include television,65 added works of applied art and in-dustrial design as examples of protected works,66 and clarified rights in cin-ematographic works.67

When nations such as France, Germany, and the United Kingdom signedthe Berne Convention in 1886, they effectively committed their colonies tothe Convention’s obligations. As these colonies achieved independencestarting in the 1950s, they increasingly chafed at the imposition of copy-right treaty standards that had effectively been imposed on them by a for-eign power. To address these demands, in 1967 the countries of the BerneUnion met in Stockholm. A Protocol Regarding Developing Countries, for-mulated at the Stockholm Conference to reduce the treaty obligations ofthe former colonies, failed to obtain the required number of ratifications.68

Subsequent meetings among Union and non-Union countries, includingthe United States, achieved a compromise between the developed and de-veloping countries embodied in Article 21 and the Appendix to the 1971Paris Act. The Paris Act also included comparatively less controversial pro-visions, such as the express inclusion for the first time of the reproduction

61. Additional Protocol [to the International Copyright Convention on November 13,1908], signed at Berne, March 20, 1914.

62. Berne Convention, 1928 Rome Text Art. 6bis.63. Berne Convention, 1928 Rome Text, Art. 11bis.64. Berne Convention, 1928 Rome Text, Art. 7bis(1).65. Berne Convention, 1948 Brussels Text, Art. 11bis.66. Berne Convention, 1948 Brussels Text, Art. 2(1), (5).67. Berne Convention, 1948 Brussels Text, Art. 14.68. On the history of the Stockholm Conference, see Robert D. Hadl, Toward Interna-

tional Copyright Revision: Report on the Meetings in Paris and Geneva, September 1970,18 Bull. Copr. Soc’y 183 (1970); Charles F. Johnson, The Origins of the Stockholm Proto-col, 18 Bull. Copr. Soc’y 91 (1970); Irwin A. Olian, Jr., International Copyright and the Needsof Developing Countries: The Awakening at Stockholm and Paris, 7 Cornell Int’l L.J. 81, 95–104 (1974); Nora Maija Tocups, The Development of Special Provisions in InternationalCopyright Law for the Benefit of Developing Countries, 29 J. Copr. Soc’y 402, 413–414(1982).

right as a minimum standard.69 The Paris Act is the current text of the BerneConvention and entered into force on October 10, 1974.70

The United States was the single, commercially most important country toremain outside the Berne Union for its entire first century. The United Statesundertook no copyright relations at all with foreign countries until 1892, whenit entered into the first of a series of bilateral copyright agreements,71 and 1955,when it adhered to the Universal Copyright Convention. Political pressure toretain formalities such as the domestic manufacturing clause, which wereprohibited since 1908 by the Berlin Text, was one reason the United Statesdeclined to join Berne. Another reason was the availability to American pub-lishers of the so-called “back door to Berne,” enabling them to secure Berneprotection by simultaneously first publishing a work in the United States anda Berne Union country,72 a stratagem that provoked the United Kingdom topropose a protocol permitting reprisal in such cases. The protocol, adopted in1914, is presently embodied in Article 6(1) of the 1971 Paris Act.73 The UnitedStates adhered to the Berne Convention on March 1, 1989.

b. the 1971 paris act of the berne convention

(i) Conditions of Protection. The 1971 Paris Act prescribes two principalpoints of attachment that will entitle a work to protection in a Union coun-try other than the work’s country of origin: a work will be protected if itsauthor is a national or domiciliary of a member state74 or, alternatively, ifthe work is first or simultaneously published in a member state.75 In the case

69. Berne Convention, 1971 Paris Text, Art. 9(1). According to Professor Ulmer, “The diffi-culty which had previously been encountered was that regulation of the reproduction rightwould also have to contain provisions on the exceptions permitted by the contracting states. InStockholm a formula was found whereby the contracting states reserved the right to permit re-production in certain special cases, provided that such reproduction neither conflicts with nor-mal exploitation of the work nor unreasonably prejudices the legitimate interests of the author.”Eugen Ulmer, One Hundred Years of the Berne Convention, 17 I.I.C. 707, 711 (1986).

70. The text of the 1971 Paris Act is summarized at §2.1.2.1.B, below.71. See §2.1.1, above.72. See §4.1.1.1.A(ii), below.73. See Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 96

(1938); WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (ParisAct, 1971) 39–40 (1978).

74. Berne Convention 1971 Paris Text, Art. 3(1) (a), (2). See §4.1.1.B(i), below.Comparable provision is made for motion pictures, for which a point of attachment exists

if its “maker” has its headquarters in or is domiciled in a member state. Berne Convention1971 Paris Text, Art. 5(c) (1). See §4.1.1.1.B(iii), below.

75. Berne Convention, 1971 Paris Text, Art. 3(1)(b). See §4.1.1.1.B(ii), below.Comparable provision is made for works of architecture and works incorporated in a build-

ing or other structure if the structure is located in a member country. Berne Convention, 1971Paris Text, Art. 4(b). See §4.1.1.1.B(iii), below.



of published works, Article 5(4) of the 1971 Paris Act defines “country oforigin” as, “in the case of works first published in a country of the Union,that country; in the case of works published simultaneously in several coun-tries of the Union which grant different terms of protection, the countrywhose legislation grants the shortest term of protection,”76 and “in the caseof works published simultaneously in a country outside the Union and in acountry of the Union, the latter country.”77 In “the case of unpublished worksor of works first published in a country outside the Union, without simulta-neous publication in a country of the Union,” the country of origin is thecountry of which the author is a national.78 Article 5(4) (c) makes specialprovision for cinematographic works and architectural or other artistic worksincorporated in a building.79

The Paris Act contains the substance of the requirement introduced in the1908 Berlin Act that the “enjoyment and the exercise” of copyright “shallnot be subject to any formality,”80 and it carries forward the bedrock require-ment of national treatment that has been present in every Act since the 1886Act.81 The rule of national treatment, as augmented by minimum treatystandards and the rule of retroactivity,82 is, however, subject to any reser-vations a member country may have made under the Paris Act or under someearlier Act if it has preserved them under the Paris Act.83 Article 19 under-scores that the “Convention shall not preclude the making of a claim to thebenefit of any greater protection which may be granted by legislation in acountry of the Union.”

(ii) Subject Matter. The 1971 Paris Act of the Berne Convention describesprotectible “literary and artistic works” in the most encompassing terms, as“every production in the literary, scientific and artistic domain, whatever maybe the mode or form of its expression.”84 In addition to the examples listed inArticle 2(1)—among them books, pamphlets, dramatic or dramatico-musicalworks, musical compositions, cinematographic works, drawings, architec-ture, photography, and works of applied art—subsections (3) and (5) ofArticle 2 respectively provide for protection of translations, adaptations,musical arrangements, and other derivative works and collections of liter-ary or artistic works such as encyclopedias and anthologies.

76. Berne Convention, 1971 Paris Text, Art. 5(4)(a).77. Berne Convention, 1971 Paris Text, Art. 5(4)(b).78. Berne Convention, 1971 Paris Text, Art. 5(4)(c).79. Berne Convention, 1971 Paris Text, Art. 5(4) (c) (i), (ii). See §4.1.1.1.B(iii), below.80. Berne Convention, 1971 Paris Text, Art. 5(2).81. Berne Convention, 1971 Paris Text, Art. 5(1).82. Berne Convention, 1971 Paris Text, Art. 18.83. Berne Convention, 1971 Paris Text, Art. 30.84. Berne Convention, 1971 Paris Text, Art. 2(1). See §5.1, below.

The Paris Act gives member states some leeway in determining conditionsfor protection. It is, for example, “a matter for legislation in the countries ofthe Union to prescribe that works in general or any specified categories ofworks shall not be protected unless they have been fixed in some materialform.”85 Similarly, it is a matter for local legislation to determine the extentof protection for applied art, designs and models,86 and official texts87 andpolitical speeches and speeches delivered in the course of legal proceedings.88

The 1971 Act also establishes a categorical rule of nonprotectibility: “Theprotection of this Convention shall not apply to news of the day or to miscel-laneous facts having the character of mere items of press information.”89

(iii) Ownership and Term. As a rule, the 1971 Paris Act leaves it to nationallaw to determine who qualifies as the author and initial owner of copyrightin a literary or artistic work. Nonetheless, there is a widespread belief, mostdirectly reflected in the copyright laws of civil law countries, that only flesh-and-blood creators qualify as authors.90 Article 15(1) of the Paris Act estab-lishes a presumption, controlling in the absence of contrary national law,that the person whose name appears on the work “in the usual manner” isthe work’s author, subject to a showing as a matter of law or fact that theperson is not the author.91 Article 14bis(2) of the Paris Act creates an elabo-rate, and largely obscure, framework for determining copyright ownershipof cinematographic works.92

As a general rule, the Paris Act prescribes a minimum term of protectionmeasured by fifty years from the death of the author93 and, in the case of jointworks, computes the minimum term as fifty years from the death of the lastsurviving author.94 The Paris Act prescribes alternative minimum termsfor cinematographic works,95 anonymous and pseudonymous works,96 andphotographic works.97 Article 7(8)’s rule of comparison of terms providesthat, in any case, “the term shall be governed by the legislation of the coun-try where protection is claimed; however, unless the legislation of that coun-

85. Berne Convention, 1971 Paris Text, Art. 2(2).86. Berne Convention, 1971 Paris Text, Art. 2(7).87. Berne Convention, 1971 Paris Text, Art. 2(4).88. Berne Convention, 1971 Paris Text, Art. 2bis(1).89. Berne Convention, 1971 Paris Text, Art. 2(8).90. See §5.2.1.1, below.91. Berne Convention, 1971 Paris Text, Art. 15(1).92. See §5.2.1.5, below.93. Berne Convention, 1971 Paris Text, Art. 7(1).94. Berne Convention, 1971 Paris Text, Art. 7bis.95. Berne Convention, 1971 Paris Text, Art. 7(2).96. Berne Convention, 1971 Paris Text, Art. 7(3).97. Berne Convention, 1971 Paris Text, Art. 7(4).



try otherwise provides, the term shall not exceed the term fixed in the coun-try of origin of the work.”98

(iv) Rights. The Paris Act establishes minimum standards for both moraland economic rights. Article 6bis is the pivotal provision on moral rights andprovides that “the author shall have the right to claim authorship of the workand to object to any distortion, mutilation or other modification of, or otherderogatory action in relation to, the said work, which would be prejudicialto his honor or reputation.”99 The provision imposes a minimum term ofprotection for the rights of attribution and integrity that is coextensive witheconomic rights in the work100 and subjects the “means of redress for safe-guarding” these rights to the law of the country where protection is claimed.101

The Paris Act prescribes several economic rights, including the rights toreproduce a literary or artistic work in any manner or form,102 to make ad-aptations or arrangements of the work,103 to make cinematographic adap-tations and reproductions and to distribute and publicly perform works thusadapted or reproduced,104 to make translations,105 to broadcast106 or pub-licly recite the work,107 and, in the case of dramatic, dramatico-musical andmusical works, to perform the work publicly.108 Article 14ter makes optionalprovision for droit de suite.109

The Paris Act permits member countries to carve out exceptions from li-ability in certain cases, and to substitute equitable remuneration—compul-sory licensing—in others. Article 9(2) encompasses both alternatives in itsterse formulation of permitted limitations on the reproduction right: It “shallbe a matter for legislation in the countries of the Union to permit the repro-duction of such [literary and artistic] works in certain special cases, providedthat such reproduction does not conflict with a normal exploitation of thework and does not unreasonably prejudice the legitimate interests of theauthor.”110 Most exemptions, such as those for limited educational and presspurposes, are left to national legislation, but Article 10(1)’s exemption for

98. See §5.3.2, below.99. See §5.4.2, below.100. Berne Convention, 1971 Paris Text, Art. 6bis(2).101. Berne Convention, 1971 Paris Text, Art. 6bis(3).102. Berne Convention, 1971 Paris Text, Art. 9(1).103. Berne Convention, 1971 Paris Text, Art. 12.104. Berne Convention, 1971 Paris Text, Art. 14(1).105. Berne Convention, 1971 Paris Text, Art. 8.106. Berne Convention, 1971 Paris Text, Art. 11bis.107. Berne Convention, 1971 Paris Text, Art. 11ter(1).108. Berne Convention, 1971 Paris Text, Art. 11(1).109. Berne Convention, 1971 Paris Text, Art. 14ter(1), (2).110. See §5.5, below.

quotation “compatible with fair practice” from a “work which has alreadybeen lawfully made available to the public” is mandatory.111 The Paris Actalso permits equitable remuneration in the case of the broadcasting right112

and the right to make recordings of a musical work.113

(v) Residual Powers and Relations Among Union Members. Article 17 ofthe Paris Act recognizes a residual power among Union members “to per-mit, to control, or to prohibit, by legislation or regulation, the circulation,presentation, or exhibition of any work or production in regard to which thecompetent authority may find it necessary to exercise that right.” This pro-vision dates to the 1886 Berne Act and, so far as copyright is concerned, effec-tively validates the censorship power that underlay the sovereign monopo-lies predating the first copyright laws.114 Since the overall intention of theBerne Convention is to secure a private right against unauthorized appro-priations of literary and artistic works, public censorship measures will notin the usual case contradict these rights. If, however, a claim were made thata government exercise effectively stymied an author’s creative freedom, in-cluding freedom to exploit a work in the marketplace, Article 17 leaves nodoubt that, within its compass, the government measure to preserve publicorder will prevail. In any event, it seems clear that Article 17 does not con-stitute authority for the governmental imposition of compulsory licenses.115

New Union members may not adhere to any text earlier than the 1971Paris Act,116 and the Paris Act contains specific provisions regulating thelegal relations with Berne Union members that have adhered to earlier textsof the Convention.117 Article 20 entitles Union members “to enter into spe-cial agreements among themselves, in so far as such agreements grant toauthors more extensive rights than those granted by the Convention, orcontain other provisions not contrary to this Convention.” The Paris Actprovides for settlement of disputes “concerning the interpretation or applica-tion of this Convention” by a proceeding before the International Court of Jus-tice,118 an unused procedural route that has in any event been eclipsed by themore effective dispute settlement procedures of the TRIPs Agreement.119

111. See §5.5.1.2D, below.112. Berne Convention, 1971 Paris Text, Art. 11bis(2).113. Berne Convention, 1971 Paris Text, Art. 13(1).114. See §1.1, above.115. See WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 99 (1978). “Where the author’s consent was required before a work is madepublicly available, it should not be possible for a country to override that consent (except, forexample, to allow the police to publish or broadcast a photograph of a wanted criminal).”

116. Berne Convention, 1971 Paris Text, Art. 34.117. Berne Convention, 1971 Paris Text, Art. 32.118. Berne Convention, 1971 Paris Text, Art. 33.119. See §2.3.2, above.



Article 6 of the Paris Act, which dates to the 1914 Berne Additional Pro-tocol, entitles Union countries to retaliate against authors who are nation-als of non-Union countries but seek to obtain Berne protection through firstpublication in a Union country, if the non-Union country “fails to protect inan adequate manner the works of authors who are nationals of one of thecountries of the Union.” Article 21 and the Paris Act Appendix embody thecompromise reached with developing countries in 1971.120 Articles 22through 26 provide for the governance and administration of the Union, andsucceeding articles cover institutional topics such as the Convention’s revi-sion,121 acceptance and entry into force,122 and duration and denunciation.123

§2.1.2.2. The Universal Copyright Convention

a. the 1952 geneva act

The central object of the Universal Copyright Convention was to secure multi-lateral copyright relations between the countries of the Berne Union and themany countries outside the Union that found the Berne Convention’s strin-gent minimum standards incompatible with their domestic law. In additionto the United States, the list included several Latin American countries thathad already entered into regional copyright treaties, the then Soviet Union,and several African and Asian nations. The steps leading to the UniversalCopyright Convention trace back to a voeu—wish—adopted at the 1928 RomeConference of the Berne Union to create a bridge between the Berne Conven-tion and the 1910 Buenos Aires Agreement, the principal Pan-Americantreaty to include the United States as a party.124 Efforts to establish multilat-eral relations between Berne and non-Berne countries, particularly propos-als for an entirely new convention separate from Berne, had gained momen-tum by 1939, only to be cut short by the outbreak of World War II.125

A succession of international meetings held under UNESCO auspices,beginning in 1947 and culminating in a 1952 diplomatic conference inGeneva, produced the Universal Copyright Convention signed by thirty-sixstates. Mainly to accommodate the United States, the final text allowed mem-ber states to impose formalities as a condition of protection and to measure

120. See §5.5.1.6.C, below.121. Berne Convention, 1971 Paris Text, Art. 27.122. Berne Convention, 1971 Paris Text, Art. 34.123. Berne Convention, 1971 Paris Text, Art. 35.124. See Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 650

(1938).125. See generally Sam Ricketson, The Berne Convention for the Protection of Literary and

Artistic Works: 1886–1986 842–851 (1987); Theodore R. Kupferman & Mathew Foner, Univer-sal Copyright Convention Analyzed (1955).

the term of protection from the date of a work’s publication rather than fromthe date of the author’s death; it also required neither retroactive protectionnor minimum standards beyond the general prescription of “adequate andeffective protection.”126 At the same time, to satisfy Berne members, the textprovided that the copyright owner’s use of a simple form of copyright noticewould suffice for foreign works to comply with all domestic formalities.127

The text also included the so-called Berne Safeguard Clause to deter defec-tions from Berne for the more relaxed terms of the Universal Copyright Con-vention. Under this clause, any work originating in a country that withdrewfrom the Berne Union after January 1, 1951, “shall not be protected by theUniversal Copyright Convention in the countries of the Berne Union.”128

Economically less developed countries that had originally been broughtinto the Berne Union by their colonial overlords understandably felt cheatedby the Berne Safeguard Clause, which effectively gave countries that adheredto the U.C.C. but not to Berne extensive protection with few obligations. TheSafeguard Clause figured prominently in the demands made by developingcounties at the 1967 Stockholm Conference,129 and, as part of the compro-mise between economically developed and developing countries that wasembodied in the 1971 Acts of the Berne and Universal Copyright Conven-tions, the clause was amended to meet “the temporary need of some Statesto adjust their level of copyright protection in accordance with their stage ofcultural, social and economic development”;130 a new paragraph (b) wasadded to the Appendix Declaration, effectively suspending the operation ofthe clause for any developing country that declared itself as such for thispurpose.131 Apart from the Berne Safeguard Clause as amended, the Univer-sal Copyright Convention is by its terms independent of the operation of theBerne Convention and, in the event of conflict between the terms of the twoconventions, the terms of the relevant Berne text will govern.132

b. the 1971 paris act of the universalcopyright convention

(i) Conditions of Protection. The Universal Copyright Convention makesnationality and first publication the points of attachment for protection under

126. Universal Copyright Convention, 1952 Geneva Text, Art. I.127. Universal Copyright Convention, 1952 Geneva Text, Art. III(1).128. Universal Copyright Convention, 1952 Geneva Text, Appendix Declaration Relating

to Article XVII.129. See §5.5.1.6.C, above.130. Universal Copyright Convention, 1971 Paris Text, Appendix Declaration Relating to

Article XVII.131. Universal Copyright Convention, 1971 Paris Text, Appendix Declaration Relating to

Article XVII(b).132. See §4.1.1.4.B(i), below.



the Convention. In the case of any work, published or unpublished, a pointof attachment will exist if the author is a national of a country that is partyto the Convention.133 In the case of published works, the work will also havea point of attachment if it was first published in a contracting state.134 TheU.C.C. defines publication as “the reproduction in tangible form and the gen-eral distribution to the public of copies of a work from which it can be reador otherwise visually perceived.”135 Article II obligates contracting states toextend national treatment to works protected under the Convention, sub-ject to the minimum treaty standards.136

(ii) Subject Matter. Article I of the U.C.C. Paris Act requires each contract-ing state “to provide for the adequate and effective protection of the rights ofauthors and other copyright proprietors in literary, scientific and artisticworks, including writings, musical, dramatic and cinematographic works,and paintings, engravings and sculpture.”137 Unlike the Berne Convention,the U.C.C. permits member states to impose formalities such as notice, reg-istration, and deposit as a condition to protection, but significantly, in thecase of works first published outside the national territory and authored bya nonnational, Article III(1) provides that the state must regard its formalrequirements as satisfied if, from the time of first publication, all copies of thework published with the copyright owner’s authority bear a prescribed copy-right notice.138

(iii) Ownership and Term. The U.C.C. contains no provisions on determi-nation of authorship. Nonetheless, the Convention’s specific aim to bring theUnited States into the international copyright community suggests that itmay be more receptive to a concept of authorship that includes corporateemployers than is the Berne Convention, with its civil law bias toward flesh-and-blood creators. Article IV prescribes a minimum copyright term mea-sured by the life of the author plus twenty-five years139 or, if the protectingcountry does not compute the copyright term on the basis of the author’slife, twenty-five years from publication or registration of the work.140 In thecase of photographic works or works of applied art, the “term of protection. . . shall not be less than ten years for each of said classes of works.”141 The

133. Universal Copyright Convention, 1971 Paris Text, Art. II(1), (2).134. Universal Copyright Convention, 1971 Paris Text, Art. II(1).135. Universal Copyright Convention, 1971 Paris Text, Art. VI.136. See §3.2, above.137. See §5.1.1, below.138. See §5.1.1.3, below.139. Universal Copyright Convention, 1971 Paris Act Art. IV(2) (a).140. Universal Copyright Convention, 1971 Paris Act Art. IV(2) (a).141. Universal Copyright Convention, 1971 Paris Text, Art. IV(3).

national treatment requirement fixes the copyright term, subject, however,to the rule of the shorter term, under which no contracting state is obligated“to grant protection to a work for a period longer than that fixed for the classof works to which the work in question belongs, in the case of unpublishedworks by the law of the Contracting State of which the author is a national,and in the case of published works by the law of the Contracting State inwhich the work has been first published.”142

(iv) Rights. Under U.C.C. Article II’s national treatment obligation, con-tracting states must treat qualifying works no less favorably than they treatthe works of their own nationals. In addition, they must as a minimum givethese works “adequate and effective” protection and also grant four exclu-sive rights: reproduction by any means, public performance, broadcast,143

and translation.144 At least in the case of the reproduction, performance, andbroadcast rights, national legislation may create exceptions from these rights“that do not conflict with the spirit and provisions of this Convention.”145

Under the compromise reached in 1971, developing countries may subjectthe reproduction and translation rights to compulsory licenses in prescribedcircumstances.146

(v) Relation to Other Treaties. In addition to the Berne Safeguard Clause,as amended in 1971 to accommodate the interests of developing countries,147

the 1971 U.C.C. Paris Act provides that the Convention will not apply to the“relationships among countries of the Berne Union in so far as it relates tothe protection of works having as their country of origin, within the mean-ing of the Berne Convention, a country of the Berne Union”148 and that itwill not “in any way affect” the Berne Convention or membership in the BerneUnion.149 Articles XVIII and XIX respectively establish rules of priority be-tween the U.C.C. and multilateral or bilateral treaties between two or moreAmerican republics or between two or more contracting states,150 and Ar-ticle IX governs relations between countries that are party only to the 1952Act and those party to the 1971 Act. The 1971 Act prohibits reservations151

142. Universal Copyright Convention, 1971 Paris Act Art. IV(4) (a).143. Universal Copyright Convention, 1971 Paris Text, Art. IVbis(1).144. Universal Copyright Convention, 1971 Paris Text, Art. V(1).145. Universal Copyright Convention, 1971 Paris Text, Art. IVbis(2).146. Universal Copyright Convention, 1971 Paris Text, Art. Vter, Vquater.147. Universal Copyright Convention, 1971 Paris Text, Appendix Declaration Relating to

Article XVII.148. Universal Copyright Convention, 1971 Paris Text, Appendix Declaration Relating to

Article XVII.149. Universal Copyright Convention, 1971 Paris Text, Art. XVII.150. See §4.1.1.4.B(i), below.151. Universal Copyright Convention, 1971 Paris Text, Art. XX.



and makes provisions for denunciation152 and for resolution of disputes be-fore the International Court of Justice.153

§2.1.2.3. The WIPO Copyright Treaty

On December 20, 1996, following three weeks of meetings, representativesof approximately 120 countries participating in a Diplomatic Conferenceon Certain Copyright and Neighbouring Rights Questions adopted the WIPOCopyright Treaty, together with the WIPO Performances and PhonogramsTreaty.154 The steps leading to the WIPO Copyright Treaty date to an au-tumn 1989 decision by the WIPO Governing Bodies to prepare a possibleprotocol to the Berne Convention. Both the form of the instrument and itsobjects changed significantly over this brief period.155 The Diplomatic Con-ference ultimately not only addressed questions left open since the revisionof the Berne Convention in 1971, but grappled as well with questions raisedby digital electronic uses of copyrighted works. The Conference also con-fronted the new reality of the TRIPs Agreement and confirmed the pro-tectibility of computer programs as literary works within the terms of theBerne Convention.156

The WIPO Copyright Treaty is closely connected to the 1971 Paris Act of theBerne Convention. The Copyright Treaty obligates contracting parties to ap-ply Articles 2 through 6 of the 1971 Berne Paris Act mutatis mutandis “in re-spect of the protection provided for in this Treaty.”157 Consequently the ParisAct’s provisions on points of attachment,158 national treatment,159 and scopeof protectible subject matter160 apply under the WIPO Copyright Treaty.Article 1 of the Treaty states that it is a “special agreement” within the mean-ing of Article 20 of the Paris Act,161 that nothing in the Treaty is to derogate

152. Universal Copyright Convention, 1971 Paris Text, Art. XIV.153. Universal Copyright Convention, 1971 Paris Text, Art. XV.154. On the Performances and Phonograms Treaty, see §2.2.3, below.155. See generally R. V. Vaidyanatha Ayyar, Interest or Right? The Process and Politics of

a Diplomatic Conference on Copyright, 1 J. of World Intellectual Property 3 (1998); Jörg Reinbothe,Maria Martin-Prat & Silke von Lewinski, The New WIPO Treaties: A First Résumé, 19 E.I.P.R.171 (1997).

156. WIPO Copyright Treaty Art 4. A proposed third treaty, on the protection of databases,was postponed for further action. See generally Neil W. Netanel, The Next Round: The Impactof the WIPO Copyright Treaty on TRIPs Dispute Settlement, 37 Va. J. Int’l L. 441 (1997).

157. WIPO Copyright Treaty Art. 3. See generally Jörg Reinbothe, Maria Martin-Prat, & Silkevon Lewinski, The New WIPO Treaties: A First Résumé, 19 E.I.P.R. 171 (1997).

158. See §4.1.1.1.B, below.159. See §3.2, above.160. See §5.1.1, below.161. WIPO Copyright Treaty Art. 1(1).

from the Contracting Parties’ existing obligations under Berne,162 and that the“Contracting Parties shall comply with Article 1 to 21 and the Appendix ofthe Berne Convention.”163

The WIPO Copyright Treaty expands on three aspects of protectible sub-ject matter under the 1971 Berne Paris Act that had assumed particularsignificance in the contemporary digital environment: that computer pro-grams are protectible as literary works within the meaning of Article 2 ofthe Berne Paris Act;164 that compilations of data or other material “whichby reason of the selection or arrangement of their contents constitute intel-lectual creations, are protected as such”;165 and that copyright protection“extends to expressions and not to ideas, procedures, methods of operationor mathematical concepts as such.”166 Article 9 of the Copyright Treatydeparts from Berne Article 7(4)’s special treatment of the copyright term forphotographs by requiring the standard copyright term of protection for theseworks.167

The WIPO Treaty provides for a public distribution right;168 a qualifiedcommercial rental right for computer programs, cinematographic worksand works embodied in phonograms;169 and a “right of communication tothe public,” by wire or wireless means, including interactive transmissionon demand.170 Article 10 requires contracting parties, when creating ex-ceptions to rights granted under the Treaty to abide generally by the for-mula that Article 9(2) of the Berne Paris Act prescribes for limitations onthe reproduction right.171 The Treaty also requires contracting states toprotect against circumvention of encryption technologies for copyrightedworks172 and against interference with electronic rights management in-formation.173 It also requires effective remedies to enforce rights under theTreaty.174

162. WIPO Copyright Treaty Art. 1(2).163. WIPO Copyright Treaty Art. 1(4).164. WIPO Copyright Treaty Art. 4.165. WIPO Copyright Treaty Art. 5.166. WIPO Copyright Treaty Art. 2.167. See §5.3.1.1, below.168. WIPO Copyright Treaty Art. 6(1). Article 6(2) leaves the question of exhaustion—or

first sale—to national law.169. WIPO Copyright Treaty Art. 7.170. WIPO Copyright Treaty Art. 8.171. See §5.5, below.172. WIPO Copyright Treaty Art. 11.173. WIPO Copyright Treaty Art. 12.174. WIPO Copyright Treaty Art. 14(2).



§2.1.3. Regional Copyright Arrangements

§2.1.3.1. Inter-American Copyright Agreements

Well into the twentieth century the countries of North and South Americapreferred regional copyright arrangements over multilateral arrangements.The great majority of countries in the region of the Americas declined to jointhe Berne Union in its first several decades. Haiti, which signed the 1886Berne text, withdrew from the Union in 1943. Brazil, the next country fromthe region to join the Berne Union, did so only in 1922. Canada joined in1928.175

The first of the American regional copyright treaties was the 1889 Monte-video Treaty. Although based in part on the Berne Convention, this treatydeparted from the national treatment principle by providing that a workwould be protected in any treaty country according to the law of the work’scountry of origin. Unlike the American copyright treaties that followed, theMontevideo Treaty was open to adherence by countries outside the Ameri-cas.176 Subsequent treaties included the 1911 Caracas Convention, the 1908Washington Treaty among Central American republics, and, beginning in1902, a series of Pan-American Conventions modeled after the Berne Con-vention.177 The third Pan-American Convention, concluded in Buenos Airesin 1910, drew the largest number of adherents, including the United Statesand Brazil. The last Pan-American Convention was concluded in Washing-ton in 1946.178

The Universal Copyright Convention was the first treaty to succeed inestablishing copyright relations between the countries of the Americas andthe rest of the world.179 The U.C.C., along with the Berne Convention andthe TRIPs Agreement, have superseded most international copyright rela-tions based on the Pan-American and other American regional conven-tions. However, interstices persist for which it is necessary to navigate thesetreaties’ tangled web to determine whether, and to what extent, copyrightprotection exists for a work originating or infringed in one of the countries

175. See generally Harry G. Henn, Interrelation Between the Universal Copyright Conven-tion and the Pan-American Copyright Conventions, in Theodore R. Kupferman & MathewFoner, eds., Universal Copyright Convention Analyzed 125 (1955).

176. See generally Stephen P. Ladas, 1 The International Protection of Literary and ArtisticProperty 635–637 (1938).

177. See generally Stephen P. Ladas, 1 The International Protection of Literary and ArtisticProperty 637–650 (1938).

178. See Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 644–645 (1938).

179. See §2.1.2.2, above.

of the Americas.180 In the case of works created or published before theoperative date of the relevant country’s adherence to the U.C.C., the BerneConvention, or the TRIPs Agreement, determination of rights may dependupon an analysis of one or more of the regional American treaties.181

§2.1.3.2. The European Union

The institutions of the European Union have, through directives implementedby member states and decisions of the European Court of Justice, created asubstantial body of copyright norms governing activities in the Union and,to some extent, throughout the European Economic Area.182 Although theword “copyright” appears nowhere in the March 25, 1957, Treaty of Romeestablishing a European Economic Community, treaty provisions dealingwith competition, free movement of goods and services, and approximationor harmonization of national laws have been interpreted to support thecreation of copyright norms by judicial decree or, in the case of directives,through implementation in the positive law of member states. Among thedirectives affecting domestic law on copyright and related rights are the 1991Directive on the Legal Protection of Computer Programs,183 the 1992 Direc-tive on Rental Right and Lending Right and on Certain Rights Related toCopyright in the Field of Intellectual Property,184 the 1993 Directive on theCoordination of Certain Rules Concerning Copyright and Rights Related toCopyright Applicable to Satellite Broadcasting and Cable Retransmission,185

the 1993 Directive Harmonizing the Term of Protection of Copyright andCertain Related Rights,186 and the 1996 Directive on the Legal Protection ofDatabases.187

180. On inter-American treaties, and relations under them, see Organization of AmericanStates, Copyright Protection in the Americas (1984). See also Alfred L. Rinaldo Jr., The Scopeof Copyright Protection in the United States Under Existing Inter-American Relations: Abro-gation of the Need for U.S. Protection Under the Buenos Aires Convention by Reliance on theU.C.C., 22 Bull. Copr. Soc’y 417 (1975).

181. On the methodology to be employed when more than one treaty applies to a particu-lar work, see §4.1.1.4, below.

182. See generally Silke von Lewinski, Copyright Within the External Relations of the Eu-ropean Union and the EFTA Countries, 16 E.I.P.R. 429 (1994).

183. Council Directive 91/250/EEC (“Software Directive”), May 14, 1991, O.J. L 122/42.184. Council Directive 92/100/EEC (“Rental Right Directive”), Nov. 19, 1992, O.J. L 346/

61.185. Council Directive 93/83/EEC (“Satellite and Cable Directive”), Sept. 27, 1993, O.J. L

248/15.186. Council Directive 93/98/EEC (“Term of Protection Directive”), Oct. 29, 1993, O.J. L

290/9.187. Council Directive 96/9/EC (“Database Directive”), March 11, 1996, O.J. L 077.



All countries of the European Union are members of the Berne Union. Asa consequence, European Union copyright rules can require member statesto offer more, but not less, protection than is required by the applicable textof the Berne Convention. The rationale of the Court of Justice decision in thePhil Collins case188 provides an example. The Court held there that Article 7(presently Article 6) of the Treaty of Rome, prohibiting discrimination withinthe community on grounds of nationality, barred Germany from denyingneighboring rights protection to a British national under circumstances inwhich it would have given protection to a German national.189 The Court’sreasoning in the case would, as between E.U. countries, effectively supersedethe conditions of reciprocity allowed by the Berne Convention, as for examplein the case of droit de suite.190 The Phil Collins decision may also have impli-cations for relations between Union and non-Union countries that have ad-hered to the TRIPs Agreement. Once a Union country is bound to give non-discriminatory treatment to nationals of other Union countries, its failureto extend comparable nondiscriminatory treatment to nationals of otherTRIPs countries may violate the most-favored-nation provision of the TRIPsAgreement.191

§2.2NEIGHBORING RIGHTS TREATIES

Neighboring rights began to emerge in the first part of the twentieth centurywith national laws protecting creative contributions to phonograms andbroadcasts. The spread of neighboring rights legislation was slow. When, in1961, forty countries signed the International Convention for the Protectionof Performers, Producers of Phonograms and Broadcasting Organizations,192

commonly referred to as the Rome Convention, most of them had to enactfor the first time laws that would fully meet the treaty’s requirements.

Performances, phonograms, and broadcasts often implicate copyrightedworks and, in its first article, the Rome Convention expressly subordinatesneighboring rights to copyright: “Protection granted under this Conventionshall leave intact and shall in no way affect the protection of copyright in

188. Phil Collins v. Imtrat Handelsgesellschaft GmBh, Joined Cases C-92/92 and C-326/92,3 C.M.L.R. 773 (1993).

189. For a discussion of the Phil Collins decision, see §3.2.4.3, below.190. On droit de suite, see §5.4.1.1.A(iii), below.191. On the most-favored-nation obligation in the TRIPs Agreement, see §3.2.4, below.192. See generally ILO, UNESCO, BIRPI, Records of the Diplomatic Conference on the In-

ternational Protection of Performers, Producers of Phonograms and Broadcasting Organiza-tion, Rome, 10–26 October 1961 (1968).

literary and artistic works. Consequently, no provision of this Conventionmay be interpreted as prejudicing such protection.”193 The Rome Convention’shierarchical relationship between copyright and neighboring rights set thepattern for the neighboring rights treaties that followed: the Geneva Phono-grams Convention,194 the WIPO Performances and Phonograms Treaty,195

and the Brussels Satellite Convention,196 as well as the neighboring rightsprovision of the TRIPs Agreement.197 Although this approach reflects thetraditional relationship between copyright and neighboring rights, it alsopresupposes an impermeable boundary between the subject matter of the twosets of rights that will sometimes be more illusory than real. Phonograms,for example, though the subject of neighboring rights in France, are the sub-ject of copyright in the United States.198

§2.2.1. International Convention for the Protection of Performers,Producers of Phonograms and Broadcasting Organizations(Rome Convention)

§2.2.1.1. History

The question of international protection for neighboring rights first formallyarose at the 1928 Rome Conference to revise the Berne Convention.199 Wellbefore the next revision conference, which was scheduled for Brussels in1939, drafts were prepared for an annex to the Berne Convention that woulddeal not only with rights of performers, phonogram producers, and broad-casting organizations, but also with droit de suite.200 The Brussels Conferencewas not held until after the war, in 1948. While the Conference agreed on aprovision for droit de suite in a new Article 14ter of the Berne Convention,201

it took no action on the other proposed rights beyond resolutions calling formember countries to study the issues.202

193. Rome Convention, Art. 1.194. Geneva Phonograms Convention Art. 7(1).According to one study, the first formal proposal for protection of phonogram producers

was made at the 1908 Berne Revision Conference in Berlin. Stephen M. Stewart, InternationalCopyright and Neighbouring Rights 202 (1983).

195. Art. 1(2).196. Art. 6.197. Art. 2(2).198. See §5.1.2, below.199. See WIPO, Guide to the Rome Convention and to the Phonograms Convention 3 (1981).200. See Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:

1886–1986 870 (1987).201. See §5.4.1.1A(iii), below.202. See generally Union Internationale Pour la Protection des Oeuvres Littéraires et

Artistiques, Documents de la Conférence Réunie à Bruxelles du 5 au 26 juin 1948 362–368 (1951).



In 1949 three international organizations—BIRPI (the predecessor toWIPO), UNESCO, with responsibility for the U.C.C., and the InternationalLabor Organization interested in remedying the technological displacementof performers—initiated and coordinated a program of studies and proposeddraft conventions on neighboring rights.203 Meetings convened by the I.L.O.produced draft conventions in Rome in 1951 and Geneva in 1956; in 1957UNESCO and the Berne secretariat organized a meeting of governmentalexperts in Monaco. The three organizations convened a meeting at TheHague in 1960 to reconcile the various draft conventions into a single draft,which then became the basis for deliberations at a diplomatic conference inRome in 1961. The final text of the convention was signed on October 26,1961, by forty states, not including the United States, and came into forceon May 18, 1964.204

§2.2.1.2. Protection of Performers

The Rome Convention provides three possible points of attachment for per-formers: if the performance takes place in another contracting state; if theperformance is fixed in a protected phonogram; or, if unfixed, if the perfor-mance is included in a protected broadcast.205 If one of these points of attach-ment is present, the performer is entitled to national treatment, defined asthe treatment given under the domestic law of the protecting country “toperformers who are its nationals, as regards performances taking place,broadcast, or first fixed, on its territory.”206

In addition to national treatment, the Convention guarantees minimumrights against the broadcast or communication to the public or fixation of aperformance and, if the performance is fixed, against reproduction of the fixa-tion of the performance.207 However, “once a performer has consented to theincorporation of his performance in a visual or audio-visual fixation,” Ar-ticle 19 provides that the minimum rights of Article 7 shall not apply.208

Article 14 prescribes a minimum twenty-year term of protection for perfor-mances, measured from the date of the performance in the case of unfixedperformances, and from the date of fixation in the case of performances fixedin phonograms.

203. WIPO, Guide to the Rome Convention and to the Phonograms Convention 7–9 (1981).204. WIPO, Guide to the Rome Convention and to the Phonograms Convention 8–9

(1981).205. Rome Convention Art. 4.206. Rome Convention Art. 2(1) (a).207. Rome Convention Art. 7.208. See §5.4.1.2.A, below.

§2.2.1.3. Protection of Producers of Phonograms

The Rome Convention prescribes three possible points of attachment forthe protection of producers of phonograms: if the producer is a national ofanother contracting state, if the phonogram’s first fixation of sound wasmade in another contracting state, or if the phonogram was first publishedin another contracting state.209 If a point of attachment is present, the pho-nogram producer is entitled to national treatment in the protecting coun-try, defined as the treatment the protecting country gives to “producers ofphonograms who are its nationals, as regards phonograms first fixed or firstpublished on its territory.”210 In addition to national treatment, phono-gram producers are given a right “to authorize or prohibit the direct orindirect reproduction of their phonograms”211 and a right to equitable re-muneration in the case of secondary uses.212 Article 14 prescribes a mini-mum term of protection for phonograms of twenty years from the date offixation.

§2.2.1.4. Protection of Broadcasters

A point of attachment for a broadcasting organization will exist if the organi-zation’s headquarters is situated in another contracting state or if “the broad-cast was transmitted from a transmitter situated in another ContractingState.”213 National treatment for broadcasting organizations is the treatmentthe protecting country gives under its domestic law “to broadcasting orga-nizations which have their headquarters on its territory, as regards broad-casts transmitted from transmitters situated on its territory.”214 The minimumrights of broadcasting organizations include the right to fix or rebroadcast theirbroadcasts and to reproduce certain fixations.215

209. Rome Convention Art. 5(1). Under Article 5(3) a contracting state “may declare thatit will not apply the criterion of publication or, alternatively, the criterion of fixation.”

210. Rome Convention Art. 2(1) (b).211. Rome Convention Art. 10.212. Rome Convention Art. 12.213. Rome Convention Art. 6(1) (b).Under Article 6(2), a contracting state “may declare that it will protect broadcasts only

if the headquarters of the broadcasting organization is situated in another Contracting Stateand the broadcast was transmitted from a transmitter situated in the same ContractingState.”

214. Rome Convention Art. 2(1) (c).215. Rome Convention Art. 13.



§2.2.1.5. Conditions and Exceptions

Article 11 of the Rome Convention provides that if a Contracting State con-ditions protection of performers or phonogram producers with respect tophonograms on compliance with formalities, these formalities may in anycase be met by inscription of a prescribed notice on copies of the phonogramor its container.

The Rome Convention allows a contracting state to carve out exceptionsfor private use, news reporting, teaching or research, and ephemeral fixa-tion by broadcasters,216 and also to establish the same kinds of limitations itprovides under copyright law for literary and artistic works.217 Article 14establishes a minimum term of protection for broadcasts of twenty years fromthe date of broadcast.218

§2.2.1.6. Institutional and Structural Provisions

The Rome Convention does not apply retroactively.219 The Convention es-tablishes an Intergovernmental Committee to “study questions concerningthe application and operation of this Convention” and “to collect proposalsand to prepare documentation for possible revision of this Convention.”220

The Convention provides for reservations,221 withdrawal of reservations,222

special agreements between contracting states,223 denunciation,224 revi-sion,225 and resolution of disputes between contracting parties before theInternational Court of Justice.226 Two provisions coordinate the Convention’srelationship with the Berne and Universal Copyright Conventions. Article 1provides that the “[p]rotection granted under this Convention shall leaveintact and shall in no way affect the protection of copyright in literary andartistic works. Consequently, no provision of this Convention may be inter-preted as prejudicing such protection.” Article 24 requires that, for a stateto accede to the Convention, it must, among other conditions, be a party tothe Universal Copyright Convention or a member of the Berne Union.

216. Rome Convention Art. 15(1).217. Rome Convention Art. 15(2).218. Rome Convention Art. 14.219. Rome Convention Art. 20.220. Rome Convention Art. 32.221. Rome Convention Art. 16.222. Rome Convention Art. 18.223. Rome Convention Art. 22.224. Rome Convention Art. 28.225. Rome Convention Art. 29.226. Rome Convention Art. 30.

§2.2.2. Convention for the Protection of Producers of PhonogramsAgainst Unauthorized Duplication of Their Phonograms(Geneva Phonograms Convention)

In theory, Article 10 of the Rome Convention ensuring phonogram produc-ers the right to control the direct or indirect reproduction of their phonogramssufficed as a legal sanction against record piracy. In practice, the Rome Con-vention fell short of this object. One reason is that the Convention does notrequire minimum rights against the unauthorized importation or distribu-tion of phonograms, the avenues of piracy that are easiest to monitor and toarrest. Also, through the 1960s, the Rome Convention won fewer than adozen adherents, in part because a condition to adherence was adherenceto the Berne or Universal Copyright Convention as well,227 and in part be-cause even qualifying countries, such as the United States, faced politicalobstacles to joining.

Under mounting pressure from the recording industry, WIPO and UNESCOconvened a committee of governmental experts in March 1971 to look intothe question of international sanctions against record piracy. The commit-tee produced a draft treaty for action at a diplomatic conference in Genevaseven months later. The Phonograms Convention was opened for signatureon October 29, 1971, and came into force on April 18, 1973.228

Article 2 of the Geneva Phonograms Convention obligates contractingstates to protect qualifying phonogram producers “against the making ofduplicates without the consent of the producer and against the importa-tion of such duplicates, provided that any such making or importation isfor the purpose of distribution to the public, and against the distribution ofsuch duplicates to the public.”229 Article 3 provides that the means forimplementing this obligation “shall be a matter for the domestic law of eachContracting State and shall include one or more of the following: protec-tion by means of the grant of a copyright or other specific right; protectionby means of the law relating to unfair competition; protection by means ofpenal sanctions.”230

227. Rome Convention, Art. 24(2).228. See generally WIPO, Guide to the Rome Convention and to the Phonograms Con-

vention 91–93 (1981); Gillian Davies, Piracy of Phonograms 36–43 (2d ed. 1986); EugenUlmer, The Convention for the Protection of Producers of Phonograms Against UnauthorizedDuplication of Their Phonograms, 3 I.I.C. 317 (1972); Stephen M. Stewart, International Copy-right and Neighbouring Rights 238–249 (1983); A. Kaminstein, The Phonograms Conven-tion, 19 Bull. Copr. Soc’y 175 (1972).

229. See generally WIPO, Guide to the Rome Convention and to the Phonograms Convention(1981).

230. See §5.4.1.2.b, below.



Like the Rome Convention, the Geneva Phonograms Convention allowsmember states to carve out the same kinds of limitations on rights as theypermit “with respect to the protection of authors of literary and artisticworks.”231 As a rule, however, the treaty prohibits compulsory licenses.232

Article 4 leaves the duration of protection to national law but adds that “ifthe domestic law prescribes a specific duration for the protection, that dura-tion shall not be less than twenty years from the end either of the year inwhich the sounds embodied in the phonogram were first fixed or of the yearin which the phonogram was first published.”233

The Phonograms Convention prescribes two alternative points of attach-ment. One point of attachment is the phonogram producer’s nationality inanother contracting state. The other point of attachment is the place of thephonogram’s first fixation.234 Like the Rome Convention,235 the PhonogramsConvention provides that compliance with a single prescribed formality—affixation of notice in the proper form and position—will satisfy any otherformalities that domestic law imposes as a condition to protection.236 TheConvention also adopts the Rome Convention’s definitions of “phonogram”237

and “producer of phonograms” and, like the Rome Convention, insulates therights of authors as well as the rights of performers, phonogram producersand broadcasting organizations “under any domestic law or internationalagreement.”238

§2.2.3. WIPO Performances and Phonograms Treaty

The WIPO Performances and Phonograms Treaty was formulated at the samediplomatic conference as the WIPO Copyright Treaty, and it responds to manyof the same issues presented by new electronic media for disseminating cre-ative productions.239 Just as the WIPO Copyright Treaty draws several of itsoperative concepts from the Berne Convention, the Performances and Phono-

231. Geneva Phonograms Convention Art. 6.232. See §5.4.1.2.B, below.233. See §5.4.1.2.B, below.234. Geneva Phonograms Convention Art. 7(4). (“Any Contracting State which, on Oc-

tober 29, 1971, affords protection to producers of phonograms solely on the basis of the placeof first fixation may, by a notification deposited with the Director General of the World Intel-lectual Property Organization, declare that it will apply this criterion instead of the criterionof the nationality of the producer.”)

235. See §5.1.2.4, below.236. Geneva Phonograms Convention Art. 5.237. Geneva Phonograms Convention Art. 1.238. Geneva Phonograms Convention Art. 7(1).239. For the background of the WIPO Copyright Treaty, see §2.1.2.3, above.

grams Treaty draws on elements of the Rome Convention.240 Like the WIPOCopyright Treaty, the WIPO Performances and Phonograms Treaty borrowssubstantially from the terms of the TRIPs Agreement.241

The Performances and Phonograms Treaty prescribes as its point of attach-ment for protection in a contracting country that the performer or phonogramproducer be a national of another contracting country.242 The treaty relies forthis purpose on the nationality criteria of the Rome Convention: “The nation-als of other Contracting Parties shall be understood to be those performers orproducers of phonograms who would meet the criteria for eligibility for pro-tection provided under the Rome Convention, were all the Contracting Partiesto this Treaty Contracting States of that Convention.”243 The level of protectionrequired by the Performances and Phonograms Treaty is a constrained versionof national treatment, obligating each contracting party to give nationals ofother contracting parties the treatment it accords its own nationals “withregard to the exclusive rights specifically granted in this Treaty, and to the rightto equitable remuneration provided for in Article 15 of this Treaty.”244

The Performances and Phonograms Treaty approximates Article 6bis ofthe Berne Convention Paris Act in requiring that performers receive rightsof attribution and integrity in their live aural performances or performancesfixed in phonograms.245 This is the first time moral rights have been pre-scribed for performers in an international agreement.

The Treaty requires that performers receive the economic rights to fix theirperformances and to broadcast and communicate unfixed performances tothe public;246 to reproduce their performances fixed in phonograms, directlyor indirectly;247 and to distribute performances fixed in phonograms to thepublic.248 The Treaty also requires a limited right for commercial public rentalof performances fixed in phonograms249 and a “right of making available . . .fixed performances” that corresponds to the WIPO Copyright Treaty’s rightof communication to the public and encompasses means by which “mem-bers of the public may access them from a place and a time individuallychosen by them.”250 The Treaty gives phonogram producers comparable

240. On the Rome Convention, see §2.2.1, above.241. See §2.2.3, above.242. WIPO Performances and Phonograms Treaty Art. 3(1).243. WIPO Performances and Phonograms Treaty Art. 3(2).244. WIPO Performances and Phonograms Treaty Art. 4(1).245. WIPO Performances and Phonograms Treaty Art. 5.246. WIPO Performances and Phonograms Treaty Art. 6.247. WIPO Performances and Phonograms Treaty Art. 7.248. WIPO Performances and Phonograms Treaty Art. 8(1).Article 8(2) leaves it to the contracting party to determine whether and to what extent it

will apply the doctrine of exhaustion, or first sale.249. WIPO Performances and Phonograms Treaty Art. 9.250. WIPO Performances and Phonograms Treaty Art. 10.



rights of reproduction,251 distribution,252 rental,253 and “making avail-able.”254 Article 15 entitles both performers and phonogram producers toequitable remuneration for the use of phonograms for broadcasting or com-municating to the public.255

Like the WIPO Copyright Treaty, the Performance and Phonograms Treatyemploys a formula borrowed from Article 9(2) of the Berne Paris Act to cali-brate the limitations contracting countries may impose on exclusive rights.256

Article 17 of the Treaty extends the Rome Convention’s minimum term ofprotection for a performance fixed in phonograms to fifty years from the yearof fixation;257 in the case of phonogram producers, protection lasts for fiftyyears from the phonogram’s publication or, failing publication within a pre-scribed time, fifty years from the year of fixation.258 Like the Rome Conven-tion,259 the Performances and Phonograms Treaty states that its protectionis not to affect the protection of copyright in literary and artistic works.260 Italso provides that its terms shall not impair the contracting parties’ existingobligation under the Rome Convention.261

§2.2.4. Convention Relating to the Distribution ofProgramme-Carrying Signals Transmitted by Satellite(Brussels Satellite Convention)

In October 1968, the International Bureau for the Protection of Intellec-tual Property, the predecessor to the World Intellectual Property Organi-zation, convened a conference in Geneva to consider the copyright andneighboring rights aspects of satellite transmissions of radio and televisionprogramming.262 Some of the government experts at the conference believedthat a new treaty was unnecessary since the Rome Convention’s definition of“broadcasting” could properly be interpreted to encompass satellite transmis-

251. WIPO Performances and Phonograms Treaty Art. 11.252. WIPO Performances and Phonograms Treaty Art. 12.253. WIPO Performances and Phonograms Treaty Art. 13.254. WIPO Performances and Phonograms Treaty Art. 14.255. WIPO Performances and Phonograms Treaty Art. 15.256. WIPO Performances and Phonograms Treaty Art. 16.257. WIPO Performances and Phonograms Treaty Art. 17(1).258. WIPO Performances and Phonograms Treaty Art. 17(2).259. See §2.2.1, above.260. WIPO Performances and Phonograms Treaty Art. 1(2).261. WIPO Performances and Phonograms Treaty Art. 1(1).262. The historical background in this and the next paragraph is drawn from Claude

Masouyé, A New International Convention, 25 E.B.U. Rev. 46 (Sept. 1974), and Report of the

sion.263 However, other experts argued that the definition did not reach thatfar and would not in any event cover cable retransmission. Further, the RomeConvention’s limited success in winning adherents made it a less than effectivevehicle for regulating what promised to be an international phenomenon. Thegovernment experts also rejected the alternative of revising other internationalagreements, such as the International Telecommunications Convention,264

to address the question of protection against satellite transmission.The experts meeting in Geneva ultimately agreed on the need for a new

multilateral treaty to deal with the question of satellite transmission. Follow-ing a meeting of government experts convened by UNESCO in 1969, subse-quent joint WIPO–UNESCO conferences were held in 1971, 1972, and 1973,and the last of these, in Nairobi, produced the conceptual solution that be-came the basis for a diplomatic conference in Brussels in 1974. The Nairobisolution was to regulate satellite transmissions as a matter of public inter-national law, obligating member states to comply with regulatory standardsrather than investing authors and broadcasters with private rights againstunauthorized carriage of signals.265 The final text of the convention embody-ing this principle was adopted in Brussels on May 21, 1974.

The Brussels Convention differs from traditional copyright and neighbor-ing rights treaties in most pertinent respects. Article 2 of the Convention

General Rapporteur, International Conference of States on the Distribution of Programme-Carrying Signals Transmitted by Satellite (Palais d’Egmont, Brussels, 6–21 May 1974), UNESCO/WIPO/CONFSAT/42, summarizing the history of the Brussels Convention and proceedingsat the 1974 Brussels Conference that ultimately produced the Convention. Both these sourcesalso provide valuable insights into the Convention’s operation.

263. Rome Convention Art. 3 defines broadcasting as “the transmission by wireless meansfor public reception of sounds or of images and sounds.”

On protection against satellite transmission under the Berne Convention, see Eugen Ulmer,Protection of Authors in Relation to the Transmission Via Satellite of Broadcast Programmes,93 R.I.D.A. 4 (1977).

264. Convention of the International Telecommunications Union (Nice, June 30, 1989).265. “Retaining the principle of an international statute concerning the distribution of sig-

nals and associating this with the essential concept of their intended destination, the Nairobidraft merely calls upon Contracting States to assume the obligation to take all adequate mea-sures to prevent the distribution on the territory of satellite-transmitted signals by distribu-tors for whom these signals are not intended. There was no further question of granting, in-ternationally, exclusive rights of authorization to the broadcasting organizations originatingthe programmes or—in consequence—to the contributors to those programmes, all of whichwas made a matter either for national legislation or for contractual negotiations. Rightly orwrongly—once again, only time will tell—this new philosophy was considered to be the onedeserving widest support.” Claude Masouyé, A New International Convention, 25 E.B.U. Rev.46, 48 (Sept. 1974).



protects against distribution of programme-carrying signals266 rather thanagainst distribution of the signal’s content.267 This means that a signal willbe protected even if its content is unprotected by copyright or a neighboringright. Second, following the Nairobi solution, Article 2 creates an obligationon the part of contracting states but implies no private rights in the protectedsignals. Third, the “adequate measures” contemplated by Article 2 mayinclude private rights such as national copyright or neighboring rights lawsbut, according to the Conference Report, may also include penal sanctions,administrative regulations, or combinations of these measures.268

Taken together, the Brussels Convention definitions of “signal,” “emittedsignal,”269 and “derived signal,”270 as employed in Article 2(1), extend therequired protection from unauthorized interception or distribution to asignal’s uplink to the satellite, its storage in the satellite, and its downlinkfrom the satellite.271 However, by excluding from the treaty’s obligation the“distribution of derived signals taken from signals which have already beendistributed by a distributor for whom the emitted signals were intended,”

266. Article 1(i) of the Brussels Satellite Convention defines “signal” as “an electronically-generated carrier capable of transmitting programmes,” and Article 1(ii) defines “programme”as “a body of live or recorded material consisting of images, sounds or both, embodied in sig-nals emitted for the purpose of ultimate distribution.”

267. Article 2(1) of the Brussels Satellite Convention provides:

Each Contracting State undertakes to take adequate measures to prevent the distri-bution on or from its territory of any programme-carrying signal by any distributor forwhom the signal emitted to or passing through the satellite is not intended. This obliga-tion shall apply where the originating organization is a national of another ContractingState and where the signal distributed is a derived signal.

268. Report of the General Rapporteur, International Conference of States on the Distri-bution of Programme-Carrying Signals Transmitted by Satellite, in Records of the Interna-tional Conference of States on the Distribution of Program-Carrying Signals Transmitted bySatellite (1977). See generally Robert Dittrich, The Brussels Satellite Convention, 25 E.B.U. Rev.60 (Nov. 1974).

269. An “emitted signal” or “signal emitted” is “any programme-carrying signal that goesto or passes through a satellite,” Art. 1(iv).

270. A “derived signal” is “a signal obtained by modifying the technical characteristicsof the emitted signal, whether or not there have been one or more intervening fixations,”Art. 1(v).

271. See Report of the General Rapporteur, International Conference of States on the Dis-tribution of Programme-Carrying Signals Transmitted by Satellite, in Records of the Interna-tional Conference of States on the Distribution of Programme-Carrying Signals Transmittedby Satellite para. 83 (1977); Robert Dittrich, The Brussels Satellite Convention, 25 E.B.U. Rev60, 62 (Nov. 1974) (stating that the Convention makes it “particularly clear that the obliga-tion not only involves preventing the interception of the beam from the satellite to the earth,but also the interception of the beam from the earth to the satellite. It was pointed out duringthe conference that the interception of the beam from the earth to the satellite is technicallypossible by use of a second satellite.”).

Article 2(3) effectively withholds liability from the pirate who intercepts aterrestrial signal from an intended recipient. The Convention expressly ex-cludes the activities of direct broadcast satellites, “where the signals emittedby or on behalf of the originating organization are intended for direct recep-tion from the satellite by the general public.”272

The Brussels Satellite Convention leaves to local law the duration of anymeasure taken under Article 2,273 and it creates an exemption from Article 2’sobligation for such activities as carriage of short excerpts from the programscarried by a signal consisting of reports of current events, quotation com-patible with fair practice, and certain educational and research uses in de-veloping countries.274 Article 6 secures copyright and neighboring rightsprotection from impairment by providing that the Convention “shall in noway be interpreted to limit or prejudice the protection secured to authors,performers, producers of phonograms, or broadcasting organizations, un-der any domestic law or international agreement.”

§2.3TRADE ARRANGEMENTS

International copyright and international trade are inextricably linked. Anytime one country undertakes, within its borders, to protect works originat-ing in another country, it makes at least implicitly a calculation of thedecision’s implications for its balance of trade. Through the latter part of thetwentieth century, intellectual property emerged as a specific target ofthe trade process, from the harmonization agendas of regional blocs such asthe European Community,275 to unilateral threats of trade sanctions, mostnotably by the United States, as a vehicle for persuading economically lessdeveloped trading partners to adopt and enforce intellectual property laws.276

The Agreement on Trade-Related Aspects of Intellectual Property Rights,concluded at Marrakesh on April 15, 1994, exemplifies the perceived advan-tages of the trade process in resolving differences over intellectual propertyprotection.277 One advantage is flexibility, the capacity to link demands forstronger protection in copyright importing countries to demands from thosecountries that the economically more developed countries give them recip-

272. Brussels Satellite Convention Art. 3.273. Brussels Satellite Convention Art. 2(2).274. Brussels Satellite Convention Art. 4.275. See §2.1.3.2, above.276. See generally Michael Ryan, Knowledge Diplomacy: Global Competition and the

Politics of Intellectual Property 73–85 (1998).277. On the TRIPs Agreement generally, see §2.3.2, below.



rocal concessions on textile, apparel, or agriculture exports. A second advan-tage is that a broad trade agenda covering many if not most aspects of anation’s economic life can justify the nationwide strengthening of judicialenforcement institutions in ways that a treaty dealing only with copyrightor neighboring rights could not. Finally, trade sanctions are characteristi-cally effective. Where the copyright and neighboring rights treaties leave tolocal courts the interpretation and enforcement of treaty terms, nominallysubject to review by the International Court of Justice, the 1994 WTO Under-standing on Rules and Procedures Governing the Settlement of Disputespromises that local decisions departing from TRIPs norms will be subject toscrutiny by qualified panels and subject to ultimate review by the DisputeSettlement Body.278

§2.3.1. North American Free Trade Agreement

The North American Free Trade Agreement, entered into by Canada, Mexico,and the United States and approved by the three governments on October 7,1992, contains among other objects provisions on copyright, sound record-ings, and encrypted programme-carrying satellite signals.279 The NAFTAnegotiations began well after the start of the TRIPs discussions but werecompleted one year before the TRIPs Agreement concluded,280 and NAFTA’scopyright provisions borrowed concepts and language from drafts of theTRIPs Agreement.

§2.3.1.1. Conditions of Protection

The point of attachment for NAFTA’s intellectual property provisions isnationality.281 NAFTA promises nationals of member states that the othermember states will grant them national treatment282 bolstered by three sets

278. See generally Paul Edward Geller, Can the GATT Incorporate Berne Whole? 12 E.I.P.R.423 (1990); J. H. Reichman, Intellectual Property in International Trade: Opportunity andRisks of a GATT Connection, 22 Vand. J. Transnat’l L. 747, 861 (1989).

279. Other intellectual property provisions of NAFTA deal with trademarks (Art. 1708),patent (Art 1709), layout designs of semiconductor integrated circuits (Art. 1710), tradesecrets (Art. 1711), geographical indications (Art. 1712), and industrial designs (Art. 1713).

For a detailed discussion of the intellectual property provisions of NAFTA, see Richard E.Neff & Fran Smallson, NAFTA: Protecting and Enforcing Intellectual Property Rights in NorthAmerica (1994).

280. On the history of the TRIPs Agreement see §2.3.2.1, below.281. NAFTA Art. 1701(1).282. NAFTA Art. 1703.

of minimum standards: “adequate and effective protection and enforcementof intellectual property rights;”283 the terms of the 1971 Paris Act of the BerneConvention;284 and specific subject matter standards285 and standards forrights in literary and artistic works and sound recordings.286

NAFTA qualifies the national treatment guarantee for sound recordings.Though requiring each party to give national treatment to producers andperformers who are nationals of another party, Article 1703(1) provides that“a Party may limit rights of performers of another Party in respect of second-ary uses of sound recordings to those rights its nationals are accorded in theterritory of such other Party.” “Secondary uses of sound recordings” typi-cally means broadcasts, and the effect of this provision is that Mexico andCanada, which are parties to the Rome Convention, which entitles perform-ers to rights in the broadcast of their recordings, are not obligated to providefor compensation to American performers whose performances are publiclytransmitted in Mexico since the United States, not a party to the Rome Con-vention, does not grant a right to compensation under its domestic law.287

Since, however, Article 1703(1) guarantees national treatment for “produc-ers and performers,” and allows this exception only with respect to “perform-ers” American producers of sound recordings will presumably be entitled tocompensation for secondary uses in Mexico.

Article 1703(2) provides that “[n]o Party may, as a condition of accord-ing national treatment under this Article, require right holders to complywith any formalities or conditions in order to acquire rights in respect ofcopyright and related rights.” Since Canada, Mexico, and the United Statesare all parties to a text of the Berne Convention that prohibits formalities asa condition to the enjoyment and exercise of the rights secured by that Con-vention,288 the significance of Article 1703(2) lies in the phrase, “and relatedrights.” The provision is presumably aimed at forestalling development, inthe NAFTA countries, of the practice of some European Union countries, ofsubjecting protection of related rights to a condition of reciprocity or, alter-natively, to a formality such as first publication or fixation in the protectingcountry.289

283. NAFTA Art. 1701(1).284. NAFTA Art. 1701(2) (b). Article 1701(2) also requires each party to “at a minimum”

give effect to the “substantive provisions” of the Geneva Phonograms Convention (1971); theParis Convention for the Protection of Industrial Property (1967); and the 1978 or 1991 Actsof the International Convention for the Protection of New Varieties of Plants.

285. See §2.3.1.2, below.286. See §2.3.1.4, below.287. See §5.4.4.1, below.288. See §5.1.1.3, above.289. See §5.1.2.4, below.



§2.3.1.2. Subject Matter

Article 1705(1) of NAFTA, obligating each Party to “protect the works cov-ered by Article 2 of the Berne Convention, including any other works thatembody original expression within the meaning of that Convention,” closelyparallels the TRIPs Agreement in securing protection for computer programsand data compilations “which by reason of the selection or arrangement oftheir contents constitute intellectual creations.”290 However, NAFTA’s for-mulation for computer programs is arguably more rigorous than the formu-lation in TRIPs, since it provides that “all types of computer programs areliterary works within the meaning of the Berne Convention,”291 where theTRIPs Agreement provides that “[c]omputer programs, whether in sourceor object code, shall be protected as literary works under the Berne Conven-tion (1971).”292 Although the phrase “all types of computer programs” mayin some respects be narrower than “whether in source or object code,” thestatement in NAFTA that computer programs are literary works within themeaning of the Berne Convention is arguably more sweeping than the state-ment that they are to be protected as literary works. Nonetheless, a signifi-cant question exists whether three countries can, outside the text of a BerneAct, conclusively declare what is or what is not a literary work under Berne.

Annex 1705.7 to NAFTA obligates the United States to “provide protectionto motion pictures produced in another Party’s territory that have been de-clared to be in the public domain pursuant to 17 U.S.C. section 405.”293 Sec-tion 405 of the 1976 Copyright Act had, until March 1, 1989, forfeited U.S.copyright in works published without the copyright notice required by the Act,and the failure to restore copyright to such works upon adherence to the BerneConvention in 1989 had arguably put the United States in violation of Article18 of the 1971 Paris Act. The North American Free Trade Agreement Imple-mentation Act294 partially corrected this omission by adding to the 1976 Acta new section 104A, providing for restoration of copyright in Canadian andMexican films.295 Following U.S. adherence to the TRIPs Agreement, with itsmore sweeping requirement of retroactive protection,296 the Uruguay RoundImplementation Amendments substantially broadened section 104A.297

290. TRIPs Agreement Art. 10(2).291. NAFTA Article 1705(1) (a).292. TRIPs Agreement Art. 10(1).293. Annex 1705.7 adds, “This obligation shall apply to the extent that it is consistent with

the Constitution of the United States, and is subject to budgetary consideration.”294. Pub. L. No. 103–182, 107 Stat. 2057, 2115 (1993).295. See §4.2.2.6, below.296. See §5.3.2, below.297. See §4.2.2.6, below.

§2.3.1.3. Ownership and Term

NAFTA Article 1705(3) advances the principle of freedom of contract forcopyright and related rights by effectively outlawing rules, as are sometimesfound in civil law countries, constraining an author’s freedom to transfercopyright. Under this provision, “any person acquiring or holding economicrights may freely and separately transfer such rights by contract for purposesof their exploitation and enjoyment by the transferee,”298 and “any personacquiring or holding such economic rights by virtue of a contract, includ-ing contracts of employment underlying the creation of works and soundrecordings, shall be able to exercise those rights in its own name and enjoyfully the benefits derived from those rights.”299 Although Article 1705(3) ispresumably aimed at civil law inalienability rules, its terms will at the leastcast a cloud over such common law inalienability rules as the nonwaivabilityprovision of the U.S. Copyright Act’s termination of transfer provisions.300

Article 1705(4) provides that “[e]ach Party shall provide that, where theterm of protection of a work, other than a photographic work or a work ofapplied art, is to be calculated on a basis other than the life of a natural per-son, the term shall be not less than 50 years from the end of the calendaryear of the first authorized publication of the work or, failing such autho-rized publication within 50 years from the making of the work, 50 years fromthe end of the calendar year of making.”

§2.3.1.4. Rights and Remedies

NAFTA effectively imports the full array of Berne rights in its requirement thatparties to the Agreement apply the substantive provisions of the Berne ParisAct.301 However, an annex to the Agreement expressly exempts the UnitedStates from the moral rights obligation imposed by Article 6bis of the BerneParis Act.302 In addition to the Berne minimum rights, NAFTA requires par-ties to give literary and artistic works and sound recordings rights over impor-tation of unauthorized copies303 and first public distribution of the original andcopies of a work.304 Articles 1705(2) (d) and 1706(1) (d) prescribe a commer-cial rental right for computer programs and sound recordings respectively.

298. NAFTA Art. 1705(3) (a).299. NAFTA Art. 1705(3) (b).300. See §5.2.2.1, below.301. NAFTA Art. 1701(2) (b).302. NAFTA Annex 1701.3(2).303. NAFTA Arts. 1705(2) (a), 1706(1) (b).304. NAFTA Arts. 1705(2)(b), 1706(1) (c).



Article 1705(2) (c) requires a right to communicate the work to the public inthe case of literary and artistic works, and Article 1706(1) (a) requires a rightof “direct or indirect reproduction” in the case of sound recordings.

NAFTA draws on the three-step formulation employed in Article 9(2) of theBerne Paris Act to define permitted limitations on rights in literary and artis-tic works and sound recordings: “Each Party shall confine limitations or ex-ceptions to the rights provided for in this Article to certain special cases thatdo not conflict with a normal exploitation of the sound recording and do notunreasonably prejudice the legitimate interests of the right holder.”305 In ameasure presumably aimed at Mexico’s special position as a developing coun-try under the Berne Convention, Article 1705(6) of NAFTA provides that “[n]oParty may grant translation and reproduction licenses permitted under theAppendix to the Berne Convention where legitimate needs in that Party’s ter-ritory for copies or translations of the work could be met by the right holder’svoluntary actions but for obstacles created by the Party’s measures.”

NAFTA contains an unusually wide-ranging and detailed set of provisionson remedies, “including expeditious remedies to prevent infringements andremedies to deter further infringements.”306 Some remedies are left to theauthority of the local judiciary, with the Agreement requiring that each partygive its judicial branch the necessary authority to order injunctive relief,307

including provisional relief, such as authority to bar importation of infring-ing copies,308 to award damages “adequate to compensate for the injury theright holder has suffered,”309 to award costs and attorneys’ fees,310 to dis-pose of infringing goods,311 and to order ex parte seizure of goods.312 Article1717 requires “criminal procedures and penalties” to be applied to “copyrightpiracy on a commercial scale,” and Article 1718 requires the adoption ofeffective border control measures to interdict pirated goods.

§2.3.2. TRIPs Agreement

§2.3.2.1. History

A stalemate in efforts by economically developed countries to increase theminimum standards of the Berne Convention and other intellectual propertytreaties, together with mounting frustration over weak enforcement mea-

305. NAFTA Arts. 1705(5), 1706(3).306. NAFTA Art. 1714(1).307. NAFTA Art. 1715(2) (c).308. NAFTA Art. 1716(1) (a).309. NAFTA Art. 1715(2) (d).310. NAFTA Art. 1715(2) (d), (e).311. NAFTA Art. 1715(5).312. NAFTA Art. 1716(4).

sures, led in the closing days of the GATT Tokyo Round in 1979 to an ulti-mately unsuccessful initiative from the European Community and the UnitedStates to obtain an “Agreement on Measures to Discourage the Importationof Counterfeit Goods.” Behind this initiative, and more successful efforts toput intellectual property on the agenda of the ensuing Uruguay Round, wasthe belief that the trade process could extract concessions on high minimumstandards from countries otherwise disposed to resist them, and that theGATT dispute settlement process could inject rigor into international intel-lectual property enforcement.

In February 1982, just over two years after conclusion of the TokyoRound, the United States proposed a work program to examine issues, in-cluding commercial counterfeiting, left unresolved by the Tokyo Round.By September 1982, the United States, the European Community, Japan,and Canada had agreed on a draft commercial counterfeiting code, whichthe United States submitted to the GATT in October 1982.313 Brazil andIndia immediately challenged the proposal, arguing that the World Intel-lectual Property Organization had exclusive jurisdiction over commercialcounterfeiting.314 A work program advanced, nonetheless but, in deferenceto these objections, included consultations between the Directors-Generalof WIPO and GATT in the program to address these institutional and juris-dictional issues.

A November 29, 1982, GATT Ministerial Declaration issued a call for ex-amination of the counterfeit goods issue.315 A group of experts was appointedto examine the issue in 1984.316 At the same time, the European Commu-nity proposed that senior officials meet to discuss whether to launch a newGATT round. The GATT Council’s first formal discussion of a new round tookplace in June 1985. Despite strenuous objections from India, made on behalfof twenty-four nations, that the GATT 1982 work program be completedbefore a new round was started, a formal request from the United States toconvene an extraordinary session to discuss the possibility of a new roundreceived sufficient support for a meeting of senior officials to be scheduled forthe fall of 1985.317

Setting the agenda for the proposed new GATT round was a protractedprocess. In June 1986, a group of developed nations that included the Euro-pean Community, Japan, and the United States presented an informal dec-

313. See A. Jane Bradley, Intellectual Property Rights, Investment and Trade in Servicesin the Uruguay Round: Laying the Foundations, 23 Stan. J. Int’l L. 57, 67 (Spring 1987).

314. Id.315. See David Hartridge and Arvind Subramanian, Intellectual Property Rights: The

Issues in GATT, 22 Vand. J. Transnat’l L. 893, 897 (1989).316. Id.317. See A. Jane Bradley, Intellectual Property Rights, Investment, and Trade in Services

in the Uruguay Round: Laying the Foundations, 23 Stan. J. Int’l L. 57, 79 (1987).



laration of negotiating mandates; one was for intellectual property rights.318

Several developing nations, generally represented by Argentina, Brazil, andIndia, argued that the GATT should not address intellectual property issues.319

In July 1986, ambassadors from Switzerland and Colombia organized nego-tiations outside the GATT framework among nations supporting a new round,and on July 17 they circulated an informal draft among the nations involvedin the outside negotiations. Together with a declaration prepared by Brazil,these declarations became the basis of the ministerial negotiations.320

On September 20, 1986, a Special Session of the Contracting Parties to theGATT in Punta del Este, Uruguay, attended by representatives from overseventy countries, formally launched the Uruguay Round of GATT.321 TheMinisterial Declaration on the Uruguay Round identified the negotiatingobjective for intellectual property: “In order to reduce the distortions andimpediments to international trade, and taking into account the need topromote effective and adequate protection of intellectual property rights, andto ensure that measures and procedures to enforce intellectual propertyrights do not themselves become barriers to legitimate trade, the negotiationsshall aim to clarify GATT provisions and elaborate as appropriate new rulesand disciplines. Negotiations shall aim to develop a multilateral frameworkof principles, rules, and disciplines dealing with international trade in coun-terfeit goods, taking into account work already undertaken in the GATT.These negotiations shall be without prejudice to other complementary ini-tiatives that may be taken in the World Intellectual Property Organizationand elsewhere to deal with these matters.”322

Australia’s proposal that the standards of protection embodied in the Berne,Rome, Geneva, and Paris Conventions be incorporated into the TRIPs Agree-ment represented the view favored by the economically developed coun-tries.323 India’s proposal that negotiations be limited to practices that distortinternational trade, that principles of national treatment and most-favored-nation treatment should apply only to material goods, and that developingnations should receive more favorable treatment in the area of patents andtrademarks represented the views of many developing countries.324

A midterm review of the Uruguay Round conducted at the MinisterialMeeting in Montreal in December 1988 reported agreement on eleven of the

318. Id. at 82.319. Id. at 82–83.320. Id. at 83–84.321. Id. at 57.322. Statement by the Chairman, GATT: Ministerial Declaration on the Uruguay Round

of Multilateral Trade Negotiations (Sept. 20, 1986), 25 I.L.M. 1623, 1626.323. See Terence P. Stewart, The GATT Uruguay Round: A Negotiating History (1986–

1993) 2270–2272 (1993).324. Id. at 2271.

fifteen subjects being negotiated, but not on TRIPs. Nonetheless, most de-veloping and developed nations had agreed by this point that substantiveinternational intellectual property protection was desirable.325 At a subse-quent midterm meeting, held on April 21, 1989, the Trade NegotiationsCommittee agreed on a framework for TRIPs.326

By the time the “Draft Final Act Embodying the Results of the UruguayRound of Multilateral Trade Negotiations” was presented on December 20,1991, the principles of national treatment and most-favored-nation treat-ment had been retained in the TRIPs Agreement, and protection of computerprograms had been assimilated to protection of literary works under theterms of the Berne Convention.327 Yielding to strenuous objections fromthe United States, the Agreement expressly excluded the Berne Convention’smoral rights obligations from the obligations enforceable under the TRIPsAgreement.328 The Agreement specified extensive remedies including mea-sures for interdicting infringing goods at national borders,329 and it madeconcessions to developing and least developed country members in the formof an extra four years’ and ten years’ leeway, respectively, from the date ofentry into force of the Agreement Establishing the WTO, to bring theirintellectual property laws into compliance with all but a prescribed hand-ful of TRIPs standards.330 The Agreement on Trade-Related Aspects of In-tellectual Property Rights was signed at Marrakesh, Morocco, on April 15,1994.

§2.3.2.2. Conditions for Protection

Article 1(3) of the TRIPs Agreement obligates WTO members to “accord thetreatment provided for in this Agreement to the nationals of other Members,331

and provides that, with respect to the “relevant intellectual property right”—copyright, for example, or neighboring rights—“nationals of other Membersshall be understood as those natural or legal persons that would meet the cri-teria for eligibility for protection provided for” in the appropriate treaty—theBerne Convention, for example, or the Rome Convention.

325. Id. at 2269.326. See id. at 2269–2270.327. Id. at 2288–2289.328. Id.329. Id. at 2310.330. Id. at 2283–2284.331. Footnote 1 to Article 1(3) states: “When nationals are referred to in this Agreement,

they shall be deemed, in the case of a separate customs territory Member of the WTO, to meanpersons, natural or legal, who are domiciled or who have a real and effective industrial orcommercial establishment in that customs territory.”



Nationality, though the exclusive point of attachment in the TRIPs Agree-ment, is not the exclusive point of attachment designated by the intellectualproperty conventions listed in TRIPs Article 1(3). The Berne Convention, forexample, has historically made first publication in a Berne country a pointof attachment.332 Presumably, TRIPs Article 1(3) intended that its opera-tive points of attachment would be not just the nationality criterion but alsothe points of attachment identified by the particular intellectual propertyconvention that governs the right in issue. Certainly, Article 1(3)’s last sen-tence, contemplating that a member will avail itself of Article 5(3) or 6(2)of the Rome Convention, which specifies points of attachment other thannationality, reflects such an intention. The discrepancy between national-ity as a point of attachment under the TRIPs Agreement and place of publi-cation or fixation as points of attachment under the Berne and Rome Con-ventions can most logically be reconciled by interpreting TRIPs Article 1(3)as extending protection to all nationals of WTO members, whether the pointof attachment through which they claim protection under one of the con-ventions is nationality, publication, fixation, or some other criterion.

Article 3 of the TRIPs Agreement adopts national treatment as its prin-ciple of protection, subject to the exceptions provided in the Berne andRome Conventions, as well as in the Paris Convention.333 However, in thecase of performers, phonogram producers, and broadcasting organizations,“this obligation only applies in respect of the rights provided under this Agree-ment.”334 For example, since the TRIPs Agreement does not give phonogramproducers a right against the broadcast of their phonograms, WTO membersthat grant such a right to phonogram producers are not obligated to extendthis protection to nationals of other WTO members. This exception does not,however, constitute an exemption from national treatment for rights thatlocal law may characterize as “neighboring” or “related” rights but that arein substance embodied in copyright.

§2.3.2.3. Subject Matter, Ownership, and Term

Article 9 of the TRIPs Agreement, obligating members to comply with Ar-ticles 1 through 21 of the Berne Convention’s Paris Act, presumably requires

332. See §4.1.1.1, above.333. TRIPs Agreement Art. 3(1). On national treatment under the TRIPs Agreement and

in copyright and neighboring rights treaties generally, see §3.2, below.334. TRIPs Agreement Art. 3(1). Article 3(1) further provides: “Any member availing it-

self of the possibilities provided in Article 6 of the Berne Convention and paragraph 1(b) ofArticle 16 of the Rome Convention shall make a notification as foreseen in those provisionsto the Council for Trade-Related Aspects of Intellectual Property Rights.”

them to protect all forms of “literary and artistic works,” including “everyproduction in the literary, scientific and artistic domain,” and not only theexamples listed in Article 2 of the Convention.335 To these classes of protec-tible subject matter, Article 10 of the TRIPs Agreement adds that “[c]om-puter programs, whether in source or object code, shall be protected as lit-erary works under the Berne Convention,”336 and that “[c]ompilations ofdata or other material, whether in machine readable or other form, whichby reason of the selection or arrangement of their contents constitute in-tellectual creations shall be protected as such.”337 Article 9(2) expressesthe traditional principle that has long been a norm of international copy-right protection: “Copyright protection shall extend to expressions and notto ideas, procedures, methods of operation or mathematical concepts assuch.”338

The TRIPs Agreement provides that in the case of works, other than pho-tographs and applied art, for which the term of protection is calculated on abasis other than a natural life, the term shall be no less than fifty years fromthe year of publication or, if the work is not published within fifty years, thenfifty years from the year it was created.339 The Agreement requires a mini-mum of fifty years’ protection for performers and phonogram producers,measured from the year in which the underlying performance or fixationoccurred, and a minimum twenty-year term for broadcasters, measured fromthe year in which the broadcast occurred.340 Article 70, dealing with “Pro-tection of Existing Subject Matter,” requires members to give qualified ret-roactive protection not only to literary and artistic works under the terms ofArticle 18 of the Berne Paris Act,341 but also to the rights of performers andphonogram producers in phonograms.

335. See §5.1.1, below.336. TRIPs Agreement Art. 10(1).337. TRIPs Agreement Art. 10(2).338. See §5.1.1.2.A, below. The origins of the clause can be traced to a Japanese proposal

that would have excluded programming languages, rules, or algorithms from the scope of pro-tection for computer programs; this proposal evolved into an exclusion for ideas, procedures,methods, or systems underlying computer programs or databases, which was then expandedand applied to all forms of literary and artistic works. See Daniel Gervais, The TRIPs Agreement:Drafting History and Analysis 78 (1998).

339. TRIPs Agreement Art. 12.340. TRIPs Agreement Art. 14(5).341. Article 70(2) provides that copyright “obligations with respect to the rights of pro-

ducers of phonograms and performers in existing phonograms shall be determined solelyunder Article 18 of the Berne Convention (1971) as made applicable under paragraph 6 ofArticle 14 of this Agreement.” TRIPs Agreement Article 14(6) provides that Berne Article18 shall apply “mutatis mutandis, to the rights of performers and producers of phonogramsin phonograms.”



§2.3.2.4. Rights and Remedies

In addition to the minimum economic rights prescribed in the Berne ParisAct,342 the TRIPs Agreement obligates members to give authors and pho-nogram producers a qualified exclusive right to authorize or prohibit thecommercial public rental of their computer programs, cinematographic works,and phonograms.343 In the case of computer programs, the obligation to granta rental right does not apply to rentals when “the program itself is not theessential object of the rental.”344 In the case of cinematographic works, theobligation will not apply unless rentals have led to widespread copying,materially impairing the reproduction right in these works.345 A memberthat as of April 15, 1994, had in force a system of equitable remunerationfor phonogram rentals may maintain that system so long as commercial rent-als are not “giving rise to the material impairment of the exclusive rights ofreproduction of right holders.”346

Article 14 of the TRIPs Agreement requires members to grant specific rightsto performers, phonogram producers, and broadcasting organizations. Mem-bers must give performers the right to communicate their performances tothe public or broadcast them by wireless means, to fix their unfixed perfor-mances, and to reproduce fixations.347 Phonogram producers must receivethe “right to authorize or prohibit the direct or indirect reproduction of theirphonograms.”348 Broadcasting organizations must receive the right to fix andreproduce fixations of broadcasts as well as to rebroadcast them by wirelessmeans and to communicate television broadcasts to the public; “[w]hereMembers do not grant such rights to broadcasting organizations, they shallprovide owners of copyright in the subject matter of broadcasts with thepossibility of preventing the above acts, subject to the provisions of the BerneConvention (1971).”349

Article 13 of the TRIPs Agreement borrows the three-step formula of Ar-ticle 9(2) of the Berne Convention, Paris Act,350 in its provision that “Mem-bers shall confine limitations or exceptions to exclusive rights to certain spe-cial cases which do not conflict with a normal exploitation of the work anddo not unreasonably prejudice the legitimate interests of the right holder.”

342. See §5.4.1.1, below.343. TRIPs Agreement Art. 11 (computer programs and cinematographic works); Art.

14(4) (phonograms).344. TRIPs Agreement Art. 11.345. TRIPs Agreement Art. 11.346. TRIPs Agreement Art. 14(4).347. TRIPs Agreement Art. 14(1).348. TRIPs Agreement Art. 14(2).349. TRIPs Agreement Art. 14(3).350. See §5.5, below.

In the case of the related rights of performers, phonogram producers, andbroadcasting organizations, Article 14(6) allows members to “provide forconditions, limitations, exceptions and reservations to the extent permittedby the Rome Convention.”351 The Agreement effectively leaves the questionof exhaustion of intellectual property rights untouched.352

Part III of the TRIPs Agreement, encompassing Articles 41 through 61,prescribes minimum standards for enforcement of intellectual propertyrights. These provisions strike a balance between copyright-exporting coun-tries that desired an ample, even draconian array of copyright remedies andcountries concerned that a minimum remedial standard would improperlyinterfere with the traditional exercise of discretion by national courts. Ar-ticle 41(1) requires as a general minimum standard that members “ensurethat enforcement procedures as specified in this Part are available under theirnational laws so as to permit effective action against any act of infringementof intellectual property rights covered by this Agreement, including expedi-tious remedies to prevent infringements and remedies which constitute adeterrent to further infringements.”

In addressing particular remedies, Part III strikes the balance betweenjudicial autonomy and substantive specificity by requiring members only tovest in the appropriate judicial authorities the power to award the remedyin question. So, for example, Article 44(1) requires that “judicial authori-ties shall have the authority to order a party to desist from an infringement.”Similar provision is made for the requisite authority to award damages, ex-penses and attorney’s fees;353 to order disposition of infringing goods;354 toorder preliminary relief, even on an ex parte basis where appropriate.355 Ar-ticles 51 through 60 make more direct provision for enforcement throughborder measures.

351. Article 14(6) adds “However, the provision of Article 18 of the Berne Convention (1971)shall also apply, mutatis mutandis, to the rights of performers and producers of phonograms inphonograms.”

352. Article 6 of the TRIPs Agreement provides: “For the purposes of dispute settlementunder this Agreement, subject to the provisions of Articles 3 and 4 above nothing in this Agree-ment shall be used to address the issue of the exhaustion of intellectual property rights.”

353. TRIPs Agreement Art. 45.354. TRIPs Agreement Art. 46.355. TRIPs Agreement Art. 50.


§3

territoriality, national treatment,

and choice of law

The international exploitation of copyrighted works often implicates ques-tions of territoriality, national treatment, and choice of law. Copyright isterritorial: a French or Japanese copyright does not exist outside France orJapan.1 The treaty obligation of national treatment requires member coun-tries to give works originating in other member countries no less favorabletreatment than they give to works of their own nationals; under the BerneConvention, for example, a Japanese work will as a rule receive in Francethe same protection that a work by a French national would receive in France.2

The general choice of law rule for determining whether a copyright has beeninfringed is to apply the law of the country in which the unauthorized useoccurred; if a lawsuit is filed in the United States for the unauthorized use inFrance of a work originating in Japan, the United States court will applyFrench law to determine whether the use infringes.3

Territoriality, national treatment, and choice of law overlap. If, as a rule,a country’s copyright law has no effect outside its territory, its copyright lawwill also be the only one that has effect inside its territory—at least so longas other countries follow the same rule. Since the relevant choice of law rulefor copyright infringement calls for application of the law in force in the placewhere the infringement occurred, territoriality implies that the law govern-ing an infringement will in most, if not all, cases be the law of the countrywhere the infringement occurred. Similarly, national treatment under thecopyright treaties, although not strictly speaking a choice of law rule, often

1. See generally §3.1, below.2. See generally §3.2, below.3. See generally §3.3, below.

61

62 Territoriality, National Treatment, and Choice of Law

operates as a choice of law rule in practice, subjecting foreigners and nation-als alike to the law of the protecting country.

No need would exist for rules on territoriality, national treatment, andchoice of law if copyright laws were the same from country to country. Con-temporary trends toward harmonization, most notably in the copyright andneighboring rights provisions of the TRIPs Agreement, should not, however,be mistaken for a trend toward a universal copyright. Harmonization underthe TRIPs Agreement, as under the Berne Convention and the WIPO Copy-right and Performances and Phonograms Treaties, requires member coun-tries only to comply with minimum standards. Because member countriesmay, and regularly do, surpass the treaty minima in their domestic legisla-tion, and because the treaty minima do not encompass such importantissues as copyright authorship and ownership, it seems likely that rules onterritoriality, national treatment, and choice of law will remain importantover the foreseeable future.

Some commentators have suggested that increased global transmission ofcopyrighted works will severely burden existing procedural mechanismsrooted in territoriality and choice of law.4 In fact, the problem of prosecut-ing individual, usually private, uses of copyrighted works is not unique tothe electronic age; the global transmission of copyrighted works withoutauthority presents essentially the same issues as unauthorized photocopy-ing and home taping, both of which have been on national copyright agen-das for decades. Difficulties in pursuing individual infringers stem not fromtheir location but from their number. The preferred alternative, proceedingagainst a smaller number of contributory infringers, should be no more bur-densome in a multinational context than in a national context.

Suggestions that global digital transmissions require reform in rules onterritoriality and choice of law also overlook the significant and growing rolethat contracts play in this business environment. A large-scale licensee of acopyrighted work will usually negotiate a global license. Small-scale usersmay bind themselves by electronically negotiated contracts executed on theinformation network itself. In either case, a governing law clause in the li-cense agreement should ensure that the agreement is enforced uniformly,regardless of the place of breach or the forum for litigation. In short, funda-mental rules on territoriality, national treatment, and choice of law seemlikely not only to endure, but to endure largely unchanged in the new digi-tal environment.

4. See, e.g., Paul Edward Geller, Conflicts of Law in Cyberspace: Rethinking InternationalCopyright, 44 J. Copyr. Soc’y. 103 (1996); Jane C. Ginsburg, Global Use/Territorial Rights:Private International Law Questions of the Global Information Infrastructure, 42 J. Copyr.Soc’y 318, 319 (1995); Andreas P. Reindl, Choosing Law in Cyberspace: Copyright Conflictson Global Networks, 19 Mich. J. Int’l L. 799, 800 (1998).

The strains that global electronic communications place on copyrightcommerce seem more likely to produce change in the substantive normsgoverning new technological uses of copyrighted works than in the proce-dural norms of territoriality and choice of law. Change will most likely takethe form of rules centralizing liability for uses of copyrighted works that crossseveral national boundaries. One example is the European Community’s1993 Satellite Directive, which defines the operative act of “communicationto the public by satellite” as occurring solely “in the Member State where,under the control and responsibility of the broadcasting organisation, theprogramme-carrying signals are introduced into an uninterrupted chain ofcommunication leading to the satellite and down towards the earth.”5 An-other example is U.S. legislation regulating the imposition of secondary copy-right liability on Internet service providers.6

§3.1THE TERRITORIALITY PRINCIPLE

The territoriality principle generally holds that a state has no competenceto prescribe legal rules to govern activities that occur outside its nationalborders.7 The principle, which is not always so rigorously formulated in con-temporary practice, responds to two interests. One is an interest in nationalsovereignty. For State A to impose copyright liability on conduct occurringin State B might be viewed by State B as an attack on its sovereignty, par-ticularly if its own law excused the same conduct from copyright liability.Second, the territoriality principle seeks to promote international commerceby securing reasonable investment expectations. If Country A imposes copy-right liability on the unauthorized copying of television news broadcasts butCountry B does not, it could well undermine the reasonable business expec-tations of a copy service doing business entirely in Country B for Country Ato subject its activities to liability under Country A’s copyright law.

Since the middle of the twentieth century, courts have relaxed the territo-riality principle in some fields of law, but copyright law has been largely

5. E.C. Satellite and Cable Directive Art. 1(2) (a). According to Recital 14 to the Directive,this “definition is necessary to avoid the cumulative application of several national laws toone single act of broadcasting.”

6. On-line Copyright Infringement Liability Limitation Act, Pub. L. 105–304 (Oct. 28,1998).

7. See generally Joseph Story, Commentaries on the Conflict of Laws §8 (6th ed. 1865). See alsoHessel Yntema, The Historic Bases of Private International Law, 2 Am. J. Comp. L., 297, 305–308 (1953).



untouched by these departures.8 One reason for copyright’s relative immu-nity from these liberalizing trends is that countries that might otherwise beinclined to foster the extraterritorial application of protectionist copyrightrules have succeeded in getting their copyright norms adopted in interna-tional agreements such as the TRIPs Agreement and the WIPO CopyrightTreaty.9 Once local copyright norms become globally enforceable norms,little pressure remains to export local rules through extraterritorial applica-tion. However, the fact that copyright law is territorial does not mean thatconfining it to local conduct will in all cases be correct, nor does it mean thatapplying it outside a nation’s borders will in all cases be wrong. Hard ques-tions arise in three areas: where acts of infringement occur in more thanone country,10 where one element of the copyright infringement occurs inone country and another element in a second country,11 and where actsin one country bear not on infringement in the second country but ratheron the very existence of copyright there.12

§3.1.1. Territoriality in International Law

Three maxims formulated by the seventeenth-century Dutch scholar UlrichHuber undergird the modern concept of territoriality: (1) a state’s laws haveforce only within the state’s boundaries; (2) anyone found within the state’sboundaries is subject to the state’s authority; and (3) comity will disciplinesovereign exercises of authority so that the territorial effect of each state’slaws is respected.13 As synthesized by Harold Maier, these axioms “state thatacts of foreign sovereigns should, when appropriate, be given effect withinanother state’s territory and that courts of all nations should indulge a pre-sumption against the extraterritorial impact of law.”14

8. In the United States, the departure closest to copyright is in trademark law, where courtshave dramatically expanded prescriptive jurisdiction. See, e.g., Steele v. Bulova Watch Co.,344 U.S. 280, 286–287 (1952). See generally Curtis A. Bradley, Territorial Intellectual Prop-erty Rights in an Age of Globalism, 37 Va. J. Int’l. L. 505, 526–536 (1997).

9. See §§2.1.2.3, 2.3.2, above.10. See §3.1.2, below.11. See §3.1.2.2, below.12. See §3.1.2.3, below.13. See D. J. Llewelyn Davies, The Influence of Huber’s de Conflictu Legum on English

Private International Law, 18 Brit, Y. B. Int’l. L. 49, 56–63 (1937). See generally Ernest G.Lorenzen, Huber’s de Conflictu Legum, 13 Ill. L. Rev. 375 (1918); Harold G. Maier, Extrater-ritorial Jurisdiction at a Crossroads: An Intersection Between Public and Private Interna-tional Law, 76 Am. J. Int’l L. 280, 284–285 (1982); Hessel E. Yntema, The Comity Doctrine,65 Mich. L. Rev. 9 (1966).

14. Harold G. Maier, Extraterritorial Jurisdiction at a Crossroads: An Intersection BetweenPublic and Private International Law, 76 Am. J. Int.’l L. 280, 282 (1982).

Strict territoriality is by far the main rationale, and limitation, for stateauthority. Nonetheless, conduct that occurs outside a country, and that hasor is intended to have a substantial effect inside the country, may be subjectto a state’s prescriptive jurisdiction. One instance is the application of anti-trust rules against foreign conduct that has domestic effects. The obviousdanger of such an exception is its potential indeterminacy. For example,where Country B excuses the unauthorized use of certain classes of works,Country A, a leading exporter of this class of works, might seek to apply itscopyright law to such acts occurring in Country B on the ground that Coun-try B’s general excuse of these acts injures Country A’s balance of copyrighttrade.15

Nations do not always honor international law rules. It is, for example,“well-settled” in U.S. law that “if Congress enacts legislation in violation ofpublic international law, U.S. courts are bound to disregard international lawand apply the domestic statute.”16 Well into the twentieth century, courts inthe United States avoided conflict between domestic legislation and interna-tional law by presuming that Congress intended to confine a statute’s “op-eration and effect to the territorial limits over which the lawmaker has gen-eral and legitimate power.”17 Although American courts subsequentlydeparted from this canon of construction to apply federal antitrust and trade-mark law extraterritorially,18 they continue to apply the presumption againstextraterritoriality in other areas, including copyright.19

§3.1.2. Territoriality in Copyright Law

Territoriality, the principle that a country’s prescriptive competence ends atits borders, is the dominating norm of international copyright cases.20 The

15. See, e.g., Ian Brownlie, Principles of Public International Law 307–309 (3d ed. 1980); R. Y.Jennings, Extraterritorial Jurisdiction and the United States Antitrust Laws, 33 Brit. Y.B. Int’lL. 146, 154–155 (1957).

16. Gary B. Born & David Westin, International Civil Litigation in United States Courts 574(2d ed. 1992). Constitutional due process limitations may, however, limit a statute’s extra-territorial reach. See generally Lea Brilmayer & Charles Norchi, Federal Extraterritoriality andFifth Amendment Due Process, 105 Harv. L. Rev. 1217 (1992).

17. American Banana Co. v. United Fruit Co., 213 U.S. 347, 357 (1909). See generally LarryKramer, Vestiges of Beale: Extraterritorial Application of American Law, 1991 Sup. Ct. Rev. 179.

18. See generally Kenneth W. Dam, Extraterritoriality in an Age of Globalization: The Hart-ford Fire Case, 1993 Sup. Ct. Rev. 289.

19. See, e.g., Curtis A. Bradley, Territorial Intellectual Property Rights in an Age of Globalism,37 Va. J. Int’l L. 505 (1997).

20. See Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws 13–14 (1978). Seealso György Boytha, Some Private International Law Aspects of the Protection of Authors’Rights, 24 Copyright 399 (1988).



norm is abundantly evident in cases where all acts of exploitation affectingthe copyrighted work occur abroad. A U.S. federal court that had personaljurisdiction over the parties in a case where all acts of alleged infringementoccurred in six Latin American countries ruled that it would apply the lawof those six countries, not U.S. law, to resolve the dispute.21 Similarly, theGerman Federal Supreme Court has held that the German Copyright Act’sdroit de suite provision22 does not apply to the resale in Great Britain of thework of a German artist;23 “it follows from the principle of territoriality inthe present case that the resale that gives rise to the droit de suite must havetaken place at least partly in Germany.”24 Unlike personal and prescriptivejurisdiction, which can be conferred by a contract’s choice of forum andchoice of law clauses, copyright subject-matter jurisdiction cannot as a rulebe conferred by private agreement.25

More nettlesome cases for the territoriality principle arise where acts ofcopyright infringement occur in more than one country,26 where one ele-ment of an infringement occurs in one country and another occurs in a sec-ond country,27 and where the extraterritorial acts bear not on infringementbut on the existence of copyright.28

§3.1.2.1. Where Acts of Infringement Occur inMore Than One Country

Once relatively rare, infringement of the same work by the same defendantin different countries promises to multiply with the increased global use of

Some courts will give extraterritorial effect to a country’s trademark and unfair competi-tion laws. See, e.g., Steele v. Bulova Watch Co., 344 U.S. 280, 289 (1952). Since trademarkand trade dress protection sometimes overlap copyright protection, most notably in the caseof industrial design, this distinction can be strategically exploited to gain extraterritorial pro-tection for subject matter that copyright would leave unprotected. See, e.g., Fun-damental Too,Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 1006 (2d Cir. 1997).

21. See London Film Prods. Ltd. v. Intercontinental Communications Inc., 580 F. Supp. 47, 48–49 (S.D.N.Y. 1984).

22. Germany, Copyright Act Art. 26(1).23. Folgerecht bei Auslandbezug (“Droit de suite with Respect to Sales Abroad,”) German

Fed. Sup. Ct., June 16, 1994, Case No. I ZR 24/92, at 26 I.I.C. 573 (1995).24. Id. at 575.25. See, e.g., Kilbe v. Trudel, 945 F.Supp. 1268, 1270 (D. Ariz. 1996) (rejecting argument

that forum selection clause conferred extraterritorial jurisdiction; “[c]hoice of law and choiceof forum is one matter, subject matter jurisdiction is another. The parties cannot agree to investthis Court with subject matter jurisdiction.”).

26. See §3.1.2.1, below.27. See §3.1.2.2, below. See generally Jane C. Ginsburg, Extraterritoriality and Multi-

territoriality in Copyright Infringement, 37 Va. J. Int’l L. 587 (1997).28. See §3.1.2.3, below.

digital transmission networks. If a copyrighted work is copied without au-thority in both Country A and B, and if lawsuits are filed in both countries,which forum, if either, takes precedence? If suit is first filed in Country A, canCountry A’s rules on accounting for profits properly be applied to recoveryof profits earned in Country B?

a. coordination of jurisdiction

The fact that rights in the same work have allegedly been infringed by thesame party in two or more countries may prompt a court in one country, asa matter of discretion, to stay local infringement proceedings until proceed-ings in the other country are concluded and, where the proceedings havebeen concluded, to apply the bars of res judicata or collateral estoppel as ap-propriate. However, while the co-pendency of infringement actions may leadto a discretionary stay, it does not require one forum to defer to the other.

In Schmid Brothers Inc. v. Genossenschaft der Franziskanerinnen von Siessene.V.29 the German Federal Supreme Court ruled that two lawsuits, one in theUnited States and the other in Germany, both involving rights to reproduceand distribute a Hummel Christmas plate, were two fundamentally differentlawsuits and, consequently, that the lower court had not erred in denying theplaintiff’s objection of lis pendens based on the action in the United States. “Fromthis territorial limitation of the copyright (and consequently also of the exploi-tation rights derived from this basic right) it follows that the alleged infring-ing acts in the Federal Republic of Germany—i.e., the manufacture of repro-ductions of the work by Berta Hummel ‘Angel with Candle’ in the form of wallplates showing this motif—can only infringe upon the copyright granted byGerman law.” By contrast, the suit brought against the plaintiff by the Ger-man defendant’s licensee in the United States rested not on infringement ofthe German copyright but “exclusively on an alleged violation of the Ameri-can copyright (under United States copyright law or under common law).”30

Under this approach, a lis pendens would presumably have been appropriate ifthe U.S. action had been for infringement of the German copyright in Germany.

b. monetary relief

The German Supreme Court in Schmid Brothers ventured somewhat afieldfrom the strict territoriality approach it took to the question of lis pendens when

29. Hummel Weihnachsteller 1971 (“Hummel Christmas 1971 Plate”), German Federal Su-preme Court, Dec. 19, 1975 (Case No. I ZR 110/74), at 8 I.I.C. 276 (1977).

30. Id. at 8 I.I.C. 277–278. Compare Computer Assocs. Int’l, Inc. v. Altai, Inc., 126 F.3d 365,371 (2d Cir. 1997) (collateral estoppel did not arise out of U.S. action, because defendant failedto demonstrate that French and U.S. copyright standards “are ‘identical’ as required for appli-cation of collateral estoppel”).



it came to formulating the damage award to the defendant-counterclaimant.The court ruled that the defendant-counterclaimant’s award should encom-pass an accounting for wall plates that, though manufactured in Germany,were distributed in the United States. Specifically, the accounting was to be“without any territorial limitations since defendants’ royalty receipts pay-able by Goebel [its U.S. licensee] have been reduced through plaintiff’s dis-tribution abroad.”31 The German Supreme Court’s approach in this respectcoincides with a line of decisions awarding damages or profits under the U.S.Copyright Act for infringements occurring in other countries, so long as someact of infringement occurred in the United States.32

The rule that the copyright law of the protecting country should governcomputation of monetary relief arising not only in the protecting country,but also in any other country where infringement occurred, fundamentallyoffends the territoriality principle. The determination whether profits werelost in a foreign jurisdiction properly turns on whether the foreign acts con-stituted copyright infringement under that country’s laws. To award Ger-man or American copyright remedies for acts occurring outside those coun-tries, without first determining whether those acts were infringing underforeign law, is necessarily to extend German or U.S. copyright law into theforeign jurisdiction.33 Further, even if the acts in issue are infringing underthe foreign law, the extent of economic injury in the foreign country can beproperly measured only under that country’s rules on remedies, since theforeign country’s rules on remedies will inevitably be connected to its ruleson liability. This suggests that if any remedy is to be given for foreign infringe-ment, it should be the remedy prescribed under the foreign law.

31. Id. at 8 I.I.C. 280.32. See, e.g., Los Angeles News Service v. Reuters Television Int’l, Ltd., 149 F.3d 987 (9th

Cir. 1998) (plaintiff could recover damages for foreign exploitation of copyrighted footagewhere the infringing acts occurred in United States); Update Art, Inc. v. Modiin Publishing,Ltd. 843 F.2d 67, 73 1784 (2d Cir. 1988). Under the American rule, the infringement in theUnited States need not be significant to trigger an award of damages incurred abroad. See,e.g., National Enquirer, Inc. v. News Group News, Ltd., 670 F.Supp. 962, 970 (S.D. Fla. 1987)(distribution in United States of 85 of 5,021,630 copies of foreign newspapers supportedsubject matter jurisdiction).

Cf. Consorts Wegmann v. Elsevier Science Ltd., Court of Cassation, 1st Civil Chamber, 16 July16, 1997, 176 R.I.D.A. 402 (1998) (where, under Article 5(3) of the Brussels Convention, ac-tion for compensation for infringement is brought not in the country of the defendant’s do-micile, but rather in the country where the infringement occurred; the court is competent toaward compensation only for the harm suffered in the country where the infringement oc-curred); Caroline of Monaco v. Burda GmbH, Court of Appeals, Paris, March 19, 1984, 18 I.I.C.823 (1987) (in action for invasion of privacy rights by press article distributed in France andelsewhere, lower court correctly ruled that it was without jurisdiction to entertain petitionfor damages suffered outside France.)

33. See Andreas P. Reindl, Choosing Law in Cyberspace: Copyright Conflicts on Global Net-works, 19 Mich. J. Int’l L. 799, 822 n. 80 (1998).

Paradoxically, the application of local remedies to foreign infringementswill be more likely to unsettle transactional certainty than will the applica-tion of local rules on liability, since the copyright conventions and the TRIPsAgreement have substantially harmonized liability rules among their mem-bers but have not harmonized rules on remedies. The preferable approachin these cases, because it is more consistent with the expectations of partieswho plan their activities in light of local remedies as well as local rights, isfor courts to apply the foreign country’s law to the determination of both li-ability and damages.

§3.1.2.2. Where Elements of Infringement Occur inMore Than One Country

Electronic marketing of copyrighted works has increased the occasions for asingle copyright infringement to cross national boundaries. If, without au-thority, a broadcaster in Country A transmits a musical work to a satellite,and the satellite signal is first received by the public in Country B, has thebroadcaster infringed the work’s copyright under the law of Country A,which makes public reception an element of the cause of action?34 Has thebroadcaster infringed under the law of Country B, which makes transmis-sion an element of the cause of action? If, without authority, a film distribu-tor in Country A authorizes a licensee in Country B to distribute motionpicture videocassettes there, is the distributor liable for contributory infringe-ment under the law of Country A, which makes an act of direct infringementa condition to recovery for contributory infringement?35 In either case, thefact that Country B does or does not characterize the conduct occurringwithin its borders as an infringement, and the fact that Country B does ordoes not have copyright treaty relations with Country A, may complicateresolution of the question.

34. See, e.g., Composers, Authors and Publishers Association of Canada Ltd. v. Interna-tional Good Music, Inc., 37 D.L.R. 2d 1, 7 (Canada Sup. Ct. 1963) (suggesting that in somecircumstances “a person who operates a television transmitter outside Canada, but with theprimary objective of transmitting programmes for reception in Canada, can be held to have. . . infringed the rights of the holder of the Canadian copyright in such works”); AllarcomPay Television Ltd. v. General Instrument Corp., 69 F.3d 381, 387 (9th Cir. 1995) (“In thiscase, defendants either initiated a potential infringement in the United States by broadcast-ing the Showtime signal, which contained copyrighted material, or defendants authorizedpeople in Canada to engage in infringement. In either case, the potential infringement wasonly completed in Canada once the signal was received and viewed. Accordingly, U.S. copy-right law did not apply.”)

35. See, e.g., Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088, 1094 (9thCir. 1994) (alleged contributory infringer not liable under U.S. law where claimed direct copy-right infringement occurred outside United States).



Subafilms, Ltd. v. MGM-Pathe Communications Co.36 illustrates one approachto liability where some but not all elements of a copyright infringement oc-cur in a single country. Defendant, evidently believing that it owned theworldwide videocassette distribution rights for the motion picture YellowSubmarine, authorized licensees to distribute the videocassettes around theworld. The district court held that defendant did not in fact own the video-cassette distribution rights and was consequently liable for the unauthorizeddistribution in the United States and abroad. The court of appeals reversedthe second part of the decision, holding that the defendant was not contribu-torily liable for authorizing its putative licensees to distribute the videocas-settes abroad. Adverting to the proposition that the U.S. Copyright Act hasno extraterritorial force, the court ruled that “when the assertedly infring-ing conduct consists solely of the authorization within the territorial bound-aries of the United States of acts that occur entirely abroad . . . such allega-tions do not state a claim for relief under the copyright laws of the UnitedStates.”37

What if the direct infringement occurs in the protecting country and thealleged contributory infringement occurs abroad? In this case, courts aremore likely to hold that the act of contributory infringement comes withinthe subject matter jurisdiction of the protecting country on the ground thatextraterritorial acts will be actionable when they are intended to, and do,have an effect in the protecting country.38 For example, when a defendantin Germany affixed unauthorized labels to products, intending the productsto be distributed in the United States, where the acts would allegedly infringeplaintiff’s exclusive distribution rights under the U.S. Copyright Act, a courtin the United States held that “when a foreign corporation is alleged to havepurposefully injected itself into the American market by shipping infringinggoods here—regardless of whether it does so directly or through an importer—the defendant should not be allowed to use the principle of non-extraterritori-ality to shield itself from the reach of American courts and American copy-right law.”39

36. 24 F.3d 1088 (9th Cir. 1994).37. 24 F.3d at 1089. See also Robert Stigwood Group Ltd. v. O’Reilly, 530 F.2d 1096, 1100

(2d Cir.), cert. denied, 429 U.S. 848 (1976) (defendant’s assembly and arrangement in theUnited States of “all the necessary elements” for an unauthorized performance in Canada wasnot “an integral part” of the Canadian performance, so that plaintiff could not receive dam-ages for Canadian performances).

38. See §3.1.1, above. See also ABKCO Music & Records Inc. v. Music Collection Int’l Ltd [1995]RPC 657 (Ct. App. Civ. Div. 1994) (“[A] territorial limitation on the act of authorising wouldlead to anomalies. Anyone contemplating the grant of a license to do an act restricted by copy-right would be able to avoid liability simply by having the document executed abroad.”)

39. GB Mktg. USA, Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F. Supp. 763, 773 (W.D.N.Y.1991).

The use of digital networks to transmit copyrighted works to individualrecipients on demand raises issues of territorial jurisdiction comparable tothose raised by the contributory infringement cases. The main difference isthat an overly rigid conception of territoriality in this class of cases may re-sult in the conclusion that no infringement has occurred anywhere, eitherunder the law of Country A, from which the work is transmitted, or underthe law of Country B, where the work is received. If both countries requirean act of transmission and an act of public reception as elements of copy-right infringement, Country A’s law might hold that merely uplinking a workto a digital facility falls short of public reception, so that if no copy of the workis made, there will be no infringement in Country A. For its part, Country Bmay hold that the act of individual reception of signals within its borders doesnot encompass the necessary element of transmission, so that there will alsobe no act of infringement in Country B. As a result, the aggregate, effectivelyinfringing, conduct would lie entirely outside copyright control.

One solution to the problem of transnationally partitioned infringementsis to employ an effects-based test of territoriality, under which the economicimpact of transmission in one country and receipt in the other would sufficeto establish prescriptive jurisdiction in both.40 Another solution would be fora country to modify its substantive law in areas where such forms of appro-priation are likely to recur. Country A could, for example, redefine its test ofinfringement so that uplinking a work for reception by individuals, eitherdomestically or abroad, infringes the public performance right. The 1993 E.C.Satellite Directive takes one step in this direction by providing that the act ofsatellite communication to the public occurs “solely in the Member Statewhere, under the control and responsibility of the broadcasting organisation,the programme-carrying signals are introduced into an uninterrupted chainof communication leading to the satellite and down towards the earth.”41

§3.1.2.3. Where Acts Defeating Protection Occur Outside theProtecting Country

The territoriality principle treats the rights embodied in copyright as boundedby a nation’s borders and consequently operates only to circumscribe at-tempts by one country to have its law define conduct occurring in anothercountry. An obvious example would be where Country A characterizes aparty’s unauthorized reproduction of a copyrighted work in Country B asinfringement under the law of Country A. By contrast, it will not offend theterritoriality principle for one country to attach legal consequence to acts

40. See §3.1.1, above.41. E.C. Satellite and Cable Directive Art. 1(2) (b).



occurring in a second country if the legal consequence bears exclusively onthe question whether a right has been infringed inside the first country’sborders. For example, it does not jeopardize the territoriality principle forCountry A to adopt and enforce a rule that the first sale of copies of a copy-righted work in Country B will exhaust the work’s exclusive distribution rightwithin the territory of Country A. Country B is of course free to determinewhether a first sale inside its borders—or outside them, for that matter—ex-hausts the distribution right within its own territory.

Courts, most notably in the United States, sometimes overlook the pointthat, simply because acts abroad may have consequence under domestic law,this fact alone does not necessarily implicate the territoriality principle. Underthe 1909 U.S. Copyright Act, courts relied on notions of territoriality to holdthat the Act’s requirement that a copyright notice be affixed to all publiclydistributed copies as a condition to protection did not extend to works pub-lished abroad. One case held that the first publication of the children’s clas-sic Bambi, in Germany in 1923, without copyright notice did not forfeit theU.S. copyright; noting that the publication did not divest copyright underthe German law, the court concluded that the territorial nature of copyright,and the fact that U.S. copyright law has no extraterritorial effect, requiredthe result.42

§3.2NATIONAL TREATMENT

As embodied in the main copyright and neighboring rights conventions,national treatment is a rule of nondiscrimination, promising foreign creatorswho come within the treaty’s protection that they will enjoy the same treat-ment for their creations in the protecting country as the protecting countrygives to its own nationals.43 Stephen Ladas’s characterization of nationaltreatment under the Berne Convention applies to the other conventions aswell: “the complete assimilation of foreigners to nationals, without condi-tion of reciprocity.”44 It is a measure of the principle’s pervasiveness in inter-

42. Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1165–67 (9th Cir. 1996). See alsoUnited Dictionary Co. v. G. & C. Merriam Co., 208 U.S. 260, 264 (1908) (“[I]t is unlikely thatit [Congress] would make requirements of personal action beyond the sphere of its control.Especially is it unlikely that it would require a warning to the public against the infraction ofa law beyond the jurisdiction where that law was in force.”)

43. National treatment also embodies a choice of law rule that makes the law of the pro-tecting country govern the scope of protection for a foreign work.

44. Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 365(1938).

national copyright that the 1971 Paris Act of the Berne Convention carvesout only three exceptions from its general requirement of national treatment:for copyright term,45 protection of applied art and industrial design,46 andthe resale royalty right, or droit de suite.47

The terms in which the copyright and neighboring rights treaties formu-late their national treatment rule may vary, but the underlying requirementis substantially the same. Article 5(1) of the Berne Convention provides thatauthors shall enjoy in protecting countries “the rights which their respec-tive laws do now or may hereafter grant to their nationals, as well as therights specially granted by this Convention.”48 The Rome Convention sim-ply obligates Contracting States to “grant national treatment,” subject “tothe protection specifically guaranteed, and the limitations specifically pro-vided for, in this Convention.”49 The TRIPs Agreement, which encompassesnot only copyright and neighboring rights, but also industrial property, pro-vides that “[e]ach Member shall accord to the nationals of other Memberstreatment no less favourable than that it accords to its own nationals withregard to the protection of intellectual property, subject to the exceptionsalready provided in, respectively, the Paris Convention (1967), the BerneConvention (1971), the Rome Convention and the Treaty on IntellectualProperty in Respect of Integrated Circuits.”50

New classes of creative work, and new means for exploiting them, inevita-bly present the question whether they come within the “works” and “rights”contemplated by the national treatment obligation of Berne Article 5(1) orthe “protection of intellectual property” contemplated by the TRIPs Agree-ment. Commentators generally agree that convention law, not national law,governs the question whether a class of subject matter or a means of exploi-tation falls within the convention’s scope so that it is subject to the nationaltreatment requirement.51 As Professor Ulmer observed, “[t]he nature and

45. Berne Convention, 1971 Paris Text, Art. 7(8).46. Berne Convention, 1971 Paris Text, Art. 2(7).47. Berne Convention, 1971 Paris Text, Art. 14ter(2).48. Berne Convention, 1971 Paris Text, Art. 5(1). Compare Universal Copyright Conven-

tion, 1971 Paris Act Art. II.49. Rome Convention Art. 2(2). See also Arts. 4, 5(1), 6(1).The Geneva Phonograms Convention does not have a national treatment requirement. See

World Intellectual Property Organization, Guide to the Rome Convention and to the PhonogramsConvention 102 (1981).

50. TRIPs Agreement Art. 3(1) (footnote omitted). Note 3 to Article 3(1) provides, “For thepurpose of Articles 3 and 4, protection shall include matters affecting the availability, acquisi-tion, scope, maintenance and enforcement of intellectual property rights as well as those mat-ters affecting the use of intellectual property rights specifically addressed in this Agreement.”

51. See, e.g., Elisabeth Steup, The Rule of National Treatment for Foreigners and Its Appli-cation to New Benefits for Authors, 25 Bull. Copr. Soc’y 279, 281–282 (1978) (“The freedomof member states of an international treaty to grant or not grant rights does not necessarily



content of the legal provisions may certainly be important. But the termi-nology used and the classification given by the national law remains irrel-evant.”52 Convention rules governing existing works53 and media,54 as wellas the underlying trade economics of national treatment,55 can help to shedlight on the question whether new classes of creative work and new meansof exploitation will in any case be entitled to national treatment.

A separate but related question for national treatment arises when a cre-ative product admittedly falls outside a convention’s minimum terms but acountry elects to protect it nonetheless under its copyright legislation. Oneexample is the U.S. Copyright Act’s inclusion of sound recordings—conced-edly not Berne subject matter56 —among the objects of its protection.57 Mustthe country in this case extend protection to other convention nationals, eventhough it could have legitimately avoided this result by including the sub-ject matter in a discrete statute, separate from copyright?58 A persuasiveargument can be made that the protecting country, having decided to treatthe subject matter as belonging to copyright for its own nationals, should berequired to give the same treatment to works originating on the territory ofits treaty partners, at least if, as in the United States, the legislation does notexpressly provide to the contrary.59 One reason is to economize on line-drawing

include the freedom to decide whether a granted right belongs to the subject matter of thetreaty or not.”); Peter F. Burger, The New Photocopy Remuneration Provision in the FederalRepublic of Germany and Their Application to Foreign Authors under International Copy-right Law (Part Two) 19 I.I.C. 488, 491–495 (1988).

52. Eugen Ulmer, The “Droit de Suite” in International Copyright Law, 6 I.I.C. 12, 22 (1975).53. See §3.2.2, below.54. See §3.2.3, below.55. See §3.2.1, below.56. See §5.1.1.1, below.57. United States, 1976 Copyright Act §102(a) (7).58. Cf. David Vaver, The National Treatment Requirements of the Berne and Universal

Copyright Conventions (Part One), 17 I.I.C., 577, 591 (1986) (“A state that defines worksmore broadly than required under the RBC is neither obliged nor entitled by the RBC to extendnational treatment for these works, nor is it obliged or entitled to claim national treatment forthese in another RBC state.”) with Wilhelm Nordemann, The Principle of National Treatmentand the Definition of Literary and Artistic Works, 25 Copyright 300, 301 (1989) (“Similarly, itdevolves solely upon the national jurisdiction of that country of protection to decide whether ornot specific products originating from a person’s intellectual creation are to be regarded as ‘lit-erary or artistic works’ within the meaning of the law of the country of protection. If they are tobe so regarded, then the country of protection is obliged to grant national treatment to the au-thors from other member countries of the Convention; for they enjoy, according to Article 5[1]of the Berne Convention [Paris Act], in all countries ‘the rights which their respective laws donow or may hereafter grant to their nationals,’ and according to Article II of the U.C.C. [ParisAct] the ‘same protection’ as the national of the country of protection.”)

59. Since protection in this case is a matter of national treatment and not minimum stan-dards, the United States would not, however, be required to extend rights to sound record-ings, such as the public performance right, that the Berne Paris Act requires as a minimum

around rights and subject matter coming within the national treatmentobligation. Another reason is respect for national autonomy and consequentdeference to the legislature’s motives in choosing to place the copyrightlabel on that which, at lesser international expense, it could have called bya different name.

§3.2.1. The Trade Economics of National Treatment

An economic puzzle of international copyright is why a country that hasadhered to a treaty such as the Berne Convention or the TRIPs Agreementwill enact copyright or neighboring rights laws that surpass the minimumtreaty standards, when the treaty’s requirement of national treatment obli-gates it to give this same generous protection to foreign authors, even thoughthe country’s own authors will receive more stinting protection in foreigncountries that meet only the minimum treaty standards.

One answer lies in the different equations of cost and benefit that coun-tries strike in their effort to achieve a favorable balance of copyright trade.As a rule, a country that is a substantial net exporter of creative work main-tains higher than minimum levels of intellectual property protection in or-der to ensure the continued abundant production of the copyrighted goodsthat generate its export revenues. At the same time, countries that are netimporters of creative goods and have more modest copyright industries willincline to award minimum levels of protection in order to conserve the out-flow of national wealth to copyright exporting countries. Because the rela-tive margin of difference between the levels of protection offered in export-ing and importing countries is so narrow (particularly since the conclusionof the TRIPs Agreement), yet the imbalance in world copyright trade is sogreat, the net exporting country can expect its total revenues, even fromcountries adhering only to minimum standards, to more than offset the rev-enues it sends to net importing countries to whose works it accords nationaltreatment. Also, the community of interest between copyright industries in

standard for protected classes of works. See Wilhelm Nordemann, The Principle of NationalTreatment and the Definition of Literary and Artistic Works, 25 Copyright 300, 303 (1989)(“For the question as to whether there exists any claim to national treatment in respect tothe types of works which are not specifically listed in Article 2 of the Berne Convention, thesole criterion, according to all the foregoing, is whether the national law of the country ofprotection includes such types of works in the concept of literary or artistic works. On the otherhand, it is irrelevant—as should be observed here for clarification—whether the national lawof the country of protection also accords these types of work the same scope of protection asthe other works, and thus gives the right owners the same rights and provides the same termof protection.”)



both net export and net import countries will usually weigh heavily in favorof heightened standards.60

General acquiescence in national treatment as a norm of internationalcopyright relations will sometimes break down when a new technologyproduces a dramatic shift in the copyright balance of trade. A decade afterthe 1971 Paris Revision of the Berne Convention, the question remainedopen whether computer programs were “literary works” within the mean-ing of the treaty, and consequently subject to the national treatment obli-gation. The question was effectively resolved only a decade later with theacceptance of computer programs as literary works under the terms of theTRIPs Agreement61 and the WIPO Copyright Treaty.62 Yet it seems clearin retrospect that the struggle was less about whether computer programscould fit comfortably into Berne’s definition of protectible subject matterthan it was about whether the United States, the world’s leading exporterof software, could use its trade leverage to tie software protection to Berne’shigh standards rather than the lower standards of alternative sui generisregimes.63

The question whether new technological means for exploiting copyrightworks fall within the rights that are subject to national treatment is no lessvexed than the question of new technological subject matter.64 Notably, theBerne Convention’s national treatment rule refers to “the rights which theirrespective laws do now or may hereafter grant to their nationals,” presum-ably contemplating not only objects and means of protection that existed atthe time of the treaty’s last revision, but also those that may arise in the fu-ture. Nonetheless, home audiotaping and videotaping of copyrighted enter-tainment products are two examples of new exploitation technologies thathave in some economically important countries eluded not only nationaltreatment but also minimum copyright treaty standards, finding a homeinstead in nonconventional regimes of protection.65

At one time the question whether a new class of subject matter or a newright came within a treaty’s national treatment obligation had practical legalconsequence only in countries in which the treaty could be directly invoked

60. This answer does not, however, explain why countries that are substantial net copy-right importers, with little to gain from high standards in other countries, and much to losefrom having any standards in their own, will adhere to a treaty imposing minimum standards;the phenomenon is better explained by history, trade pressures, and the incremental advan-tages that copyright confers in developing equality of opportunity between domestic and for-eign authors.

61. TRIPs Agreement Art. 10(1).62. WIPO Copyright Treaty Art. 4.63. See Dennis S. Karjala, Lessons from the Computer Software Protection Debate in

Japan, 1984 Ariz. St. L.J. 53, 77–80.64. See §3.2.2, below.65. See §3.2.3, below.

in court and required no legislation to implement it.66 With the economicobligations of the Berne Convention now part of the TRIPs Agreement andconsequently subject to the dispute settlement procedures of the World TradeOrganization, compliance with the national treatment obligation is morelikely to be tested across a wider range of countries. In each case, the ques-tion whether a new form of subject matter or a new means of exploitation issubject to the national treatment requirement will be most appropriatelyanswered in terms of the new object’s proximity to the objects historicallyencompassed by the treaty.

§3.2.2. “Works” Subject to National Treatment

§3.2.2.1. Berne Convention

Article 5(1) of the Berne Paris Act requires national treatment for authors“in respect of works for which they are protected under this Convention.”“Works” presumably refers not only to the examples of “literary and artisticworks” listed in Article 2(1), but also to any subject matter coming withinthe provision’s inclusive phrase, “every production in the literary, scientificand artistic domain, whatever may be the mode or form of its expression,”67

whether the class of subject matter was known at the time of the 1971 ParisRevision or first came into existence at some later time. The breadth of thereference to “every production in the literary, scientific or artistic domain”implies that the pivotal question in any case will be the intended scope of thephrase.

The treatment of phonograms and computer programs illustrates howborderline subject matter is evaluated in order to determine whether it con-stitutes a “work” coming within the obligation of national treatment. Atone time, some authorities viewed phonograms as “adaptations” and thusprotectible works within the terms of the Berne Convention.68 More recentcommentary and national practice hold that phonograms are not worksunder the Berne Convention and are consequently not subject to the nationaltreatment obligation.69

66. See §2.1, above.67. See §5.1.1.1, below.68. See, e.g., Stephen P. Ladas, 1 The International Protection of Literary and Artistic Prop-

erty 424–425 (1938) (rejecting the characterization).69. See David Vaver, The National Treatment Requirements of the Berne and Universal

Copyright Conventions (Part One), 17 I.I.C. 577, 598–601 (1986). Professor Vaver has ob-served that many Berne Union members have also adhered to the Rome Convention, whichpermits members to apply a rule of material reciprocity, rather than national treatment, tophonograms, an approach that would violate Berne Article 5(1) if phonograms came withinBerne’s definition of “works.” Id. at 598.



Computer programs were initially thought to be better suited for protec-tion as industrial property than for protection as literary property, and in1977 the World Intellectual Property Organization promulgated a set of suigeneris “Model Provisions for the Protection of Computer Software.”70 By theearly 1990s, however, many Berne Union members, including many of themore economically significant countries, had brought computer programsunder their copyright legislation.71 The consensus of the E.C. Software Di-rective,72 the TRIPs Agreement,73 and the WIPO Copyright Treaty74 thatcomputer programs are to be protected as “literary works” within the mean-ing of the Berne Convention has today effectively concluded the question ofthe copyrightability of computer programs as a matter of international law.

The history of phonograms and computer programs under the Berne Con-vention provides lessons to guide future determinations whether the 1971Berne Paris Act compels national treatment for new classes of borderlinecreative works. One lesson is that patience is a virtue. It required at least adecade’s experience with the marketplace for lawmakers to reach consen-sus on the property status of phonograms and computer programs.75 A sec-ond lesson is that the question whether a new class of subject matter consti-tutes a Berne Convention “work” is connected to the questions whether andto what extent its effective protection can be secured by the minimum rightsestablished by the Convention. For example, the E.C. Software Directive suc-ceeded in accommodating copyright rules for software protection to Berne’sminimum requirements.76 Similarly, after some initial false starts, courts inthe United States clarified traditional copyright doctrine to accommodate thespecial needs presented by computer programs.77 Had computer programs

70. The Model Provisions are reprinted and discussed at 16 Industrial Property 259 (1977).See also Lawrence Perry, The Legal Protection of Computer Software: The WIPO Model Pro-visions, 1 E.I.P.R. 34, 36–37 (1979).

71. See §5.1.1.1, below.72. E.C. Software Directive Art.1(1).73. TRIPs Agreement Art. 10(1).74. WIPO Copyright Treaty Art. 4.75. See, e.g., David Vaver, The National Treatment Requirements of the Berne and Uni-

versal Copyright Conventions (Part One), 17 I.I.C. 577, 597 (1986) (“It would however be ab-surd and unreasonable, and thus contrary to the object of the RBC [Revised Berne Conven-tion], if a state were treated as breaking its obligation to protect a new class of literary or artisticwork from the moment that new class arose. In practice there is always a period of uncer-tainty as the various participants in a state’s legal system—lawyers, courts, bureaucrats,interested parties, and the public—become aware of and start wrestling with the problem.The period may be long or short, depending on a country’s state of development and the acci-dents of litigation. Legal and judicial opinions may initially conflict and some time may elapsebefore a final solution is reached.”)

76. See Bridget Czarnota & Robert J. Hart, Legal Protection of Computer Programs in Europe:A Guide to the EC Directive 141–151 (1991).

77. See generally Paul Goldstein, 1 Copyright §2.15.2 (2d ed. 1999).

fit less comfortably into copyright systems shaped by the Berne Convention’sminimum standards on rights, that would have been good evidence that theywere not, in fact, Berne “works.”

§3.2.2.2. TRIPs Agreement

Article 3(1) of the TRIPs Agreement ties its national treatment obligation to“the protection of intellectual property.”78 Article 1(2) defines “intellectualproperty” as “all categories of intellectual property that are the subject ofSections 1 to 7 of Part II,” including copyright and related rights,79 trade-marks,80 geographical indications,81 industrial designs,82 patents,83 layoutdesigns of integrated circuits,84 and protection of undisclosed information,or trade secrets.85 Additionally TRIPs Article 9, requiring members to com-ply with Articles 1–21 and the Appendix to the 1971 Berne Paris Act, effec-tively adds the national treatment requirement of Berne Article 5(1) to theTRIPs obligation. Although TRIPs Article 3(1) does not require a membercountry to treat foreigners identically to nationals, it does require that theirtreatment be “no less favorable” than that given to nationals.

By defining the object of national treatment as a legal conclusion—“in-tellectual property”—rather than an objective fact—“literary and artisticworks”—and bringing all the main fields of intellectual property within itsreach, Article 3(1) of the TRIPs Agreement is by its terms more likely toencompass borderline literary and artistic works than is the Berne Conven-tion. Nonetheless, the language of the TRIPs Agreement, like that of theBerne Paris Act, fails definitively to resolve a chronic quandary: whether newclasses of subject matter fall within the national treatment obligation. AsPaul Geller has observed, “This question is critical for knowing how far TRIPspanels may go in resolving disputes between W.T.O. members, as well as theprinciples that might guide them on the way.”86

The question of database protection illustrates the difficulty of determin-ing whether a hybrid mode of protection, such as the national legislation

78. Article 3(1) subjects this obligation “to the exceptions already provided in, respectively,the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and theTreaty on Intellectual Property in Respect of Integrated Circuits.”

79. TRIPs Agreement, Section 1.80. TRIPs Agreement, Section 2.81. TRIPs Agreement, Section 3.82. TRIPs Agreement, Section 4.83. TRIPs Agreement, Section 5.84. TRIPs Agreement, Section 6.85. TRIPs Agreement, Section 7.86. Paul Edward Geller, Intellectual Property in the Global Marketplace: Impact of TRIPs

Dispute Settlements? 29 Int’l Law. 99, 105 (1995).



contemplated by the E.C. Database Directive,87 that does not literally fallwithin the “intellectual property” categories of the TRIPs Agreement is none-theless subject to the national treatment obligation. On the one hand, theDirective’s sui generis rights against “extraction” and “reutilisation” of data88

do not fit neatly into any of Article 1(2)’s “intellectual property” categories.On the other hand, this approach to protection possesses some similaritiesto unfair competition law, including shared roots with aspects of copyrightand trade secrets law covered by TRIPs Sections 1 and 7.

On balance, the better result in the case of sui generis legislation enactedunder the E.C. Database Directive would be to withhold the national treat-ment obligation. Subjecting these and comparable database provisions tonational treatment would in all likelihood curb a country’s interest in cre-ating such new legal systems since to do so would obligate the country toprotect databases from other member countries while receiving no assurancethat databases of its own nationals will be protected abroad. The prospect ofsuch imbalances in intellectual property trade is hardly calculated to encour-age innovation in new forms of “effective and adequate protection of intel-lectual property rights,” a stated object of the TRIPs Agreement.89 At thesame time, withholding national treatment would not materially undercuteither of the Agreement’s two other objects: reducing “distortions and impedi-ments to international trade” and ensuring “that measures and procedures toenforce intellectual property rights do not themselves become barriers to legiti-mate trade.”90 In both respects, the very fact of the new system’s novelty willtend to ensure the absence of dislocations in existing trade patterns.

§3.2.3. “Rights” Subject to National Treatment

No single issue in international copyright and neighboring rights is a greatersource of friction among economically developed nations than the questionwhether a domestic scheme for compensating authors comes under the na-tional treatment obligations of the Berne Convention or the TRIPs Agree-ment. A country that is a net importer of creative goods, and that is barredby the Berne Paris Act and the TRIPs Agreement from reneging on minimumrights and national treatment, will have an understandable motive to design

87. The E.C. Database Directive prescribes two tiers of protection for databases. Chapter IIprovides that “databases which, by reason of the selection or arrangement of their contents,constitute the author’s own intellectual creation shall be protected as such by copyright.”Art. 3(1). Chapter III provides, independent of copyright, a right to “prevent extraction and/or re-utilisation” of the contents of databases meeting prescribed criteria. Art. 7(1).

88. E.C. Database Directive Art. 7(1).89. Preamble to TRIPs Agreement.90. Id.

a compensation system for authors that at once reduces its trade imbalanceand eludes the national treatment obligations of the two treaties. Becausethe legislature can structure such a system discriminately, pinpointing usesthat are the source of serious imbalances but excluding those that are not,this route can easily become an attractive trade strategy for net copyrightexporters no less than for net copyright importers.


Statutory arrangements for rewarding authors do not always take the formof the exclusive rights contemplated by the Berne Convention. Governmentgrants and other direct and indirect subsidies to authors, such as tax bene-fits, variously exist alongside such Berne minimum rights as reproduction,translation, and public performance. These subsidies are immune to theBerne Convention’s national treatment obligation, not because they comefrom the government, but because they differ structurally from the “rights”contemplated by Article 5(1). However, other remuneration systems, suchas the droit de suite, entitling an artist to a portion of the proceeds of his workon resale,91 and home-taping levies that seek to compensate composers andfilm authors for the private copying of their works,92 come closer to themargins of traditional copyright and directly raise the question whetherBerne members are free to withhold the revenues generated by these lawsfrom nationals of other member countries.

Since it is the treaty text, not national law, that establishes the standardsfor national treatment,93 the question whether a domestic compensation sys-tem, however it is labeled, comes within the national treatment obligation canbe answered by tracing the system’s operative elements against the profile ofrights prescribed in the Berne text. Characterized at the highest useful level ofabstraction, an economic right subject to national treatment under the 1971Berne Paris Act consists of three elements: it is effective against the world atlarge; it enables the author to control, or benefit from, the use of a literary orartistic work; and it values the use of the work, however roughly, proportion-ate to the work’s success or prospective success in the marketplace.94 The pres-

91. See §5.4.1.1.A(iii), below.92. See §5.5.1.6.B, below.93. Copyright and neighboring rights treaties provide the floor, not the ceiling, for national

treatment. A treaty member may characterize any compensation system as copyright or aneighboring right and thus entitle qualifying foreign nationals to share in the system proceeds.

94. See generally Peter F. Burger, The New Photocopy Remuneration Provisions in the Fed-eral Republic of Germany and their Application to Foreign Authors Under International Copy-right Law (Part Two), 19 I.I.C. 488, 500–501 (1988); Elisabeth Steup, The Rule of NationalTreatment for Foreigners and Its Application to New Benefits for Authors, 25 Bull. Copr. Soc’y



ence in a domestic compensation system of any one of these attributes willindicate that national treatment may be required; the presence of all three willindicate that it must be extended.

Statutory levies imposed on copying equipment or materials such as photo-copy machines, audio and videorecorders, and blank tapes, for redistributionto copyright owners to compensate for private copying of copyrighted works,will frequently bear all three hallmarks of a right under the Berne Conventionsubject to national treatment.95 Since the levies are independent of any con-tract relationships and are imposed on all equipment or all materials, the re-muneration rights are effective against the world. Second, the systems arespecifically designed to enable authors to benefit from, although not control,the use of their works. Finally, depending on the sampling method employed,copyright owners will enjoy revenues roughly proportionate to their work’ssuccess in the marketplace. The fact that these equitable remuneration sys-tems seek to compensate authors in situations where transaction costs wouldmake an exclusive right impractical also places them squarely within the Bernemethodology contemplated by Article 9(2) of the 1971 Paris Act.96

Droit de suite, or the resale royalty right, does not squarely fit the profile ofBerne Convention rights,97 which is doubtless one reason it has not been in-

279, 284 (1978). See also David Vaver, The National Treatment Requirements of the Berneand Universal Copyright Conventions (Part Two), 17 I.I.C. 715, 717 (1986).

95. On the details of the operations of these systems, see §5.5.1.6.B, below. See generallyWalter Dillenz, The Remuneration for Home Taping and the Principle of National Treatment,26 Copyright 186 (1990); Peter F. Burger, The New Photocopy Remuneration Provisions inthe Federal Republic of Germany and Their Application to Foreign Authors Under Interna-tional Copyright Law, 19 I.I.C. 488, 19 I.I.C. 319, 448 (1988); Elisabeth Steup, The Rule ofNational Treatment for Foreigners and Its Application to New Benefits for Authors, 25 Bull.Copr. Soc’y. 279, 287 (1978).

96. Many remuneration systems for private copying allocate a portion of their revenuesto domestic social and cultural objects. See Walter Dillenz, The Remuneration for Home Tap-ing and the Principle of National Treatment, 26 Copyright 186, 187 (1990). Although thesearrangements will characteristically deny foreign authors participation in the revenue pool,they probably do not violate the national treatment rule, since national authors, even if al-lowed to participate in the revenue pool, will not do so on the differentiated terms that char-acterize copyright or author’s right. Consequently, if these systems violate any treaty obliga-tions, it is the minimum treaty standard imposed for the right in issue, and not the nationaltreatment rule.

Comparable questions arise in connection with the operation of collecting societies, whichwill often allocate part of their net revenues to local cultural objects. See generally FerdinandMelichar, Deductions Made by Collecting Societies for Social and Cultural Purposes in Lightof International Copyright Law, 22 I.I.C. 47 (1991).

97. See Paul Katzenberger, “The Droit de Suite in Copyright Law,” 4 I.I.C. 361, 378–379(1973); Elisabeth Steup, The Rule of National Treatment for Foreigners and Its Application toNew Benefits for Authors, 25 Bull. Copr. Soc’y 279, 284–288 (1978). But see Stephen P. Ladas,1 The International Protection of Literary and Artistic Property 266–269 (1938).

cluded as a minimum treaty right. It was, though, added as an optional rightin the 1948 Brussels Act and was made subject to a rule of material reciproc-ity.98 Droit de suite is, to be sure, effective against the world at large and is val-ued according to market standards. The doctrine’s central deviation from rightssubject to national treatment, at least under the Berne Convention, is that itpivots not on the exploitation of intangible works, but on the disposition oftangible goods—the copy or other material support in which the work is em-bodied. Droit de suite is most closely akin to copyright law’s distribution right,which, unlike the reproduction, adaptation, and performance rights, is alsonot a minimum standard in the Berne Paris Text and has been only imperfectlyreflected in the national laws of member countries.99

National public lending right systems that provide revenues to authors forthe otherwise uncompensated lending of their books are, like droit de suite,closely analogous to the distribution right.100 Most countries that have adopteda public lending right have structured it as essentially a social welfare sys-tem, disconnected from any of the three elements that characterize rightsunder the Berne Convention; indeed, in these countries, to call the entitle-ment a “right” would be a misnomer. Public lending rights and other com-pensation systems that do not conform to the profile of Berne rights maynonetheless be characterized as part of copyright under local law and madeavailable to foreigners on the same basis as they are to nationals.101

Electronic copyright licenses governing the terms of use of copyrightedworks from electronic archives may, in their unilateral imposition of termsof use, approach the profile of rights effective as against the world.102 Likethe property rights granted by copyright, boilerplate contract terms may offerconsumers a choice only between accepting the prescribed terms and declin-ing access to the offered works. Are local rules that govern these licensessubject to the national treatment obligation? Apart from Article 14bis of theBerne Paris Act, allocating presumptions of ownership for cinematographicworks, the Berne Convention provides no rules on copyright contracts. As aconsequence, member countries would appear to be free under the treaty tosubject foreign nationals to contract rules that differ from the contract rulesit applies to its own nationals.103 Although this suggests that mass electronic

98. The provision, which originated as Article 14bis of the Brussels Act, is Art. 14ter of the1971 Berne Paris Act.

99. See §5.4.1.1.A, below.100. On the public lending right generally, see §5.4.1.1.A(iii), below.101. Germany’s public lending right, for example, is included in the country’s Copyright

Act and is applied to benefit foreigners as well as nationals. See §5.4.1.1.A(iii), below.102. See generally Paul Goldstein, Copyright and Its Substitutes, 1997 Wis. L. Rev. 865.103. See André Kerever, The Rule of “National Treatment” or the Principle of Assimila-

tion, 158 R.I.D.A. 74, 88 (1993); Sam Ricketson, The Berne Convention for the Protection ofLiterary and Artistic Works: 1886–1986 209 (1987).



licenses should be free of the national treatment obligation, the fact that theselicenses mimic full-fledged Berne rights in their effect suggests that a WTOpanel that values substance over form may decide to subject them to thenational treatment requirement.

§3.2.3.2. TRIPs Agreement

The national treatment requirement of the TRIPs Agreement104 encompassesa broader range of rights than the Berne Convention. The obligation pivotsnot on rights “in respect of works,” as does Berne, but the “protection of in-tellectual property,” defined to include all categories of intellectual propertythat are the subject of the Agreement.105 Further, a footnote to the TRIPsAgreement’s national treatment requirement provides that “protection [ofintellectual property] shall include matters affecting the availability, acqui-sition, scope, maintenance and enforcement of intellectual property rightsas well as those matters affecting the use of intellectual property rights specifi-cally addressed in this Agreement.”106

TRIPs Article 3(1) subjects its national treatment obligation to the excep-tions already provided in, respectively, the Berne and Rome Conventions,among others and, in the case of performers, producers of phonograms, andbroadcasting organizations, makes a member state’s national treatment obli-gation apply only “in respect of the rights provided under this Agreement”—specifically the rights prescribed in Article 14. This means that no member will,as a consequence of TRIPs, be required to grant neighboring rights founded inthe Rome Convention but not in TRIPs Article 14. For example, the FederalRepublic of Germany, which has adhered to the Rome Convention, would haveno obligation to protect a national of the United States, which has not, againstperformance in Germany of a phonogram embodying the U.S. national’s con-tributions, at least where the phonogram has no point of attachment in a Romecountry.107 However, Germany would be obligated to protect the same U.S.performer against the unauthorized communication to the public of a liveperformance as prescribed in TRIPs Article 14(1).

§3.2.4. Most-Favored-Nation Requirement

Article 4 of the TRIPs Agreement provides that “[w]ith regard to the protec-tion of intellectual property, any advantage, favour, privilege or immunity

104. TRIPs Agreement Art. 3(1).105. TRIPs Agreement Art. 1(2).106. TRIPs Agreement Art. 3(1) n. 3.107. See §4.1.2.1, below.

granted by a Member to the nationals of any other country shall be accordedimmediately and unconditionally to the nationals of all other Members.”108

This provision represents the first time that the most-favored-nation mecha-nism, a common feature of international trade agreements, has been incor-porated in a multilateral intellectual property agreement. Previously, suchprovisions had appeared only in bilateral copyright agreements.109

TRIPs Article 4’s most-favored-nation requirement closely parallels thenational treatment obligation imposed by the TRIPs Article 3. Where Ar-ticle 3 prohibits a member state from treating the nationals of any othermember state less favorably than it treats its own nationals, Article 4 pro-hibits a member state from treating the nationals of another member stateless favorably than it treats the nationals of any other country. Nationaltreatment requires a country to give the creative goods of foreign nationalsthe same rights and remedies it gives to the intellectual goods of its ownnationals; most-favored-nation treatment requires the country only to treatall foreign creative goods equally, allowing it to favor the creative goods ofits own nationals if it wishes.

§3.2.4.1. “Works” Subject to Most-Favored-Nation Requirement

Article 4 anchors its operation in the same TRIPs definition of the term “in-tellectual property” as Article 3: Article 1(2)’s reference to “all categoriesof intellectual property that are the subject of Sections 1 to 7 of Part II.”Nonetheless, the distinctive policies behind the most-favored-nation principlemay alter the meaning of the term for purposes of Article 4. Unlike Article 3,which aims at equality of treatment between the nationals of the protectingcountry and those of another WTO member, Article 4 aims at equality oftreatment across WTO members. This suggests that expanding an intellec-tual property category to include new forms of protection creates a greaterrisk of impairing trade in the context of Article 4 than it does in the contextof Article 3, and may require giving a narrower compass to intellectual prop-erty for purposes of Article 4 than for purposes of Article 3.

The question of protection for nonoriginal collections of data raises thesame kinds of questions in the context of Article 4 as it does in Article 3.Can a member state enter into an arrangement with another country underwhich each agrees to protect the publicly accessible, nonoriginal elements ofdatabases created by nationals of the other country, without immediately andunconditionally extending protection over the same subject matter to nation-als of all WTO member states? A conclusion that protection for nonoriginal

108. TRIPs Agreement, Art. 4109. See Stephen P. Ladas, 1 The International Protection of Literary and Artistic Property 66

(1938).



collections of data comes within Article 1(2)’s definition of intellectual prop-erty, and consequently within the terms of Article 4, could have seriousimplications for countries that have implemented the 1996 E.C. DatabaseDirective into positive law, effectively obligating them to extend databaseprotection not only to other E.C. members, but to all members of the WTO.Were this the case, E.C. countries could effectively escape the most-favored-nation mandate only by qualifying for one of Article 4’s four exemptions.

Although resolution of the question of data collections is not free fromdoubt, publicly accessible, nonoriginal collections of data probably fall out-side the boundaries of the seven categories of “intellectual property” contem-plated by Article 4. Data are almost universally excluded from the scope ofcopyright subject matter and may well be expressly disqualified from copy-right protection under the terms of TRIPs Article 9(2), which provides that“[c]opyright protection shall extend to expressions and not to ideas, proce-dures, methods of operation, or mathematical concepts as such.”110 Simi-larly, although data will regularly come within the category of undisclosedinformation under TRIPs Section 7, any publicly accessible database will,by definition, be excluded from this category, which requires that the infor-mation be “secret” and have “been subject to reasonable steps under the cir-cumstances, by the person lawfully in control of the information, to keep itsecret.”111 Finally, notwithstanding TRIPs Article 2(1)’s incorporation ofParis Convention obligations into its fabric, it seems unlikely that Paris Con-vention Article 10bis112 will provide a ready gloss on TRIPs Article 1(2)’sdefinition of “intellectual property.”

§3.2.4.2. “Rights” Subject to Most-Favored-Nation Requirement

Note 3 to Article 3(1) of the TRIPs Agreement provides that, for purposes ofArticle 4 as well as Article 3, “protection shall include matters affecting theavailability, acquisition, scope, maintenance and enforcement of intellectualproperty rights as well as those matters affecting the use of intellectual prop-erty rights specifically addressed in this Agreement.” As in the case of Article 3,this language weighs heavily in favor of extending most-favored-nationtreatment to new, or newly enlarged, rights in existing forms of subject mat-ter. Note 3 should, for example, leave no doubt that Article 4’s most-favored-nation obligation encompasses new rights in older forms of literary andartistic subject matter, such as home audio- or videotaping rights. However,

110. TRIPs Agreement, Art. 9(2).111. TRIPs Agreement Art. 39(2).112. Paris Convention, Art. 10bis (defining unfair competition as including “all acts of such

a nature as to create confusion by any means whatever with the establishment, the goods, orthe industrial or commercial activities, of a competitor”).

Note 3 may not encompass instances such as the public lending right where,although the subject matter—literary works—is clearly a traditional objectof intellectual property protection, it is less clear that the right itself possessesthe quality of an intellectual property right in the sense that it is a right tocontrol, or at least benefit from, the work’s exploitation on some basis thatapproximates the work’s success in the marketplace.113

§3.2.4.3. Exemptions from Coverage

Three of the four exemptions that Article 4 carves out from the most-favored-nation obligation directly affect interests under copyright or neigh-boring rights.114 The first of the three, Article 4(b), exempts any advan-tage, favor, privilege, or immunity “granted in accordance with the provisionof the Berne Convention (1971) or the Rome Convention authorizing thatthe treatment accorded be a function not of national treatment but of thetreatment accorded in another country.” Effectively, this provision trans-plants the national treatment exceptions under the Berne and Rome Con-ventions to the field of most-favored-nation treatment. In the case of theBerne Convention, this exemption would validate less than universal WTOprotection for droit de suite115 and works of applied art.116 Similarly, it wouldallow less than universal WTO protection for the full national copyrightterm rather than the term applied in the country of origin, under the ruleof the shorter term.117

Article 4(c)’s exemption for “any advantage, favour, privilege or immu-nity” accorded “in respect of the rights of performers, producers of phono-grams and broadcasting organizations not provided under this Agreement”encompasses rights guaranteed to performers by the Rome Convention butnot embodied in Article 14 of the TRIPs Agreement. Under this provision, amember state could extend the right to publicly perform a phonogram, a rightthat is guaranteed by the Rome Convention but not by the TRIPs Agreement,to nationals of less than all WTO countries without violating most-favored-nation treatment. Similarly, the generalized public distribution rights thatthe WIPO Performances and Phonograms Treaty, but not TRIPs Article 14,

113. See §3.2.3, above, for treatment of the question of public lending rights in the contextof national treatment under the Berne Convention and the TRIPs Agreement.

114. The fourth exemption, in TRIPS Agreement Article 4(a), is for “any advantage, favour,privilege or immunity . . . deriving from international agreements on judicial assistance andlaw enforcement of a general nature and not particularly confined to the protection of intel-lectual property.”

115. Berne Convention, 1971 Paris Text, Art. 14ter(2).116. Berne Convention, 1971 Paris Text, Art. 2(7).117. See §5.3.2, below.



guarantees to performers and phonogram producers are not subject to themost-favored-nation obligation.

Article 4(d) exempts any advantage, favor, privilege or immunity “derivingfrom international agreements related to the protection of intellectual prop-erty which entered into force prior to the entry into force of the AgreementEstablishing the WTO.”118 Apart from being subject to the same definitionalquandary as the first sentence of Article 4—What does the Agreement meanby “intellectual property”?—Article 4(d) raises two interpretational ques-tions. One question arises in connection with the Rome Convention, which,though clearly an intellectual property agreement that preceded the WTOAgreement, also guarantees rights that are not provided under the TRIPsAgreement and to this extent is exempt from the most-favored-nation obli-gation under Article 4(c). The canon of construction expressio unius estexclusio alterius suggests that the specific reference to the Rome Conventionin Article 4(c) takes precedence over the more general reference so that, atleast to the extent prescribed by Article 4(c), the Rome Convention wouldfall outside Article 4(d)’s two provisos.

The second, more consequential, question of interpretation under Arti-cle 4(d) concerns the status of European Union intellectual property direc-tives promulgated and implemented before or after the WTO Agreement’sentry into force. The fact that directives are not “agreements” under the termsof Article 4(d) suggests that they are not subject to the exemption. But nei-ther are directives positive law, a fact that may exclude them from the oper-ation of Article 4 altogether. One commentator has noted the possibility ofregarding the entire E.C. Treaty as “an international agreement related tothe protection of intellectual property,”119 even though this conclusion wouldlikely stretch the meaning of that term beyond the likely contemplation ofArticle 4(d). Certainly the much-discussed Phil Collins decision of the Euro-pean Court of Justice,120 whatever its implications for national treatment ofintellectual property within the Community, is not dispositive on the propo-sition that the E.C. Treaty is an intellectual property treaty.121

118. Article 4(d)’s first proviso, “that such agreements are notified to the Council for Trade-Related Aspects of Intellectual Property Rights” is essentially ministerial. The second proviso,that the agreements “not constitute an arbitrary or unjustifiable discrimination against na-tionals of other Members” requires interpretation. The proviso’s two operative criteria—“arbitrary” and “unjustifiable”—will in all likelihood be applied according to the principlesthat animate the TRIPs Agreement generally.

119. Herman Cohen Jehoram, The E.C. Copyright Directives, Economics and Authors’Rights, 25 I.I.C. 821, 827 (1994).

120. Phil Collins v. Imtrat Handelsgesellschaft mbh, Joined Cases C-92/92 and C-326/92,3 C.M.L.R. 773 (1993). The Phil Collins decision is discussed at §2.1.3.2, above.

121. See Paul Katzenberger, TRIPs and Copyright Law, in Friedrich-Karl Beier & GerhardSchricker, eds., From GATT to TRIPs: The Agreement on Trade-Related Aspects of Intellectual Prop-erty Rights 59, 78–79 (1996).

§3.3CHOICE OF FORUM AND CHOICE OF LAW

The procedural rules of the forum in which a copyright case is heard candetermine the outcome of the case. Forum rules govern not only the proce-dural aspects of a case, from pretrial procedures through exhaustion of ap-peals; forum rules on choice of law—also called conflicts of law, or privateinternational law—will control the substantive law that applies to the dis-pute. Parties to international copyright contracts regularly include in theiragreements not only a choice of forum clause, designating the forum thatwill hear disputes arising out of the contract, but also a governing law clauseto control the forum’s choice of law. Ultimately, however, forum law is su-preme and will in certain circumstances supersede a choice of forum or achoice of law clause.122

The national treatment requirement can be viewed as a choice of law rulefor copyright cases only in the limited sense that it requires a country to applythe same law to works of foreign origin as it applies to works of its own na-tionals.123 It is not, in any event, a complete choice of law rule.124 The BerneParis Act requires national treatment only for rights in protected works;125

the Universal Copyright Convention requires the “same protection” given toworks of nationals;126 and the TRIPs Agreement requires treatment “no lessfavourable” than the treatment nationals receive with respect to the protec-

122. See §§3.3.1, 3.3.2, below.123. See, e.g., Michael M. Walter, Contractual Freedom in the Field of Copyright and Con-

flict of Laws, 87 R.I.D.A. 44, 46 (1976) (“[T]he principle of national treatment, as contained inarticle 4, par. 1, of the Berne Convention [Brussels Text], does not by its nature pertain to therules of conflicting laws. Considered separately, that principle, in my view, concerns only thecondition of foreigners and is meant to prevent treating nationals differently from foreigners fromthe standpoint of material rights, or national works from foreign works, within the field of appli-cation of the Convention. Indeed, equality of treatment still says nothing regarding the appli-cable law, and a legislation which defines the content and extent of copyright protection for bothnationals and foreigners as being governed by the provisions of the country of origin would notbe established at variance with the principle of national treatment.”).

See also Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 89 n. 8 (2d Cir.1998) (“Whether U.S. copyright law directs U.S. courts to look to foreign or domestic law asto certain issues is irrelevant to national treatment, so long as the scope of protection wouldbe extended equally to foreign and domestic authors.”)

But see Paul Edward Geller, Harmonizing Copyright-Contract Conflicts Analyses, 25 Copy-right 49, 50 (1989).

124. See Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws 9 (1978) (“Therule of conflict of laws contained in the principle of national treatment is admittedly not acomplete rule of conflict.”)

125. Berne Convention, 1971 Paris Text, Art. 5(1).126. Universal Copyright Convention, 1971 Paris Text, Art. II(1).



tion of “intellectual property.”127 Issues lying outside these formulations of thenational treatment obligation, and not controlled by any other treaty provi-sion, will be resolved instead under the national law designated by the forum’schoice of law rules. For example, apart from the narrow provisions of BerneArticle 14bis, dealing with ownership interests in cinematographic works,128

neither the copyright treaties nor the TRIPs Agreement provide substantiverules on copyright ownership and transfer. As a consequence, questions ofownership and transfer, which frequently arise in the international exploita-tion of rights in creative work, are subject neither to the obligation of nationaltreatment nor to any mandatory conflicts rule derived from it, and they willbe resolved under the law designated by the forum’s choice of law rules.

Rules on choice of forum and choice of law in copyright cases have not beenimmune to change in the general legal environment. The evolving principleof territoriality in international copyright cases has affected contemporaryrules on choice of forum and choice of law.129 Rules are in flux respectingwhen a forum may accept or reject jurisdiction in a copyright case with inter-national elements.130 In Europe the procedural innovations of the Brusselsand Lugano Agreements on Jurisdiction and Enforcement of Judgments131

may significantly reshape jurisdiction practice in copyright cases. New ap-proaches in choice of law132 will inevitably alter the traditional private inter-national law treatment of copyright contracts133 and of conflicts betweencontract rules and copyright rules.134 The spread of global information net-works, carrying unprecedented quantities of copyrighted works acrossnational borders at unprecedented speed, will accelerate these legal currentsbut probably not change them.135

§3.3.1. Choice of Forum in Copyright Cases withForeign Elements

Choice of forum can significantly affect the outcome of a copyright infringe-ment or breach of contract case. Apart from the fact that a forum’s choice oflaw rules will determine the substantive law applicable to the case, forum

127. TRIPs Agreement Art. 3(1).128. See §5.2.1.5, below.129. See §3.1.2, above.130. See §3.3.1, below.131. See §3.3.1.1, below.132. See §3.3.2, below.133. See §3.3.2.2, below.134. See §3.3.2.2.C, below.135. See generally Jane Ginsburg & Myriam Gauthier, The Celestial Jukebox and Earthbound

Courts: Judicial Competence in the European Union and the United States Over CopyrightInfringements in Cyberspace, 173 R.I.D.A. 61 (1997).

law will govern the availability and scope of personal jurisdiction and otherprocedural incidents affecting the cost, efficiency, and completeness of thelitigation such as discovery, jury trial, res judicata, and enforcement of judg-ments. The national treatment provisions of the copyright conventions andthe TRIPs Agreement generally ensure that the forum will select the law ofthe protecting country to govern the copyright aspects of the case; but differ-ent fora may apply different choice of law rules to contract aspects of the case.Further, a forum may entirely decline jurisdiction over a case if it character-izes copyright infringement as a local rather than a transitory cause of ac-tion. The salience of these considerations explains the regular inclusion ofchoice of forum clauses in international copyright agreements.

§3.3.1.1. Subject Matter Jurisdiction

a. common law traditions; copyright infringementas a “local” or “transitory” action

English courts have historically applied the territoriality principle stringentlyin order to limit, if not entirely to reject, judicial jurisdiction over copyrightinfringements that occur beyond the country’s borders. Tyburn ProductionsLtd. v. Conan Doyle136 invoked the distinction between “transitory” and “local”actions to reject jurisdiction over an action for a declaration that certain foreignacts did not infringe copyright. Plaintiff, a British film production company,had begun production of a film featuring the characters Sherlock Holmes andDr. Watson as depicted in the stories of Sir Arthur Conan Doyle. Doyle haddied in 1930, so the Holmes stories had fallen into the public domain in En-gland in 1980 under the then applicable copyright term, but not yet in theUnited States, where Doyle’s daughter, Lady Bromet, had previously assertedrights against plaintiff’s distribution of earlier Holmes films in the UnitedStates. Evidently believing it would be unable to obtain a declaratory judg-ment under U.S. law, plaintiff sought a declaration of rights in England.

Chancery Division, in an opinion by Justice Vinelott, ruled that Englishcourts had no jurisdiction to hear the case. The principal rationale for thedecision was that copyright infringement, like trespass to land, is a “local”rather than a “transitory” cause of action and is consequently not justiciableoutside the jurisdiction in which it arises, in this case the United States. Thecourt borrowed the analogy between foreign copyrights and foreign realproperty from an Australian decision, Potter v. Broken Hill,137 holding thatpatent infringement is a local rather than a transitory cause of action. Jus-tice Vinelott cited the rationale given in Potter v. Broken Hill as the main rea-

136. 1 All E.R. 909 (1990).137. Potter v. Broken Hill Pty. Co. Ltd., 3 C.L.R. 479 (High Court of Australia) (1906).



son for declining jurisdiction in foreign real property, patent, and copyrightactions: “The principles of international law, which systematizes the comityof nations, generally recognize that the Courts of a country will not inquireinto the validity of the acts of a foreign State, except subject to well-knownlimitations.”138

A second ground for decision in Tyburn v. Conan Doyle was the “double-actionability” rule as then formulated in the leading English conflicts trea-tise: “As a general rule, an act done in a foreign country is a tort and action-able as such in England, only if it is both (a) actionable as a tort accordingto English law, or in other words is an act which, if done in England, wouldbe a tort; and (b) actionable according to the law of the foreign countrywhere it was done.”139 Although the appropriation of the Conan Doyle char-acters would presumably have been actionable under U.S. law, thus meet-ing the second requirement of the double actionability test, it would not havebeen actionable in England, so that it failed the first requirement.140

The 1968 Brussels Convention on Jurisdiction and Enforcement of Judg-ments has the force of law in the United Kingdom141 and circumscribes thetreatment of copyright infringement as a local rather than a transitory causeof action by subjecting European Community defendants to suit in the courtsof their domicile, at least if the infringement occurred in another contract-ing state.142 Legislation in England has since undermined the double action-ability rule by making the lex loci delicti generally applicable to tort actions,143

and some judicial inclination exists to limit Tyburn v. Conan Doyle.144 None-theless, the earlier English rules continue to have force in international prac-tice. Common law rules formulated in England have radiated through othercommon law countries.145 Also Professor Cornish has proposed a pruden-tial trimming of the “local action” rule to balance its benefits, rooted in terri-

138. Potter v. Broken Hill Pty. Co. Ltd. 3 C.L.R. 479, 510 (1906). See generally ChristopherWadlow, Enforcement of Intellectual Property in European and International Law 360–381(1998).

139. 1 All E.R. 916 (1990), quoting from Dicey & Morris, The Conflict of Laws 935 (10th ed.1980).

140. See also Def Lepp Music v. Stuart-Brown (1986) R.P.C. 273. See generally Richard Arnold,Can One Sue in England for Infringement of Foreign Intellectual Property Rights? 12 E.I.P.R.254 (1990).

141. Civil Jurisdiction and Judgments Act 1982 (as amended 1991) §2(1).142. See Stuart Dutson, The Internet, the Conflict of Laws, International Litigation and

Intellectual Property: The Implications of the International Scope of the Internet on Intellec-tual Property Infringements, 1997 J.B.L. 495, 506–507.

143. Private International Law (Miscellaneous Provisions) Act 1995, Part III §11(1).144. See Pearce v. Ove Arup Partnership Ltd., Court of Appeal (Civil Division) [1999] All E.R.

769, [1999] F.S.R. 525.145. See William Cornish, Intellectual Property Infringement and Private International

Law: Changing the Common Law Approach, G.R.U.R. Int. 285, 287 (1996).

toriality, against the benefits of the Brussels and Lugano Conventions, rootedin regional commerce.146

In the United States a jurisdictional statute authorizing federal districtcourts to hear actions “arising under any Act of Congress relating to . . .copyrights” effectively gives these federal courts of first instance jurisdictionover copyright cases that possess foreign elements so long as they also in-volve an act of infringement inside the United States.147 U.S. courts may alsoexercise so-called diversity jurisdiction over copyright cases that have onlyforeign, and no domestic, elements under another provision of the jurisdic-tional statute, encompassing cases between citizens of the United States andcitizens or subjects of a foreign state.148

In London Films Productions Ltd. v. Intercontinental Communications, Inc.,149

a suit by a British copyright owner against a New York licensor for copyrightinfringements in six Latin American countries but not in the United States,the court ruled that copyright infringement is a transitory cause of actionso that, in light of the diverse citizenship of the parties, the foreign infringe-ments were subject to jurisdiction in U.S. district court. The court distin-guished earlier decisions, such as one that refused jurisdiction over a Cana-dian trademark infringement action that would have entailed inquiry intoCanada’s registration of the trademark in suit; in the case of copyright, thecourt ruled, “there is no danger that foreign courts will be forced to acceptthe inexpert determination of this Court, nor that this Court will create ‘anunseemly conflict with the judgment of another country.’ The litigation willdetermine only whether an American corporation has acted in violation ofa foreign copyright, not whether such copyright exists, nor whether suchcopyright is valid.”150 The court also declined to dismiss the case on the groundof forum non conveniens since there was no foreign forum in which the defen-dant was subject to personal jurisdiction.151

146. William Cornish, Intellectual Property Infringement and Private International Law:Changing the Common Law Approach, G.R.U.R. Int. 285, 288–289 (1996).

147. 28 U.S.C. §1338(a).148. 28 U.S.C. §1332(a) (2). See, e.g., Boosey & Hawkes Music Publishers Ltd. v. Walt Disney

Co., 145 F.3d 481, 491–492 (2d Cir. 1998) (rejecting defense of forum non conveniens andvacating dismissal of foreign copyright claims); Creative Tech., Ltd. v. Aztech System PTE, Ltd.,61 F.3d 696, 702 (9th Cir. 1995) (“This Court has recognized the potential of American courtsto entertain actions under the copyright laws of other nations.”); London Film Productions Ltd.v. Intercontinental Communications, Inc., 580 F.Supp. 47, 49 (S.D.N.Y. 1984). But see ITSI T.V.Productions v. California Authority of Racing Fairs, 785 F.Supp. 854, 866 (E.D. Cal. 1992) (“Al-though one district court has accepted jurisdiction over an action for foreign copyright in-fringement [citing London Film Productions v. Intercontinental Communications], I discern noclear authority for exercising such jurisdiction.”).

149. 580 F.Supp. 47 (S.D.N.Y. 1984).150. 580 F.Supp. at 49–50.151. 580 F.Supp. at 50.



b. civil law tradition; the brussels andlugano conventions

Historically, and even before the Brussels and Lugano Conventions, the civillaw countries of Europe have been more hospitable than common law coun-tries to jurisdiction over foreign copyright actions.152 The difference betweencommon law and civil law approaches to jurisdiction in foreign copyrightcases should not, however, be exaggerated. Professor Ulmer was doubtlesslooking not to the past but to a future dominated by the Brussels Conven-tion when he observed that “[f]rom the point of view of private internationallaw it certainly seems consistent to expand the [partial conflicts] rule [basedon national treatment] which may be derived from the [copyright] conven-tions into a complete rule of conflict of laws whereby protection of intellectualproperty rights, irrespective of the country in which the action is brought, isto be governed by the law of the country in whose territory the act of infringe-ment took place.”153

The 1968 Brussels Convention154 and the 1988 Lugano Convention,155

which extended the Brussels jurisdictional framework to the EFTA states,provide as their jurisdictional pivot that persons domiciled in a contractingstate are subject to suit in the courts of that state, regardless of their nation-ality, and may be sued in the courts of another contracting state only asspecifically allowed by the convention.156 Two exceptions to the general ruleare that a person domiciled in one contracting state may be sued in anothercontracting state “in contract matters, before the court of the place wherethe contract was or is to be performed”157 and, “in cases of torts or quasi torts,before the court of the place where the injury occurred.”158 For example, anAmerican national domiciled in Germany who infringes a copyright in Italywill be subject to suit both in Germany, where he is domiciled, and in Italy,where the tort occurred.159

152. See Mathias Reimann, Conflict of Laws in Western Europe: A Guide Through the Jungle75–81 (1995).

153. Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws 10 (1978).154. European Communities Convention on Jurisdiction and Enforcement of Judgments

in Civil and Commercial Matters, September 27, 1968 (“Brussels Convention”), 8 I.L.M. 229(1969).

155. European Communities–European Free Trade Association: Convention on Jurisdic-tion and Enforcement of Judgments in Civil and Commercial Matters, September 16, 1988(“Lugano Convention”), 28 I.L.M. 620 (1989).

156. Brussels Convention Art. 2. See also Lugano Convention Art. 2.157. Brussels Convention Art. 5(1). See also Lugano Convention Art. 5(1).158. Brussels Convention Art. 5(3). See also Lugano Convention Art. 5(3).159. See Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws 16 (1978).Article 16(4) of the Brussels Convention provides that “in matters involving the validity

of patents, trademarks, designs and models, as well as of similar rights requiring a filing orregistration,” exclusive jurisdiction, regardless of domicile, is vested in the “courts of the

§3.3.1.2. Forum Non Conveniens

As a rule in common law jurisdictions, but not in civil law jurisdictions, copy-right lawsuits with foreign elements are subject to discretionary stay or dis-missal on the ground of forum non conveniens. Japan, with its own legal cul-ture, has a “special circumstances” doctrine that in many respects resemblesforum non conveniens.160 Another important exception is British practiceunder the Brussels Convention. Because the Brussels Convention does notpermit a forum non conveniens defense, British courts will decline to apply thedoctrine in cases subject to the Convention if the alternative forum is anotherE.C. country. British courts may apply the doctrine, however, if the alterna-tive forum is not subject to the Brussels Convention.161

As its name implies, the doctrine of forum non conveniens applies in situa-tions where it would be appropriate—to promote justice and the convenienceof the parties—for a case to be heard in a different forum. The leading Brit-ish case, Spiliada Maritime Corp. v. Cansulex Ltd.,162 which has strongly in-fluenced the doctrine in other Commonwealth countries, ruled that “a staywill only be granted on the ground of forum non conveniens where the courtis satisfied that there is some other available forum, having competent juris-diction, which is the appropriate forum for the trial of the action, i.e., in whichthe case may be tried more suitably for the interests of all parties and the endsof justice.”163 A defendant who invokes forum non conveniens bears the burdenof demonstrating that some other forum is both available and more appro-priate; if the defendant makes this showing, the burden shifts to the plaintiff todemonstrate that “there are special circumstances by reason of which justicerequires that the trial should nevertheless take place in this country.”164

Forum non conveniens practice in the United States is somewhat more flex-ible than in other common law countries. Unlike English courts, courts inthe United States indulge a presumption in favor of their own national’schoice of forum but not in favor of a foreign plaintiff’s choice of forum.165

This presumption arguably offends the national treatment requirement in

contracting state in whose territory the Wling or registration was applied for or effected . . .under the terms of an international convention.” See also Lugano Convention Art. 16(4).

160. See J. J. Fawcett, General Report, in Declining Jurisdiction in Private International Law18 (J. J. Fawcett ed. 1995).

161. Re Harrods (Buenos Aires) Ltd. [1992] (Court of Appeal) 4 All E.R. 334, 342–343 (1991).See generally Richard G. Fentiman, Jurisdiction, Discretion and the Brussels Convention, 26Cornell Int’l L.J. 59 (1993).

162. [1987] AC 460.163. [1987] AC at 476.164. [1987] AC at 476.165. J. J. Fawcett, General Report, in Declining Jurisdiction in Private International Law 16

(J. J. Fawcett ed. 1995). See, e.g., Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1981).



cases where the foreign plaintiff is a national of a country with which theUnited States has treaty relations imposing a national treatment obligation.Resolution of the national treatment question in any case will turn on theprecise wording and intent of the national treatment requirement in issue andthe materiality of the presumption to disposition of the case. If the treaty pro-vision requires only equality in application of substantive rights and not inaccess to courts, the presumption will not violate the requirement.166 Also, inmany cases, the nationality of the plaintiff will be just one of several indepen-dently dispositive factors weighing in favor of the forum non conveniens claim.

The American version of forum non conveniens has two requirements. First,a court will dismiss a claim involving foreign copyright law only if, notwith-standing the presumption favoring a U.S. plaintiff that sues in its homeforum, the defendant can show that an adequate alternative forum exists tohear the dispute.167 A defendant can make the required showing of an ade-quate alternative forum only if it can demonstrate that it is susceptible toprocess in another forum. Further, it will fail in its defense if the alternativeforum would not give the plaintiff a satisfactory remedy.168

As a second requirement to a finding of forum non conveniens, the defendantmust show that the balance of private and public interests favors dismissal.169

Private interest factors include relative access to evidence, availability of pro-cess to compel attendance of hostile witnesses, the cost of transporting friendlywitnesses, and any other factors affecting a prompt and economical trial.170

Public interest factors include court congestion, local interest in the contro-versy, a forum’s preference for applying familiar law, and avoidance of choiceof law problems.171

Creative Technology, Ltd. v. Aztec System PTE Ltd.172 illustrates how U.S.courts apply the forum non conveniens doctrine to copyright cases with a for-

166. See, e.g., Murray v. British Broadcasting Corp., 81 F.3d 287, 293, (2d Cir. 1996) (equalaccess to courts will not be required unless treaty expressly requires it; “the Berne Convention’snational treatment principle insures that no matter where Murray brings his claim, UnitedStates copyright law would apply to exploitation of the character in this country”).

167. See Lockman Foundation v. Evangelical Alliance Mission, 930 F.2d 764, 767 (9th Cir.1991); Boosey & Hawkes Music Publishers Ltd. v. Walt Disney Co., 146 F.3d 481, 491 (2d Cir.1998). See generally Edward J. Ellis, National Treatment Under the Berne Convention and theDoctrine of Forum Non Conveniens, 36 IDEA 327 (1996).

168. Lockman Foundation v. Evangelical Alliance Mission, 930 F.2d at 764, 768 (9th Cir.1991).

169. See Lockman Foundation v. Evangelical Alliance Mission, 930 F.2d 764, 767 (9th Cir.1991). Boosey & Hawkes Music Publishers Ltd. v. Walt Disney Co., 145 F.3d 481, 491–492 (2dCir. 1998). See generally Edward J. Ellis, National Treatment Under the Berne Convention andthe Doctrine of Forum Non Conveniens, 36 IDEA 327 (1996).

170. Lockman Foundation v. Evangelical Alliance Mission, 930 F.2d at 764, 769 (9th Cir.1991).

171. 930 F.2d at 771.172. 61 F.3d 696 (9th Cir. 1995).

eign element. Plaintiff and defendant, both Singapore nationals, manufac-tured computer sound cards in Singapore, marketing them in the UnitedStates through wholly owned subsidiaries. Plaintiff, which owned the UnitedStates copyrights in a series of sound cards, filed suit for infringement in theNorthern District of California, alleging the unauthorized manufacture anddistribution of clones of its sound cards. The parties had settled earlier litiga-tion in Singapore, but that settlement had been repudiated, and the Singaporelitigation had been restarted by defendant. The Ninth Circuit Court of Ap-peals held that the district court had not abused its discretion by dismissingthe case on the ground of forum non conveniens.

Under the first requirement for forum non conveniens, the court of appealsdetermined that Singapore was an adequate alternative forum for the law-suit because the defendants were amenable to process there and because theSingapore Copyright Act’s “lack of extraterritorial reach” should not preventthe High Court of Singapore from applying U.S. copyright law to plaintiff’sclaims or “from subsuming the amount of damages incurred by Aztech Labs’alleged illegal distribution of pirated sound cards within the United States inthe amount of damages awarded under the Singapore Copyright Act forAztech’s alleged infringing acts occurring in Singapore.”173 Under the sec-ond forum non conveniens requirement, the court found that private factors(parallel litigation in Singapore, location of records and witnesses there) andpublic interest factors (neither American goods or companies were involved)weighed in favor of dismissal.174

Judge Warren Ferguson entered a vigorous dissent in Creative Technology,arguing that because all the claimed acts of infringement had occurred inthe United States and because only U.S. law applied, it was wrong to dismissthe case on the ground of forum non conveniens. Citing the Berne Convention’snational treatment requirement for the proposition that “where a copyrighthas been infringed in a particular country, the author has a right to pursuea remedy in that country,” Ferguson concluded that “the first part of theforum non conveniens test requires us to retain this action because the prin-ciple of national treatment precludes Singapore from being an adequate al-ternative forum.”175 Further, no authority had been cited to the court indi-cating that a Singapore court would apply U.S. copyright law and remediesto the case.176 On the second part of the test, weighing public and privateinterest factors, Judge Ferguson observed that the lower court “utterly ig-nored the public interest in having the federal courts of this country applyAmerican copyright law to resolve this controversy.”177

173. 61 F.3d at 702.174. 61 F.3d at 703–704.175. 61 F.3d at 706.176. 61 F.3d at 706.177. 61 F.3d at 707.



§3.3.1.3. Contractual Choice of Forum

The parties to a copyright contract can attempt to forestall forum shoppingand achieve additional transactional certainty for their agreement by expresslyproviding that all disputes under the contract will be litigated in a specifiedforum. Civil law countries generally honor forum selection agreements,178 andthe Brussels and Lugano Conventions on Jurisdiction and Enforcement of Judg-ments expressly validate them subject to prescribed conditions.179 Commonlaw jurisdictions are somewhat more likely than civil law jurisdictions tooverturn forum selection agreements, usually for reasons comparable tothose entertained under forum non conveniens doctrine.180 A widely followedEnglish case, The Eleftheria,181 held that an English court should as a rule staya local action in order to allow the parties to proceed in the contractuallydesignated foreign forum unless the plaintiff could show compelling reasonsfor proceeding locally. The U.S. Supreme Court has ruled that a forum selec-tion clause should be enforced in the absence of a showing that enforcementwould be unreasonable and unjust.182 However, even courts in civil law ju-risdictions will decline to enforce choice of forum clauses where doing sowould violate a strong domestic public policy.183

Local pleading rules will sometimes defeat a contract’s selection of forum.In Corcovado Music Corp. v. Hollis Music, Inc.,184 defendant traced its own-ership of a musical work’s U.S. renewal term to the composer’s contractwith his publisher specifying Brazil as the forum for litigating disputesunder the agreement; plaintiff claimed title to the renewal term through asubsequent grant directly from the composer. Although the dispute turnedon whether the first agreement had conveyed the renewal right to the de-fendant, defendant’s claim based on the agreement was at best a defenseto plaintiff’s infringement action. Under pleading rules in the United States,the terms of the complaint control jurisdiction, and jurisdiction will not bedefeated by an anticipated defense. “[W]here a plaintiff sues for copyrightinfringement and asserts no rights under a contract with the defendant

178. See Mathias Reimann, Conflict of Laws in Western Europe: A Guide Through the Jungle76 (1995) (“European Countries normally recognize [forum-selection clauses], though the ex-tent to which they are permitted varies considerably and the respective statutes frequentlyrequire an agreement in writing.”)

179. Brussels Convention Art. 17; Lugano Convention Art. 17.180. See generally J. J. Fawcett, General Report, in Declining Jurisdiction in Private Inter-

national Law 47–58 (J. J. Fawcett ed. 1995).181. 2 All E.R. 641 (1969).182. See Bremen v. Zapata Off-Shore Co., 407 U.S. 1, 10 (1972).183. J. J. Fawcett, General Report, in Declining Jurisdiction in Private International Law 54–

55 (J. J. Fawcett ed. 1995).184. 981 F.2d 679 (2d Cir. 1993).

containing a forum-selection clause, the forum-selection clause has noeffect.”185

§3.3.2. Choice of Law in Copyright Cases with Foreign Elements

Choice of law issues in copyright cases having a foreign element are typicallyresolved in three distinct settings: where no contract between the partiesprescribes the applicable law,186 where a contract between the parties effec-tively specifies the law that is to govern the contract,187 and where a con-tract exists but the law of the contract conflicts with the law that would ap-ply in the absence of contract.188 In any one of these settings, inquiry willusually center on one or more of three sets of questions: What law or lawscontrol determination of a work’s authorship and of the rights that attachto the work? What law controls the validity and interpretation of contractsthat convey copyright interests? What law controls the transferability ofcopyright interests?

The question of what law governs the transferability of copyright inter-ests is the most volatile of all choice of law issues in international copyright.If A, a U.S. national who has authored a copyrighted work, enters into acontract conveying to B, a German national, the right to exploit the work inGermany by terms that encompass “all media presently known or to be de-veloped in the future,” which of them—A or B—will have the right toexploit the work in Germany through a technology that was unknown atthe time the work was created? If U.S. law controls construction of the con-tract, the most likely answer is that B has these rights in Germany.189 If, how-ever, German law controls—specifically Article 31(4) of the German Copy-right Act invalidating any “grant of an exploitation right for as yet unknowntypes of use”—A will own the rights in Germany.

§3.3.2.1. Where No Contract Prescribes Applicable Law

In the absence of a dispositive contract provision or treaty rule, the law ofthe protecting country—the country in which the work is being exploitedwithout the copyright owner’s authority—dominates judicial choice of lawrespecting the protectibility of a work and the rights that attach to it. Many

185. 981 F.2d at 682.186. See §3.3.2.1, below.187. See §3.3.2.2, below.188. See §3.3.2.2.C, below.189. See Paul Goldstein, 1 Copyright §4.6.3 (2d ed. 1998).



courts also consult the law of the protecting country on questions of author-ship and initial ownership, but courts in other countries have looked insteadto the work’s country of origin, or the country having the closest contact withthe work, for the law to apply to issues of authorship and initial ownership.

The general preference for the law of the protecting country as applicablelaw in copyright cases reflects the historic principle that copyright is territo-rial. To apply the law of Country A to an alleged infringement occurring inCountry B would, it is widely believed, violate the principle of territorialityby exporting the law of one country to the territory of another; the fact thatCountry A is the forum country should make no difference. To the extent thatthe obligation of national treatment is a substantive choice of law rule, it toopoints to the law of the protecting country as the applicable law, at least onissues governed by the treaty that imposes the obligation.

The national treatment principle also offers a historical basis for rebuttingthe suggestion sometimes made that a work’s country of origin, and not theprotecting country, should provide the law applicable to at least some aspectsof a work’s protection.190 As the Berne Convention has supplanted the bi-lateral treaties that applied the law of the country of origin, rather than thelaw of the protecting country, to questions arising from a work’s exploita-tion, national treatment, rather than material reciprocity, has become thecentral norm for disposing of substantive questions in international copy-right. This development implies that a copyrighted work should be governedby the law of the protecting country, except in cases where the governing treatyprovides otherwise, or in the unusual situation where no treaty governs.

In a world linked by digital networks, copyright infringements regularlycross national borders, and a choice of law rule that looks to the protectingcountry for applicable law may require the forum court to ascertain and applya large number of national laws in a single case. Commentators have for thisreason criticized the traditional choice of law approach as unwieldy.191 Tak-ing the United States as an example, Professor Jane Ginsburg has proposedthat in cases “alleging infringements in one territory, but culminating inmany others,” if “it is possible to localize in the United States the point fromwhich the communication of the infringing work (whether or not in mate-rial form) becomes available to the public (wherever that public be located),

190. See, e.g., Georges Koumantos, Private International Law and the Berne Convention,24 Copyright 415, 423–428 (1988).

191. See, e.g., Graeme Austin, Domestic Laws and Foreign Rights: Choice of Law in Trans-national Copyright Infringement Litigation, 23 Colum.-VLA J.L. & Arts 1 (1999); Paul EdwardGeller, Conflict of Laws in Cyberspace: Rethinking International Copyright, 44 J. CopyrightSoc’y U.S.A. 103 (1996); Jane Ginsburg, Copyright Without Borders? Choice of Forum andChoice of Law for Copyright Infringement in Cyberspace, 15 Cardozo Arts & Ent. L.J. 153 (1997);Andreas Reindl, Choosing Law in Cyberspace: Copyright Conflicts in Global Networks, 19Michigan J. Int’l L. 799 (1998).

then U.S. courts should apply U.S. law to unauthorized copies, wherevercommunicated.”192 Further, “where the United States is the ‘nerve center’for foreign distributions, the domestic acts of planning and intellectuallyimplementing the offshore acts should suffice to justify the application of U.S.law to the full series of acts.”193

No proposed choice of law rule for copyright cases should be adopted un-less the traditional rule is in fact deficient. Certainly, if the law of the pro-tecting country and the law selected by any proposed alternative rule willidentically dispose of the question in issue, there is no need for the compet-ing rule. As a practical matter, this will in fact be the result in a significantnumber of cases involving questions of copyright subject matter and rights,because the Berne Convention establishes extensive and detailed norms forresolution of these questions and, to the extent that national laws do notconform to these norms, the prospect of World Trade Organization enforce-ment procedures can be expected to press in that direction. Transnationalharmony is less likely to be found, and true conflicts are more likely to arise,on questions of authorship and initial ownership, both of which are largelyuntouched by the Berne Convention.

Even on the topics of subject matter and rights, the Berne Convention’sminimum standards leave room for variations from country to country. TheConvention’s definition of “works” implicitly leaves it to member countriesto determine whether new forms of subject matter, such as sound record-ings or computer programs, are sufficiently analogous to literary and artis-tic works to be brought within copyright or are better left to a regime of neigh-boring rights. The permitted exceptions from the reproduction right, to takeanother example, have produced various national approaches to the issueof private copying. The very fact that Berne members have not harmonizedtheir laws in these interstitial areas is some evidence of the importance ofthese differences to national legislatures respecting conduct within theirnational borders, and of the consequent need to apply the law of the protect-ing country in these cases. While the Berne Convention may not mandaterespect for these differences under the law of the protecting country, neitherdoes it support a rule that would override these differences on questions ofsubject matter and rights.

Of all the criteria against which a choice of law rule is to be measured, noneis more salient than the predictability that promotes certainty in copyrighttransactions. At least on questions of subject matter and rights, the choiceof law rule that applies the law of the protecting country comes closer tomeeting this criterion than any other, if only for the reason that its near

192. Jane Ginsburg, Extraterritoriality and Multiterritoriality in Copyright Infringement,37 V. J. Int’l L. 587, 600 (1997).

193. Id.



universality has produced the same widespread expectations among copy-right owners. Equally important, no alternative choice of law rule will farebetter against this criterion unless and until it becomes universal or nearlyso—a prospect that is distant at best. National governments will resist theadoption of any choice of law rule that will undercut the operation of thenation’s substantive law for the same reason they resist harmonization ofthe substantive legal rules themselves. By contrast, no choice of law rule onauthorship and ownership enjoys nearly universal adherence, with the re-sult that more room exists for diverging approaches to these issues. Trans-actional certainty in these cases may best be served by a rule that establishesa single root of title for copyright in a work, possibly in the work’s country oforigin.

a. authorship and initial ownership

Neither the copyright conventions nor the TRIPs Agreement contains a mini-mum standard or choice of law rule for establishing who is a work’s authoror, apart from Article 14bis(2) of the Berne Paris Act dealing with rights incinematographic works, for determining who is the work’s initial owner.Case law on the issue is sparse. While the facts of many cases present a ques-tion of what law should be applied to determine authorship and ownership,courts rarely address the question directly; choice of law is typically implicitin the results of these cases.

Some commentators take the position that questions of authorship andinitial ownership of literary and artistic works are as a rule to be determinedunder the law of the protecting country just as are issues relating to subjectmatter and rights.194 Under this approach, if A, a U.S. national, creates andfirst publishes a work in the United States under circumstances in which theU.S. Copyright Act’s work-for-hire provisions would characterize A’s corpo-rate employer, B, as the work’s author and first owner, A will nonethelessbe considered the work’s author and first owner for purposes of a copyrightinfringement action in France, which in the usual case recognizes only flesh-and-blood creators as a work’s author.195

Other commentators have taken the position that authorship and initialownership are to be determined according to the law of the work’s countryof origin rather than the law of the protecting country.196 In the precedingexample, where the United States was the work’s country of origin, this ap-

194. See Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws 36–37 (1978).195. See, e.g., Huston v. La Cinq, Judgments of May 28, 1991, Court of Cassation, May 28,

1991, 149 R.I.D.A. 197, 198 (1991).196. See, e.g., Lionel S. Sobel, Pursuing the Home Court Advantage in International Copy-

right Litigation, 17 Ent. L.R. 3, 13–14 (September 1996); Georges Koumantos, Private Inter-national Law and the Berne Convention, 24 Copyright 415, 423–428 (1988).

proach would require treating corporate employer B, and not the creativeemployee A, as the work’s author and initial copyright owner in all protect-ing countries.197 The U.S. Copyright Act, which is generally silent on thequestion, provides in section 104A, dealing with the question of ownershipof rights in foreign works for which copyright has been restored,198 that “[a]restored work vests initially in the author or initial rightholder of the workas determined by the law of the source country of the work.”199 It is not evi-dent, however, whether the U.S. Congress understood this provision to con-firm, or to be an exception to, the choice of law rule on authorship and ini-tial ownership applicable in the United States.

Another alternative source of rules on questions of authorship and initialownership is the law of the country that has the closest relationship to theauthor and the work. In Itar-Tass Russian News Agency v. Russian KurierInc.,200 involving the unauthorized use in the United States of works createdby Russian nationals and first published in Russia, the U.S. Court of Appealsfor the Second Circuit ruled that, while U.S. law governed issues of infringe-ment and remedies in the United States, “Russian law determines the owner-ship and essential nature of the copyrights alleged to have been infringed.”201

The court rested its conclusion on the “usual rule” that “the interests of theparties in property are determined by the law of the state with the ‘mostsignificant relationship’ to the property and the parties”; since the works werecreated by Russians and first published in Russia, “Russian law is the appro-priate source of law to determine issues of ownership in rights.”202 In manycases, the country with the closest relationship to the author and the workwill be the country of origin.

On balance, the text of the conventions lends greater support to using thelaw of the country of origin or the country of closest relationship to decidequestions of authorship and initial ownership than to using the law of the

197. This in fact was the approach taken by the Paris Court of Appeals in Turner Enter-tainment v. Huston, Court of Appeal, Paris 4th Chamber, July 6, 1989, 143 R.I.D.A. 329, 333–335 (1989).

198. See generally §4.2.2.6, below.199. United States 1976 Copyright Act §104A(b). Section 104A(h) (8) (C) defines the

“source country” of a published work as “(1) the eligible country in which the work is firstpublished, or (ii) if the restored work is published on the same day in 2 or more eligible coun-tries, the eligible country which has the most significant contacts with the work.” Section104A(h) (7) (A) defines a “rightholder” as the person “who, with respect to a sound record-ing, first fixes a sound recording with authorization.”

200. 153 F.3d 82 (2d Cir. 1998).201. 153 F.3d at 84.202. 153 F.3d at 90. See also Scania v. Diesel Technic de L’Ouest, Court of Cassation, April 7,

1998, 177 R.I.D.A. 255, 256 (1998) (upholding the application of Swedish law in determiningownership of copyright when the infringement was of diagrams allegedly owned by a Swed-ish company).



protecting country. To the extent that Article 5(1) of the 1971 Berne ParisAct dealing with national treatment is also a choice of law provision, it selectsthe law of the protecting country to govern only “rights,” not authorship orownership; Article 5(2) similarly centers on questions of rights to the exclu-sion of authorship and ownership. The Universal Copyright Convention, 1971Paris Act, speaks of the enjoyment of “protection,”203 and the TRIPs Agree-ment in Article 4 confines its national treatment obligation to the “protectionof intellectual property.”204 Further, because issues of authorship under theconventions are generally separate from issues of rights, to disconnect thechoice of law for the two issues should cause no undue complications. Anydislocation that might be produced by the one exception, the Berne Conven-tion’s measurement of the standard minimum copyright term by the life of theauthor, is in any event reduced by the presumptive applicability of the rule ofthe shorter term, which pivots on the term fixed in the country of origin.205

Reference to the law of a work’s country of origin for determination of itsauthorship should not offend the national treatment principle if local lawapplies this choice of law rule equally to nationals and nonnationals alike.Further, so long as it is limited to questions of authorship and initial owner-ship, this choice of law rule will not materially affect the economic calculusof national treatment.206 While the decision to extend or withhold a particu-lar exclusive right will affect a country’s balance of copyright trade, the de-cision whether A or B is a work’s author will have no such effect, at least ifmade strictly on the principle of country of origin.

As a practical matter, using the law of the country of origin or the coun-try of closest relationship as the exclusive referent for determining author-ship and initial ownership of a copyrighted work will serve interests in flu-ent international commerce by establishing a single root of title for worldwideexploitation of a copyrighted work—a far better aid to transactional certaintythan a root of title that shifts with the laws of the protecting country inissue.207 From the perspective of transactional certainty, country of origin

203. Universal Copyright Convention, 1971 Paris Text, Art. II.204. TRIPs Agreement Art. 3. Support for reference to the law of the protecting country

on questions of initial ownership, and possibly authorship, may arguably be found in Note 3to Article 3, stating that for “purposes of Articles 3 and 4 . . . protection shall include mat-ters affecting the availability, acquisition, scope, maintenance and enforcement of intellec-tual property rights as well as those matters affecting the use of intellectual property rightsspecifically addressed in this Agreement.”

205. See §5.3.2.1, below.206. See §3.2.1, above.207. However, as the court noted in Itar-Tass, country of origin might “not always be the

appropriate country for purposes of choice of law concerning ownership.” Specifically “[i]ndeciding that the law of the country of origin determines the ownership of copyright, we con-sider only initial ownership, and have no occasion to consider choice of law issues concern-ing assignments of rights.” 153 F.3d at 91 n. 11.

is at least marginally preferable as a choice of law rule to country of closestrelationship, since courts may differ from forum to forum on what countryhas the closest relationship to a work, while “country of origin” is a definedterm with a long history in the Berne Convention.208 Nonetheless, even ref-erence to country of origin may be indeterminate, as in situations where awork is published simultaneously worldwide on the Internet.209

Although it is appropriate for the law of the country of origin, or of thecountry with the closest connection to the author and the work, to con-trol the question of original ownership of economic rights in a work, AndréKerever has argued in a challenging essay210 that if the law of the countryof origin locates moral right in anyone other than the work’s true, flesh-and-blood author, the law of the protecting country should instead be ap-plied for purposes of determining standing to assert moral right.211 Forexample, if in the case of a work originating in the United States and in-fringed in France, the work was created “for hire,”212 the employer and notthe actual author would, for purposes of economic rights in the work inFrance, be treated as the original copyright owner in France.213 However,for purposes of asserting moral rights in the work, France, as the protect-ing country, would give standing only to the actual author and not to theemployer.214 Since Kerever rests his argument on the principle of nationaltreatment,215 it would appear that if France were the country of origin of awork created under conditions approximating those of a work for hire andif the United States were the protecting country, courts in the United Stateswould be at liberty to identify moral right with the employer as the work’sstatutory author, at least in cases where control of moral right is identifiedwith ownership of copyright.

208. Berne Convention, 1971 Paris Text, Art. 5(4).209. See generally Jane Ginsburg, The Private International Law of Copyright in an Era of

Technological Change, 273 Recueil des Cours 243, 268, 349–363 (1998).210. André Kerever, The Rule of “National Treatment” or the Principle of Assimilation,

158 R.I.D.A. 74 (1993).211. Id. at 118–122.212. See §5.2.1.4, below.213. André Kerever, The Rule of “National Treatment” or the Principle of Assimilation,

158 R.I.D.A. 74, 116 (1993).214. Id. at 118. (Moral rights “protection cannot be dissociated from the beneficiary of

that protection. Hence . . . the moral rights prerogatives granted by the law of the countryof protection cannot be accorded to a person other than the actual creator or those whoinherit the creator’s rights. They must be denied to persons deemed to be original copyrightowners by virtue of an employment contract of the ‘work for hire’ type and to contractualassignees.”)

215. Id. at 120. (“In order to grant all the moral and economic rights subject to nationaltreatment, only one option is available, namely to determine the author seeking moral rightsprotection not on the basis of the law of the country of origin but on that of the law of thecountry of protection.”)



b. subject matter and rights

The law of the protecting country will as a rule govern the determinationwhether the subject matter in suit is protected by copyright and what rightsattach to the copyrighted work. For example, if a work created by a nationalof Country A and first published in Country A is used without permission inCountry B, the law of Country B, and not the law of Country A or any othercountry, will control the determination whether the unauthorized use givesrise to copyright liability. If Country A treats sound recordings as copyright-able subject matter and Country B does not, a national of Country A who cre-ated, fixed, and first published a sound recording in Country A will not be en-titled to copyright relief against a pirate who reproduces and distributes thesound recording in Country B. Similarly, if Country A and Country C both treatsound recordings as copyrightable subject matter and grant exclusive repro-duction and distribution rights to them, but Country A also grants a publicperformance right while Country C does not, the national of Country A in thisexample will be entitled to copyright relief in Country C for unauthorized actsof reproduction and distribution, but not for public performance. (The treatiescarve out two exceptions to the general applicability of the law of the protectingcountry on questions of rights. One is the special treatment of droit de suite.216

The other is the treatment of copyright duration under the rule of the shorterterm, which, read literally, calls for application of the protecting country’s termof copyright as reduced by the term prescribed in the country of origin.217)

Considerations of necessity and propriety compel application of the protect-ing country’s law in cases involving subject matter and rights in a way thatthey do not in cases involving authorship and initial ownership. Unlike author-ship and initial ownership, which are mostly untouched by the copyright trea-ties, subject matter and rights are subject to the harmonizing influence ofextensive and detailed treaty norms, and consequently they present a compara-tively limited range for conflicts of laws. Also, within the limits permitted bytreaty norms, respect for national economic decisions supports application ofthe law of the protecting country to questions of subject matter and rights.Unlike questions of authorship and initial ownership, which as a practicalmatter will have only limited impact, if any, on a country’s balance of trade,national rules on subject matter and rights inescapably do. For example, thedecision in many countries to bring sound recordings under neighboring rightsrather than copyright reflects an economic perception, no less than a culturalone, that, as net importers of recorded music, they will fare better keeping these

216. See §5.4.1.1.A(iii), below.217. See §5.3.2, below. Article 7(8) of the 1971 Berne Paris Act provides, “[i]n any case,

the term shall be governed by the legislation of the country where protection is claimed; however,unless the legislation of that country otherwise provides, the term shall not exceed the termfixed in the country of origin of the work” (emphasis supplied).

works outside of copyright. Similarly the decision in some European countriesto treat tape and equipment levies outside of copyright reflects a predominantlyeconomic judgment on copyright balance of trade.

Another reason for applying the law of the protecting country to questionsof subject matter and rights, even in cases of multinational infringement, isthat in those areas where the governing treaty norms permit legal experi-mentation and variety at the national level, the differences permitted areuniquely connected to the cultural and political conditions of the countryunder whose law protection is sought. The fact, for example, that the UnitedStates has a particularly robust and open-ended fair use defense reflects na-tional concerns about the conditions of free speech and press that shouldobtain within the country’s borders; to impose another country’s more lim-ited fair dealing defense to an infringement action arising in the United Statesmight well defeat those interests.

The persistence of the law of the protecting country as the preferred law togovern questions of subject matter and rights will, to be sure, inevitably com-plicate multijurisdictional enforcement of copyrights over digital networks.One solution, with complications of its own, would be to identify the applicablelaw in these situations with a single source country, producing a regime ofwhat Professor Ginsburg has aptly called a “kind of one-stop worldwide rightsclearing.”218 Under the E.C. Satellite Directive, for example, the law of the coun-try from which a signal is uplinked to a satellite, and not the laws of the coun-tries in which the signal is received, controls the question of infringementthroughout the European Union.219 The Satellite Directive is, however, a sub-stantive legal regime agreed upon by E.U. countries and is not a choice of lawrule; the Directive follows the standard precept that the law of the protectingcountry controls the question of infringement and makes its contribution bylocating the single country in which the infringement occurs. The fact thatthe Satellite Directive is a rule of substantive law, not procedural law, onlyunderlines the fact that it will be no easier as a political matter to obtain uni-versal agreement on a new choice of law rule for multijurisdictional infringe-ment than it will be to obtain universal agreement on a substantive normgoverning the question of rights or subject matter in issue.

§3.3.2.2. Law of the Contract as Applicable Law

Choice of law rules governing international copyright contracts aim to reducetransactional uncertainty over the terms on which a work can be exploited by

218. Jane Ginsburg, The Cyberian Captivity of Copyright: Territoriality and Authors’ Rightsin a Networked World, 15 Santa Clara Computer & High Tech. L.J. 347, 358 (1999).

219. See §5.4.1.1.B(iii), below.



tying the contract’s interpretation and enforcement to the law of a single juris-diction. Further, contracting parties can often rely on the expectation that theforum in which their contract is litigated will select the applicable law accord-ing to one of the major, and closely comparable, approaches taken to contractchoice of law around the world.220 The E.C. Convention on the Law Applicableto Contractual Obligations,221 commonly known as the Rome Convention, orRome Contracts Convention, is one important force in harmonizing contractchoice of law methodologies; the American Law Institute’s Restatement of theLaw, Conflict of Laws, Second222 is another. Also, contracting parties can mosteffectively increase their level of transactional certainty by using the contractitself to designate the country whose law is to govern the contract.223

The certainty and uniformity offered by international choice of law rulesfor copyright contracts is not absolute. Although the approaches taken inthe Rome Convention and the Restatement of Conflicts, Second overlap, theyalso diverge on important points. Further, the copyright law of the protect-ing country will sometimes supersede private contract terms. This most com-monly occurs when the copyright law of the protecting country character-izes as inalienable a right that the parties have by contract purported totransfer.224 Even a contract’s fully negotiated and seemingly ironclad gov-erning law clause will not be foolproof, since public policy in the forum mayrequire the forum to substitute its choice of law for the parties’ choice.

At the threshold of any case involving a copyright contract with interna-tional elements is the question of what law the forum should apply in deter-mining whether the contract itself is valid. Not only a contract’s grantingclauses, but also its governing law clause, will be unenforceable if the con-tract does not comply with the applicable statute of frauds or was enteredinto by a party lacking contractual capacity. Under the Rome ContractsConvention, the validity of a contract, or any term in it, will as a rule be de-termined by the same law as would govern the contract if the contract orterm were valid.225 Nonetheless, a party may in appropriate circumstances

220. See §3.3.2.2.B, below.221. O.J. No. L 266/1 (1980).222. American Law Institute, Restatement of the Law, Conflicts of Law, Second (1971).

Although the Restatement of Conflicts, Second is directly concerned with legal relations amongthe states of the United States of America, its principles are intended to apply in internationalsettings as well. Section 10 of the Restatement provides: “The rules in the Restatement of thisSubject apply to cases with elements in one or more States of the United States and are gener-ally applicable to cases with elements in one or more foreign nations. There may, however,be factors in a particular international case which call for a result different from that whichwould be reached in an interstate case.”

223. See §3.3.2.2.A, below.224. See §3.3.2.2.C, below.225. Convention on the Law Applicable to Contractual Obligations, June 19, 1980 (“Rome

Contracts Convention”) Art. 8(1).

rely on the law of the country of his habitual residence to establish his lackof consent.226 Further, a contract is formally valid if it satisfies the formalrequirements of the law applicable to it under the Convention or the law ofthe country, or one of the countries, in which it was concluded.227

Under Article 10 of the Rome Contracts Convention, the law applicable to acontract, by reason either of party choice of law or judicial choice, will governquestions of interpretation,228 performance,229 consequences of breach (in-cluding assessment of damages),230 limitations of actions and extinction ofobligation,231 and consequences of contract nullity.232 The Conflicts Restate-ment makes the law chosen, as a matter of contract by the parties or as a matterof law by the court—govern issues of illegality, misrepresentation, duress,undue influence and mistake,233 construction,234 nature and extent of obliga-tions,235 and measure of recovery;236 “[i]ssues relating to details of performanceof a contract are determined by the local law of the place of performance.”237

226. Rome Contracts Convention Art. 8(2).Under the Conflicts Restatement, capacity is to be determined under the law otherwise

applicable under the Restatement, with the qualification that the “capacity of a party to con-tract will usually be upheld if he has such capacity under the local law of the state of his do-micil.” Restatement of Conflicts, Second §198.

Cf. Bodley Head Ltd. v. Flegon, [1972] R.P.C. 587 (Power of attorney executed in Russia in 1970by Russian author Alexander Solzhenitsyn, authorizing Swiss lawyer to act as author’s literaryagent outside Russia, sufficed as root of title for copyright in Berne Union of novel first publishedin France, notwithstanding claim that author lacked contract capacity, and power of attorneywas invalid, under Russian law; agency was delivered to lawyer in Switzerland by an interme-diary and was governed by Swiss law, consequently conveying necessary contractual capacityto agent.) See also Hermann Luchterhand Verlag GmbH v. Albert Langer-Georg Müller Verlag GmBH,German Federal Supreme Court, April 16, 1975 (Case No. I ZR 40/73) 7 I.I.C. 134 (1976).

227. Rome Contracts Convention Art. 9(1),(2).Under the Conflicts Restatement, the formalities essential to a valid contract are determined

by the law otherwise applicable under the Restatement; “[f]ormalities which meet the require-ments of the place where the parties execute the contract will usually be acceptable.” Restate-ment of Conflicts, Second §199.

228. Rome Contracts Convention Art. 10(1)(a).229. Rome Contracts Convention Art. 10(1)(b). Article 10(2) provides, “In relation to the

manner of performance and the steps to be taken in the event of defective performance re-gard shall be had to the law of the country in which performance takes place.”

230. Rome Contracts Convention Art. 10(1) (c) (“. . . within the limits of the powers con-ferred on the court by its procedural law, the consequence of breach, including the assess-ment of damages in so far as it is governed by rules of law”).

231. Rome Contracts Convention Art. 10(1) (d).232. Rome Contracts Convention Art. 10(1) (e).233. Restatement of Conflicts, Second §§201,202. Section 202(2) adds, “When perfor-

mance is illegal in the place of performance, the contract will usually be denied enforcement.”234. Restatement of Conflicts, Second §204.235. Restatement of Conflicts, Second §205.236. Restatement of Conflicts, Second §207.237. Restatement of Conflicts, Second §206.



a. when parties have designated applicable law

Contracting parties are usually free to choose the law that will govern theircontract. In the European Community, the Rome Contracts Convention pro-vides that parties can select the law applicable to all or part of their contract;the choice may be express or implied so long as it is “demonstrated with rea-sonable certainty by the terms of the contract or the circumstances of thecase.”238 One example of choice by implication is where the parties, in theirprior dealings, regularly stipulated the governing law but failed to do so inthe contract in dispute; the court could in this situation select the law regu-larly chosen by the parties if the circumstances indicate no intention to de-part from it. If the contract specifies a particular forum or place for arbitra-tion, the court could choose the law of that place if it is reasonable in thecircumstances.239

In the United States, the Restatement of Conflicts, Second provides that“[t]he law of the state chosen by the parties to govern their contractual rightsand duties will be applied if the particular issue is one which the parties couldhave resolved by an explicit provision in their agreement directed to thatissue.”240 As under the Rome Convention, the choice may be implied as wellas express and partial as well as complete.241 Japanese law also allows con-tracting parties expressly or impliedly to designate the law that will governtheir copyright contracts.242

Both the Rome Convention and the Restatement of Conflicts, Second im-pose limitations on party autonomy in selecting applicable law. Article 3(3)of the Rome Convention effectively provides that if a contract’s relevant ele-ments are rooted in some country other than the country designated in thechoice of law clause, the “mandatory rules” of that country will supersedethe law selected by the parties. The Convention defines mandatory rules asrules “which cannot be derogated from by contract.” Antitrust laws are a

238. Rome Contracts Convention Art. 3(1). According to Mario Giuliano & Paul Lagarde,Report on the Convention on the Law Applicable to Contractual Obligations, in Contract Con-flicts: The E.E.C. Convention on the Law Applicable to Contractual Obligations: A ComparativeStudy 355, 369 (P. M. North ed. 1982), the rule restates the law then existing in E.C. Mem-ber States.

239. Mario Giuliano & Paul Lagarde, Report on the Convention on the Law Applicable toContractual Obligations, in Contract Conflicts: The E.E.C. Convention on the Law Applicable toContractual Obligation: A Comparative Study 355, 371 (P. M. North ed. 1982).

240. Restatement of Conflicts, Second §187.241. Restatement of Conflicts, Second, Comment a to §187 (1988 Revision); Restatement

of Conflicts, Second, Comment i to §187 (1988 Revision).242. Law No. 10 of June 21, 1898, as amended by Law No. 7 of 1942, Law No. 223 of 1947,

Law No. 100 of 1964, and Law No. 27 of 1989 Art. 7(1), translated in Zentaro Kitagawa, DoingBusiness in Japan, Statute Volume, Appendix 3B (1995). See generally Karen Denise Untiedt,International Contracts under the Conflict of Laws Rules of Great Britain and Japan, 7 Loy.L.A. Int’l & Comp. L.J. 193, 193 (1984).

common example.243 Under Rome Convention Article 7(1), a court may,when applying the contractually designated law of one country, give effect“to the mandatory rules of the law of another country with which the situ-ation has a close connection, if and in so far as, under the laws of the lattercountry, those rules must be applied whatever the law applicable to the con-tract.”244 Article 7(2) allows the law of the forum to be applied in situationswhere the rules “are mandatory irrespective of the law otherwise applicableto the contract,” and Article 16 provides that application of the law of anycountry specified by the Convention—whether chosen by the parties, cho-sen by the court, or dictated as a mandatory rule—“may be refused only ifsuch application is manifestly incompatible with the public policy (‘ordrepublic’) of the forum.”245

The Restatement of Conflicts, Second requires respect for party choice of lawunless either of two conditions obtains: the state whose law is chosen “has nosubstantial relationship to the parties or the transaction and there is no otherreasonable basis for the parties’ choice”; or applying the chosen law wouldcontradict “a fundamental policy of a state which has a materially greaterinterest than the chosen state in the determination of the particular issue” andwhose law would govern in the absence of the governing law clause.246

Japanese law similarly provides that otherwise applicable law will not controlif it is contrary to the “public order and good morals” of Japan.247

243. See generally Friedrich-Karl Beier, Conflict of Law Problems of Trademark LicenseAgreements, 13 I.I.C. 162, 167–69 (1982); Paul Torremans, Choice-of-Law Problems in In-ternational Industrial Property Licenses, 25 I.I.C. 390, 393–394 (1994).

Several countries, including Germany and the United Kingdom, have made a reservationfor Art. 7(1) in their ratification of the Rome Convention, with the consequence that theircourts are not bound by foreign mandatory rules. See Mathias Reimann, Conflict of Laws inWestern Europe: A Guide Through the Jungle 29 n. 90 (1995); Christopher Wadlow, Enforcementof Intellectual Property in European and International Law 453 (1998).

244. “‘In considering whether to give effect to these mandatory rules, regard shall be hadto their nature and purpose, and to the consequences of their application or non-application.’”Mathias Reimann, Conflict of Laws in Western Europe: A Guide Through the Jungle 29 (1995)(quoting the Rome Contracts Convention).

See generally Allan Philip, Mandatory Rules, Public Law (Political Rules) and Choice of Lawin the E.E.C. Convention on the Law Applicable to Contractual Obligations, in Contract Con-flicts: The E.E.C. Convention on the Law Applicable to Contractual Obligations: A Comparative Study81 (P. M. North ed. 1982).

245. See generally Christopher Wadlow, Enforcement of Intellectual Property in European andInternational Law 463–470 (1978); Mario Giuliano & Paul Lagarde, Report on the Conven-tion on the Law Applicable to Contractual Obligations, in Contract Conflicts: The E.E.C. Con-vention on the Law Applicable to Contractual Obligations: A Comparative Study 355, 392 (1982).

246. Restatement of Conflicts, Second §187 (1988 Revision).247. Law No. 10 of June 21, 1898 Art. 33, translated in Zentaro Kitagawa, Doing Business

in Japan, Statute Volume, Appendix 3B (1995). See generally Karen Denise Untiedt, Interna-tional Contracts Under the Conflict of Law Rules of Great Britain and Japan, 7 Loy. L.A. Int’l &Comp. L.J. 193 (1984).



b. when parties have not designatedapplicable law

Where for one or another reason the parties to an international copyrightagreement fail to include a governing law clause in the contract, courts willapply one or more factors of varying degrees of precision to determine whatcountry’s law to apply to the agreement. Where the omission was an evi-dent oversight, courts will, if the facts allow, imply the presumably intendedchoice of law into the agreement. Where, however, the omission was inten-tional, courts will commonly weigh generalized interests in contract cer-tainty against particularized party interests of efficiency and equity. Althoughjudicial choice of law in these circumstances will be constrained by most ofthe same public policy limitations as constrain party choice of law, publicpolicy considerations will as a practical matter frequently influence the choiceof law itself.

In the absence of choice of law by the parties, a contract will under Article 4of the Rome Convention be governed by the law of the country with whichthe contract “is most closely connected.”248 Subject to exceptions, none ofwhich will affect the usual copyright contract,249 Article 4(2) creates a pre-sumption that the contract is most closely connected with the country that isthe habitual residence or corporate seat of the party “who is to effect the per-formance which is characteristic of the contract.”250 Article 4(5) provides thatthis presumption will not apply if the “characteristic performance” cannot bedetermined, and will be disregarded “if it appears from the circumstances as awhole that the contract is more closely connected with another country.”251

In the case of a relatively simple contract transferring a copyright interestin return for payment of a lump sum or an ongoing obligation to pay royal-ties, it is the act of transferring the copyright interest that constitutes thecontract’s characteristic performance, so that the applicable law is the lawof the country where the copyright owner resides or has its central businessoffices.252 For example, if an author who habitually resides in Italy assigns

248. Rome Contracts Convention Art 4(1). “Nevertheless, a severable part of the contractwhich has a closer connection with another country may by way of exception be governedby the law of that other country.” Id.

249. Article 4(3) of the Rome Contracts Convention alters the presumption in the case ofcontracts respecting immovable property, a concept that presumably includes real propertybut not intellectual property. See Christopher Wadlow, Intellectual Property and the RomeContracts Convention, 19 E.I.P.R. 11, 14 (1997).

See also Rome Contracts Convention Arts. 5 (“Certain Consumer Contracts”), 6 (“IndividualEmployment Contracts”).

250. Rome Contracts Convention Art. 4(2).251. Rome Contracts Convention Art. 4(5).252. See Christopher Wadlow, Enforcement of Intellectual Property in European and Interna-

tional Law 431 (1998). See also Mario Giuliano & Paul Lagarde, Report on the Convention on

his copyright to a licensing agent situated in Germany, Italian law will gov-ern the contract in any action in a forum subject to the Rome Convention.

Commentators generally agree that in the more complex, and far morecommon, international copyright arrangement, where the licensee under-takes not only to pay royalties but also affirmatively to exploit the copyrightedwork, the contract’s characteristic performance will usually be identifiedwith the licensee.253 For example, if an Italian resident assigns the exclusiveright to publish his novel in Austria to a publisher having its central busi-ness establishment in Germany, German law will in all likelihood control thecontract. The rationale for this conclusion is evidently that since the licenseeis investing its labor and capital in exploiting the copyright, and since thecontract’s economic success, for the author as well as the publisher, willdepend on this investment, it is the investment rather than the assignmentthat constitutes the characteristic performance.

The fact that investment in a work’s exploitation constitutes its “charac-teristic performance” does not necessarily mean that the law of the licensee’shabitual residence or seat of business will control in every case. Rome Con-vention Article 4(2) erects only a presumption which, under Article 4(5),“shall be disregarded if it appears from the circumstances as a whole that thecontract is more closely connected with another country.” In the case of atleast some complex copyright contracts, the country with the closest con-nection will be the country where the work is actually exploited—for copy-right purposes, the protecting country. As a factual matter, the protectingcountry will also in many cases be the licensee’s habitual residence or seatof business.

The disadvantage of relying on the licensor’s residence or headquartersin some cases and the licensee’s in others is that it will not always be clearwhich choice a court will make. The virtue of applying the law of the licen-sor’s or licensee’s residence or headquarters is that, once the choice is made,a uniform set of contract rules will apply wherever the work is exploitedand in whatever forum the contract is litigated. At the same time, the vir-tue of uniformity in these cases should not be overstated, since it is a vir-tue that the parties, through oversight or premeditation, forfeited whenthey failed to include a governing law clause in their agreement. This fact,

the Law Applicable to Contractual Obligations, in Contract Conflicts: The E.E.C. Convention onthe Law Applicable to Contractual Obligations: A Comparative Study 355, 374 (P. M. North ed.1982) (characteristic performance is not the remittance of money but “the granting of theright to make use of an item of property”).

253. See Christopher Wadlow, Enforcement of Intellectual Property 432 (1998); Eugen Ulmer,Intellectual Property Rights and the Conflict of Laws 94, ¶147 (1978); Michael M. Walter,Contractual Freedom in the Field of Copyright and Conflicts of Laws, 87 R.I.D.A. 44, 62–64(1976). See also Giovanna Modiano, International Patent Licensing Agreements and Conflictof Laws, 2 NW. J. Int’l L. & Bus. 11, 26 (1980).



together with considerations of judicial economy and predictability of out-come, may well argue for applying the law of the protecting country inthese circumstances.

Contract choice of law in the United States under the Restatement of Con-flicts, Second is more open-ended than contract choice of law under the RomeConvention. Section 188(1) of the Conflicts Restatement treats the law of thestate that has “the most significant relationship to the transaction and theparties” as the law of the contract.254 In determining what state possessesthis “most significant relationship,” a court is to evaluate at least five con-tracts “according to their relative importance with respect to the particularissue”: “(a) the place of contracting, (b) the place of negotiation of the con-tract, (c) the place of performance, (d) the location of the subject matter ofthe contract, and (e) the domicil, residence, nationality, place of incorpora-tion and place of business of the parties.”255

As a rule under the Restatement, if the state in which the contract is ne-gotiated and the state in which it is performed are the same, that state’s lawwill usually control.256 For example, if a novelist residing in Italy negotiatedin Austria with a German-based publisher for the publication of a transla-tion in Austria, Austrian law would, in the absence of a governing law clause,probably govern the publication contract under the principles of the Restate-ment. This result contrasts with the result that would obtain under Article 8(2)of the Rome Convention, which would have Italian law (as the law of thelicensor’s residence) or German law (the publisher’s seat of business), but notAustrian law, control.

Application of the five Restatement factors to an international copyrightcontract calling for something more than a lump sum payment by the li-censee will in many if not most cases lead to choice of the protecting country’slaw to govern the contract. According to comments to the Restatement, the

254. Restatement of Conflicts, Second §188(1) refers to “the principles stated in §6” as gov-erning this determination. Section 6 provides:

(1) A court, subject to constitutional restrictions, will follow a statutory directive of itsown state on choice of law.

(2) When there is no such directive, the factors relevant to the choice of the applicablerule of law include(a) the needs of the interstate and international systems,(b) the relevant policies of the forum,(c) the relevant policies of other interested states and the relative interests of those

states in the determination of the particular issue,(d) the protection of justified expectations,(e) the basic policies underlying the particular field of law,(f) certainty, predictability and uniformity of result, and(g) ease in the determination and application of the law to be applied.

255. Restatement of Conflicts, Second §188(2).256. Restatement of Conflicts, Second §188(3).

place of contracting is a “relatively insignificant contact.”257 Place of negotia-tion, though significant in some cases, is less important where negotiationsare not conducted face to face258—a frequent phenomenon in internationalcopyright contracts. The location of the contract subject matter is irrelevantto copyright, which, as an intangible right, has no situs; and location of theparties, while particularly material to personal issues such as capacity, willgenerally be important only in combination with other contracts.259 Place ofperformance, the remaining factor, is also the most salient of the five factorsfor copyright contracts. Of the two possible facts that can reduce its impor-tance—that the place of performance is unknown at the time of contractingor that it consists of more than one state260—the first is irrelevant to copyrightcontracts, where the location of performance will invariably be known, andthe second will be material only in multijurisdictional licenses. Further, un-der section 206 of the Restatement, “[i]ssues relating to details of performanceof a contract are determined by the local law of the place of performance.”

c. where the law of the protecting country andthe law of the contract conflict

Conflicts will sometimes arise between the law governing a contract for ex-ploitation of a copyrighted work and the law of the protecting country thatwould apply in the absence of a contract. Contract law in Country A maypermit copyrights to be freely transferred while copyright law in Country Bcharacterizes a particular right in the copyright bundle of rights as inalien-able. If the contract designates Country A’s contract law to govern the termsof the contract, and a dispute arises over the licensee’s exploitation of the rightin Country B, a conflict will exist between Country A’s contract rule of freealienability and Country B’s copyright rule of inalienability. Because it pitsinterests in contractual freedom and fluent commerce against entrenchedcultural convictions and authorial autonomy, the conflict is one of the mostvexed in the private international law of copyright. These conflicts are ana-lytically distinct from, but often overlap, the conflict that arises in privateinternational law generally when the law of the contract conflicts with thepublic policy of the forum in which the dispute is being heard.261

257. Restatement of Conflicts, Second, Comment on §188(2).258. Restatement of Conflicts, Second, Comment on §188(2).259. Restatement of Conflicts, Second, Comment on §188(2).260. Restatement of Conflicts, Second, Comment on §188(2).261. In most copyright contract cases, the forum country and the protecting country will

be the same, and the specific restrictions imposed by the country’s copyright law may alsoreflect the forum’s public policy. Cases may arise, however, in which Country A provides thelaw of the contract; Country B, as the protecting country, provides the relevant copyright rules,and Country C, the forum in which the action is brought, must weigh not only the conflictbetween the law of Countries A and B, but also its own public policies.



Conflicts between contract law and copyright law typically involve ques-tions over the assignment of rights, and the prevailing approach to theseconflicts usually makes copyright rules prevail over contract rules. Profes-sor Ulmer captured the prevailing approach in his observation that “[t]hequestions involved are those which—like the question of assignability—con-cern the legal nature of the right as imprinted by the law of the protectingcountry.”262 In Michael Walter’s phrase, “the transferability of the copyrightis part of its content, which is supposed to be governed according to locallaw.”263 Moral right, usually inalienable under local law,264 is one exampleof a right “imprinted by the law of the protecting country.” Another exampleis the right to exploit literary and artistic works in unknown future technolo-gies, made inalienable under Article 31(4) of the German Copyright Act.265

The prevailing approach to copyright–contract conflicts, when taken to-gether with the treaty requirement of national treatment, ensures that for-eign copyright owners, no less than domestic copyright owners, will enjoythe benefits of the copyright rule over any conflicting contract provisions.“If copyright claimants are to enjoy full national rights in a country, theyshould have all national rules applied in their favor which these rights, bynature or definition, necessitate applying.”266

Campbell Connelly & Co. Ltd. v. Noble267 is the leading case on the method-ology for sorting out contract rules from rules essential to the definition ofrights under the law of the protecting country. The contract in issue, bywhich defendant composer assigned to plaintiff publisher “‘the full copyrightfor all countries’” in his musical composition, was, the court stated, “a purelyEnglish contract and must plainly be interpreted according to English law.”268

The harder question for the court was whether this language was effectiveto convey the U.S. renewal rights to the composition.

To answer the question, the court in Campbell Connelly first referred toU.S. law for characterization of the “precise nature” of the right in issue andto determine whether, and under what circumstances, the renewal rightcould be assigned under U.S. law. Concluding that the renewal right was as-signable in the circumstances,269 the court next looked to English law to de-

262. Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws 46 (1978).263. Michael M. Walter, Contractual Freedom in the Field of Copyright and Conflicts of

Laws, 87 R.I.D.A. 44, 70 (1976).264. See §5.4.2, below.265. See §5.2.2.1, above. See also Eugen Ulmer, Intellectual Property Rights and the Conflict

of Laws 46 (1978).266. Paul Edward Geller, Harmonizing Copyright-Contract Conflicts Analyses, 25 Copy-

right 49, 54 (1989).267. 1 W.L.R. 252 (1963).268. 1 W.L.R. at 254 (1963).269. 1 W.L.R. at 257–258 (1963).

termine whether the “purely English contract” did in fact assign the Ameri-can renewal rights. The court held that, under English rules of construction,the contract did convey the renewal right.270

A French case, Huston v. La Cinq,271 provides a somewhat less explicit in-stance of the resolution of copyright–contract conflicts. Was authorship ofthe black-and-white film Asphalt Jungle, and the contract by which writer-director John Huston assigned his worldwide rights in the film to defendant’spredecessor, to be construed according to U.S. law, so that defendant’s licen-sor, Turner, owned the rights and was free to colorize the film? Or did thelegal definition of “author” in France and the inalienability of moral rightunder French law make American law irrelevant to the dispute in Frenchcourts, giving Huston’s heirs, and his co-writer, Ben Maddow, standing tosue for violation of their right to the work’s integrity?

The Paris Court of Appeal ruled for defendant, holding that authorship andownership were to be determined under the law of the United States as thework’s country of origin, a choice of law decision that “compels denying theparties Huston and Maddow any possibility of asserting their moral rights.”272

In a terse opinion, the Court of Cassation set aside the Court of Appeals deci-sion, attaching no weight to the possible applicability of U.S. law and focus-ing instead on the essential nature of moral right and authorship underFrench law.273

The Court of Cassation relied on Article 6 of the French Copyright Act, theLaw of March 11, 1957, which makes moral rights inalienable.274 As Pro-fessors Ginsburg and Sirinelli have observed, the court held that “French law

270. 1 W.L.R. at 261–262 (1963). Compare Corcovado Music Corp. v. Hollis Music, Inc. 981F.2d 679, 685 (2d Cir. 1993), where the court rejected the argument that a contract betweena Brazilian composer and a Brazilian publisher should be interpreted according to Brazilianlaw, which had been designated by the contract’s governing law clause. The court distin-guished Campbell Connelly on its facts and, more important, concluded that the English deci-sion “could not be applied here to preclude the use of United States law. Factors arguing forthe application of United States law include the following: United States renewal copyrightsreflect a vital policy of United States copyright law; the forum in which the . . . contracts areto be construed is in the United States . . . and the place of performance of the contracts is alsothe United States. Under these circumstances, we believe that United States law is applicable.”

271. Consorts Huston et. autres v. Sté Turner Entertainment, Court of Cassation 1st Civ. Cham-ber, May 28, 1991, 149 R.I.D.A. 197 (1991).

272. Turner Entertainment v. Huston, Court of Appeal, Paris 4th Chamber, July 6, 1989, 143R.I.D.A. 329, 335 (1989) (“et par conséquent conduisaint à dénier aux consorts Huston-Maddowtoute possibilité de se preévaloir d’un droit moral.”) (emphasis the court’s).

273. 149 R.I.D.A. at 198 (1991) Since, as one commentator observed, France grants for-eign authors moral rights under its domestic law, “the Huston heirs did not need the BerneConvention, or any other treaty, to support their proposed choice of France law to govern theirsuit.” Paul Edward Geller, French High Court Remands Huston Colorization Case, 13 Ent.L. R. 3, 4 (August 1991).

274. 149 R.I.D.A. at 197–198.



directly governs all questions of authors’ rights of integrity and attribution,without inquiry into the legislative competence of foreign laws that hadsignificant points of attachment to the litigation. The Court has thus stressedthe international applicability of the French concepts of authorship and ofthese moral rights, whatever the country of the work’s origin, the national-ity or domicile of the work’s creators, or the law governing the contract be-tween creators and grantees.”275

As a third example, under the approach elaborated in the Campbell Connellyand Huston cases, an author who assigns the worldwide copyright in his workfor the full term of copyright would nonetheless, under the U.S. CopyrightAct’s termination of transfer provisions,276 be entitled to terminate his trans-fer of rights to the U.S. territory thirty-five years after the contract’s execu-tion. Since the 1976 Copyright Act makes the statutory right to terminatetransfers inalienable and nonwaivable, and thus an intrinsic part of the ex-ploitation right under U.S. law,277 contract language that purported to over-ride the statutory termination of transfer would be of no effect, regardless ofthe law governing the contract. The contract’s conveyance of the full copy-right term would, however, be fully enforceable under the law of any otherprotecting country, except those that may otherwise restrict alienability ofthe right in issue.

As in the Campbell Connelly and Huston cases, copyright contract termsmost commonly come into conflict with rights “imprinted by the law of theprotecting country.” However, Professor Ulmer identified as another mat-ter reserved to the law of the protecting country “whether, and under whatconditions, an assignment or grant is effective as against a third party whoclaims rights by reason of a subsequent assignment or grant from the au-thor of the work or his successor in interest.”278

Local recording systems, where they exist, effectively establish prioritiesbetween competing transfers of the same copyright interest, giving interestholders from around the world a single place in each country in which tosearch title, register and establish their rights with respect to that country.Even where recording systems do not exist, local statutory rules may estab-lish priorities. At least two considerations explain the primacy that thesesystems and rules under the law of the protecting country receive over con-

275. Jane C. Ginsburg & Pierre Sirinelli, Authors and Exploitation in International PrivateLaw: The French Supreme Court and the Huston Film Colorization Controversy, 15 Colum.-VLA J.L. & Arts 135, 137 (1991). See also Bernard Edelman, Applicable Legislation RegardingExploitation of Colourized U.S. Films in France: The “John Huston” Case, 23 I.I.C. 629, 641(1992).

276. United States, 1976 Copyright Act §203.277. See Paul Edward Geller, Harmonizing Copyright-Contract Conflicts Analysis, 25 Copy-

right 49, 55 (1989).278. Eugen Ulmer, Intellectual Property Rights and the Conflict of Laws 47 (1978).

flicting contract terms. One is deference to local judgments on the efficientoperation of a title priority system. Second, in the absence of universal treatyarrangements governing priorities, a rule that the law of the protecting coun-try governs priorities in that country will provide interest holders and po-tential interest holders with the certainty they need in concluding copyrighttransactions. The alternative—allowing a private contract or the law ofanother country to determine whether one or another claimant from thesame source holds title in the protecting country—would seriously destabi-lize copyright titles.


part two

Protection of Foreign Works

Under Domestic Law

§4

protectibility of foreign

works

123

As a rule, a country’s obligation to protect foreign works—a work by a for-eign national, for example, or a work first published in another country—will turn on the terms of its copyright relations with the country in whichthe work originated. Only rarely, and selectively, will a country extend copy-right or neighboring rights protection to a foreign work in the absence ofsome general or reciprocal treaty relationship with the work’s country oforigin. One example is the unconditional and universal extension, as in Franceand Germany, of protection for at least some of an author’s moral rights.1

Another is the U.S. Copyright Act’s protection of unpublished works with-out regard to the author’s nationality.2

The first step in determining whether, and to what extent, a work will beprotected in a particular country is to determine the requirements that thecountry’s legislation imposes as a condition to protection and, if the governingtreaty is self-executing, to determine the requirements imposed by the treaty.If the work in question was created or published before the effective date of theapplicable legislation or treaty, it will often be necessary to inquire as well intothe requirements for protection imposed by statute or treaty at the earlier time.3

1. See France, Intellectual Property Code Art. L 111-4 (rights of attribution and integrity);Germany, Copyright Act Art. 121(6) (rights of attribution, integrity, and disclosure).

2. 1976 U.S. Copyright Act §104(a).3. On the methodology to be employed in these cases, see §4.1.1.4, below.

124 Protectibility of Foreign Works

§4.1PROTECTIBILITY OF U.S. WORKS IN OTHER COUNTRIES

Four questions face a U.S. copyright owner that plans to exploit a work throughlicensing or enforcement in another country, commonly called the “protect-ing country.”4 First, the U.S. copyright owner must determine whether it willqualify as the owner of rights in the work under the law of the protectingcountry. Applicable choice of law rules in some fora will designate the lawof the protecting country, and not the law of the United States, as control-ling on the question of ownership, and that law may identify someone otherthan the U.S. owner as the work’s copyright owner.5

Second, the U.S. copyright owner must determine into what subject mat-ter class the work falls—is it a musical work, say, or a sound recording—and whether the protecting country extends protection to works of this classthat originate outside its borders.6 As a rule, this inquiry entails a determi-nation whether the protecting country has adhered to a treaty and, if neces-sary, has enacted legislation7 requiring it to protect this class of works and,if so, whether under the terms of the treaty a point of attachment exists toconnect the work to the protecting country.8 Third, the U.S. copyright ownershould determine the scope of its rights under foreign law,9 and fourth, itmust determine when the term of protection for those rights expires.10

These four questions intersect in more or less obvious ways. A negativeanswer to the first question will obviate inquiry into the remaining three; anegative answer to the second question will obviate inquiry into the last two;and a negative answer to the third will obviate inquiry into the fourth. Also,the fact that the U.S. work falls into one class rather than another in theprotecting country will in some cases control whether a point of attachment

4. The reference here to a work or production as having been created by a U.S. national,or as being a “U.S. work,” is strictly for convenience and does not necessarily imply that theUnited States is the work’s “country of origin,” a designation that has specialized meaningand consequence in intellectual property treaties. See §5.3.2, below.

5. The methodology for determining applicable law is discussed at §§3.3.2.1.A, above.6. See §5.1, below.7. Many countries, principally those following the civil law tradition, treat the Berne Con-

vention and other intellectual property treaties as self-executing. A foreign claimant can inthese countries determine whether it is entitled to protection simply by first consulting thetext of relevant treaty. By contrast, in countries following the British and Scandinavian con-stitutional traditions, where the applicable treaty is not self-executing and consequently hasno independent force, the claimant must consult the local implementing legislation and regu-lations. See Paul Edward Geller, Copyright Protection in the Berne Convention: Analyzing theIssues, 5 Int. Prop. J. 5–7 347 (1989).

8. See §4.1.1, below.9. See §5.4, below.10. See §5.3, below.

§4.1. Protectibility of U.S. Works 125

exists entitling the work to protection. It may also control the rights that theprotecting country will grant. For example, a sound recording produced andprotected in the United States as a copyrighted work will in many other coun-tries be viewed as neither a literary nor an artistic work and so will be pro-tected only under neighboring rights doctrine. As a consequence, the exist-ence of a point of attachment in any of these countries will turn not on oneof the copyright treaties—the Berne Convention or the Universal CopyrightConvention—but on one or more neighboring rights treaties—the RomeConvention for the Protection of Performers, Producers of Phonograms andBroadcasting Organizations,11 the Geneva Phonograms Convention,12 or theWIPO Performances and Phonograms Treaty13 —that prescribe differentminimum rights for phonograms.

Protection abroad for creative products originating in the United Statesdivides between treaty obligations respecting copyright and treaty obliga-tions respecting neighboring rights. The principal copyright conventions towhich the United States is a party are the Berne Convention for the Protec-tion of Literary and Artistic Works14 and the Universal Copyright Conven-tion.15 Regional Inter-American and bilateral treaties supplement thesemultilateral treaties.16 The United States has also adhered to the GenevaPhonograms Convention17 and is a signatory to the WIPO Copyright Treaty18

and the WIPO Performances and Phonograms Treaty.19 Productions createdby U.S. nationals may in prescribed circumstances obtain protection underthe principal neighboring rights treaty, the Convention for the Protection ofPerformers, Producers of Phonogram and Broadcasting Organizations, com-monly known as the Rome Convention.20 Membership in the World TradeOrganization has also tied the United States to copyright and neighboringrights protection around the world.21

11. See §2.2.1, above.12. See §2.2.2, above.13. See §2.2.3, above.14. See §2.1.2.1, above.15. See §2.1.2.2, above.16. See §§2.1.1, 2.1.3.1, above.17. See §2.2.2, above.18. See §2.1.2.3, above.19. See §2.2.3, above.20. See §2.2.1, above.21. See §2.3.2, above.On March 7, 1985, the United States adhered to the Convention Relating to the Distribu-

tion of Programme-Carrying Signals Transmitted by Satellite (Brussels, 1974), commonlycalled the Brussels Satellite Convention. The Convention, which aims to curb the unautho-rized appropriation and distribution of programs transmitted by communications space sat-ellites, covers transmissions made through point-to-point satellites and distribution satel-lites that transmit signals to earth stations for subsequent retransmission, such as by cable


§4.1.1. Copyright

The 1971 Paris Text of the Berne Convention for the Protection of Literaryand Artistic Works, to which the United States adhered on March 1, 1989, istoday the principal vehicle for copyright protection of U.S. works abroad.Nonetheless, the bilateral and regional treaties that defined the country’searly copyright relations have more than historical significance, as does theUniversal Copyright Convention, the only truly multilateral convention towhich the United States adhered before Berne. The current status abroad ofthe many U.S. works that were published before March 1, 1989, can oftenbe resolved only through a careful archeological dig that moves backwardin time from the present, through the earlier layers of treaty relations formedby the U.C.C., by the bilateral treaties, and sometimes by earlier texts of theBerne Convention.22


The Berne Convention for the Protection of Literary and Artistic Works ex-ists in several texts, starting with the 1886 Berne Act, followed by succes-sive revisions in 1908 (Berlin), 1928 (Rome), 1948 (Brussels), and most re-cently, 1971 (Paris), the first Berne text to which the United States adhered.23

As a rule, each successive revision of the Berne treaty has increased theConvention’s minimum standards for protection, requiring stronger rights,reduced formalities, or a more commodious definition of protected subjectmatter. Because not all Berne Union countries have adhered to the 1971 ParisText or even to the 1948 Brussels Text, a question will sometimes arise about

distribution systems. The Convention does not cover transmissions made by broadcasting sat-ellites directly to home receiving sets or community antennas.

The Brussels Satellite Convention differs from traditional copyright treaties in two majorrespects. First, the Convention aims at protecting signals and not the particular content ofsignals. Thus a satellite transmission will be protected under the Convention even though itscontents are unprotected by copyright. Second, the Convention neither creates nor presup-poses private rights in the protected signals. Rather, it requires each contracting state “to takeadequate measures to prevent the distribution on or from its territory of any programme-carrying signal by any distributor for whom the signal emitted to or passing through the sat-ellite is not intended.” Brussels Satellite Convention, Art. 2(1).

22. On the interrelationship between protection under the Berne and Universal CopyrightConventions and the bilateral treaties, see §4.1.1.4, above.

23. The 1967 Stockholm Revision Conference produced a Stockholm Act which was rati-fied in part by thirty-nine countries. The 1971 Paris Revision Conference, convened to cor-rect problems in the Stockholm Act, produced the 1971 Paris Text. See §2.1.2.1, above. Seegenerally Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:1886–1986 124–125 (1987).


the extent of protection that a work coming from the United States, whichhas adhered only to the Paris Text, will enjoy in these countries.24 Since,however, the TRIPs Agreement imposes the Paris Text’s minimum standardson all World Trade Organization members, these asymmetries in protectionwill disappear over time as WTO membership increasingly coincides withmembership in the Berne Union.

Once a U.S. claimant determines which Berne act applies to its work in thecountry where it seeks protection, it must next determine whether the workcomes within the scope of that act25 and, if it does, whether the work pos-sesses a point of attachment prescribed by the act.26 The question whether awork falls within the scope of the applicable Berne act divides into two morespecific questions: whether the work comes within a class of subject matterfor which the act prescribes protection,27 and whether the applicable termof protection has lapsed.28 The question whether the work has a qualifyingpoint of attachment will in most cases be controlled by the nationality of thework’s author or the place of the work’s first publication.29

a. does the work come within the scope of therelevant berne text?

(i) Subject Matter Scope. The Paris Text of the Berne Convention states inArticle 1 that “[t]he countries to which this Convention applies constitute aUnion for the protection of the rights of authors in their literary and artisticworks.” Article 2(1) defines “literary and artistic works” to include “everyproduction in the literary, scientific and artistic domain, whatever may bethe mode or form of its expression”30 and concludes with a lengthy list ofexamples, from “books” to “three-dimensional works relative to geography,topography, architecture or science.”31 Article 2(2) leaves it to Union mem-bers to decide for themselves whether “works in general or any specifiedcategories of works shall not be protected unless they have been fixed in somematerial form.” Article 2(8) declares categorically that “[t]he protection ofthis Convention shall not apply to news of the day or to miscellaneous factshaving the character of mere items of press information.”

24. See §4.1.1.4, above.25. See §4.1.1.1.A, below.26. See §4.1.1.1.B, below.27. See §4.1.1.1.A(i), below.28. See §4.1.1.1.A(ii), below.29. See §4.1.1.1.B(i) and (ii), below.30. For a more detailed analysis of Berne Convention subject matter, see §5.1.1.1, below.31. Article 2(3) of the Berne 1971 Paris Text provides that “[t]ranslations, adaptations,

arrangements of music and other alterations of a literary or artistic work shall be protectedas original works without prejudice to the copyright in the original work.”


Article 2’s scope, though broad, is not exhaustive, and U.S. authors accus-tomed to the 1976 U.S. Copyright Act’s generous construction of the term“writings of authors” will find not only that many countries define the pro-tectible classes of subject matter more sparingly, but also that the BerneConvention fully sanctions their parsimony. Sound recordings, for example,though expressly protected as copyrightable works under the 1976 U.S. Copy-right Act, appear nowhere in Article 2(1)’s listing of examples, a fact that ismirrored in much of the world by the practice of protecting sound record-ings under neighboring rights rather than author’s right or copyright.32

ii. Temporal Scope. In time, all U.S. works for which protection is soughtabroad will have been created after March 1, 1989, when the United Statesadhered to the Berne Convention, and little complexity will attend the ques-tion of a work’s entitlement to, or term of, protection. At least in the nearterm, however, many of the U.S. works for which foreign protection is soughtwill have been created before March 1, 1989. Some of these preadherenceworks have been protected in Berne Union countries from the start becausetheir copyright owner took care to arrange for their first or simultaneouspublication in a Berne country, entitling the work to Berne protection throughthe so-called back door to Berne.33 Works created before March 1, 1989, thatdid not enter through the Berne back door may nonetheless enjoy Berne-levelprotection today through either of two avenues: (1) prior coverage in theprotecting country under some earlier treaty relationship with the UnitedStates, or (2) retroactive protection under Article 18 of the 1971 Berne ParisText.

Prior treaty coverage. Before the United States adhered to the Berne Con-vention, it adhered to the Universal Copyright Convention and, before that,to several regional and bilateral copyright treaties, all of which imposed anobligation of national treatment on their adherents. Since many countriesthat adhered to the U.C.C. or to one or more of these bilateral and regionalagreements belonged to the Berne Union, the national treatment they gaveworks of U.S. nationals under one of these treaties was effectively the levelof protection required of Berne members. Germany, for example, belongedto both Berne and the U.C.C. In giving national treatment to U.S. works underits U.C.C. obligations, Germany was giving them Berne-level protection aswell, at least to the extent that German law gave its own nationals the mini-mum protection required for nationals of other Berne member countries. Theprincipal effect of U.S. adherence to Berne on these already protected worksis that it undergirded the earlier protection with the minimum standardsimposed by the latest Berne act to which the protecting country adhered.

32. See §5.1.2.2, below.33. See §4.1.1.1.B(ii), below.


Retroactive Berne protection. Article 18(l) of the Berne Paris Text extendsthe Convention’s requirements “to all works which, at the moment of itscoming into force, have not yet fallen into the public domain in the countryof origin through the expiry of the term of protection.”34 This provision re-captures protection for works that, though still covered by an unexpired termof protection in their country of origin, have fallen into the public domain ina Berne member country because they had failed to obtain protection underthe U.C.C. or a bilateral agreement, for example, or through the back doorto Berne. Because retroactive grants of protection to public domain workscan prejudice creators of derivative works, such as translations, who reliedon the public domain status of the underlying work, Article 18(3) limits theguarantee of retroactivity by allowing domestic exceptions for uses made ofthe work at the time it was still in the public domain.35

b. is there a point of attachment?

The Berne Convention obligates Union members to protect only those for-eign literary and artistic works that have some point of attachment (alsocalled a “connecting factor”) that links the work to a Union member.36 Ar-ticle 3 of the Berne Paris Text provides that a point of attachment exists ifthe author of the work in question is a national of a Berne Union country37

or is assimilated to nationals of a Berne Union country by reason of “habitualresidence” in that country.38 Alternatively, if the author is not a national orhabitual resident of a Union country, a point of attachment will exist if thework was first published in a Union country “or simultaneously in a coun-try outside the Union and in a country of the Union.”39 If the work enjoysneither of these first two points of attachment, it will nonetheless be entitledto Berne protection if, in the case of a cinematographic work, its maker hasits headquarters or habitual residence in a Union country40 and if, in the caseof a work of architecture, it has been erected in a Union country.41 If it is someother form of artistic work, a point of attachment will exist if it is “incorpo-rated in a building or other structure located in a country of the Union.”42

34. Article 5(4) of the Berne Paris Text defines “country of origin.”35. On retroactive protection generally, see §5.3.3, below.36. TRIPs Agreement Article (1) incorporates by reference the points of attachment pre-

scribed for literary and artistic works by the Berne 1971 Paris Text. Article 3 of the WIPOCopyright Treaty expressly obligates contracting partners to apply the Berne points of attach-ment mutatis mutandis.

37. See Berne Convention, 1971 Paris Text, Art. 3(1) (a).38. Berne Convention, 1971 Paris Text, Art. 3(2).39. Berne Convention, 1971 Paris Text, Art. 3(1) (b).40. See Berne Convention, 1971 Paris Text, Art. 4(a).41. See Berne Convention, 1971 Paris Text, Art. 4(b).42. Berne Convention, 1971 Paris Text, Art. 4(b).


(i) Nationality of Author. Article 3(i) (a) of the Berne Paris Text extendsthe Convention’s protection to “authors who are nationals of one of the coun-tries of the Union, for their works, whether published or not.”43 Article 3(2)adds that “[a]uthors who are not nationals of one of the countries of theUnion but who have their habitual residence in one of them shall, for thepurposes of this Convention, be assimilated to nationals of that country.”44

According to the WIPO Guide to the Berne Convention, “[t]he idea of habitualresidence was preferred to that of domicile because ideas on the latter varyfrom country to country, whereas the former poses only a question of factfor the courts before which disputes come, namely the extent to which theauthor has lived in a certain place.” Further, the paragraph “covers the spe-cial case of stateless persons and refugees.”45

The provisions making nationality a point of attachment for publishedworks of Union nationals were introduced in Stockholm in 196746 andrepresent a fundamental change in the Berne Convention’s approach topoints of attachment generally. Until the Stockholm revision, the fact that awork’s author was a national of a Union country would ensure Conventionprotection only for unpublished works. To secure Convention protection fora published work, even a work of a Union national, the work had to be firstpublished in a Union country. This requirement put authors who were Unionnationals at the risk that their works would inadvertently be first publishedin a non-Union country, forfeiting Berne protection. Article 3(l) (a) ensuresBerne nationals of protection regardless of the country of first publication.“The result is that from now on the Convention protects the works of authorswho are nationals of the countries of the Union (or have their habitual resi-dence in one of them), whether published or not and wherever first pub-lished—either in a Union country or elsewhere.”47

Who is a work’s author for purposes of determining whether the workhas a point of attachment to a Union country under Article 3? Accordingto the weight of authority, the law of the country in which protection issought will control the determination of a work’s author for purposes oflocating a point of attachment. National definitions of authorship may bepartially constrained if the widely held view is correct, that the Conven-tion excludes all but flesh-and-blood creators from its conception of author-

43. Berne Convention, 1971 Paris Text, Art. 3(1) (a).44. Berne Convention, 1971 Paris Text, Art. 3(2).45. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris

Text, 1971) 27 (1978). See generally Sam Ricketson, The Berne Convention for the Protection ofLiterary and Artistic Works: 1886–1986 161–164. (1987).

46. See generally Sam Ricketson, The Berne Convention for the Protection of Literary and Ar-tistic Works: 1886–1986 161–164. (1987).

47. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (ParisText, 1971) 26 (1978).


ship.48 For example, unlike U.S. law, German law does not recognize cor-porate entities as authors, and a German court will, in determining whethera work has a point attachment, ask only whether the work’s flesh-and-blood creator, and not his corporate employer, is a national of a Unioncountry.49 To the extent that the Berne Convention requires, or at leastsanctions, this result, the United States could not complain that Germanyhas breached its TRIPs obligation to abide by Berne if it declined to recog-nize the corporate author of a U.S. work for hire as the work’s author forpurposes of determining whether a point of attachment exists.

What if an author has changed his country of habitual residence, or evenhis nationality? No less important than the question of who is a work’s au-thor is the question when authorship should be determined for purposes oflocating a point of attachment to a Union country. The Berne Convention issilent on the issue, leaving resolution to national law, presumably the lawof the protecting country. In principle, the country of which the author wasa national, or in which the author resided at the time of the work’s initialexploitation, should be the country that counts for purposes of determiningwhether there is a point of attachment. This approach, which finds somesupport in the records of the 1967 Stockholm Conference,50 best aligns thereasonable expectations of the author and publisher with the scope of theinternational protection they will receive. This approach also promotes cer-tainty and reduces strategic behavior aimed at belatedly establishing resi-dence in a Union country in order to secure Berne protection.

(ii) Country of publication. If a work’s author is not a national or habitualresident of a Berne Union country, there will nonetheless be a point of at-tachment under Article 3(i)(b) of the Paris Text if the work was first publishedin a Union country or was simultaneously published “in a country outsidethe Union and in a country of the Union.”51 It is this provision, and counter-part provisions in predecessor Berne acts, that provide the “back door toBerne” under which nationals of countries outside the Berne Union—most

48. See, e.g., Adolf Dietz, The Concept of Author Under the Berne Convention, 155 R.I.D.A.2 (1993); Wilhelm Nordemann, Kai Vinck, Paul W. Hertin, & Gerald Meyer, InternationalCopyright and Neighboring Rights Law: Commentary with Special Emphasis on the EuropeanCommunity 48–49 (1990); Sam Ricketson, The Berne Convention for the Protection of Liter-ary and Artistic Works: 1886–1986 157–159 (1987); David Vaver, The National TreatmentRequirements of the Berne and Universal Copyright Conventions 17 I.I.C. 577, 592–593(1986).

49. See §5.2.1.1, below.50. See Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:

1886–1986 162–163 (1987).51. Berne Convention, 1971 Paris Text, Art. 3(l)(b). When taken together with Article

3(l)(a), this means that non-Union authors can obtain Convention protection only for theirpublished works and then only if the work has been first or simultaneously published in aUnion country.


notoriously the United States until its adherence to Berne in March 1989—could obtain Berne protection through the expedient of first or simultaneouspublication in a Berne country.

Article 3(3) incorporates the Stockholm Conference’s expanded definitionof “published works.” The first part of the definition was intended to loosenthe 1948 Brussels Act formulation which equated publication with copiesbeing issued and made available to the public in “sufficient quantities.”52

Article 3(3) requires only that “the availability of such copies has been suchas to satisfy the reasonable requirements of the public, having regard to thenature of the work.”53 According to the WIPO Guide to the Berne Convention,“for example, cinematograph films are not, unlike books and magazines andpapers, placed on sale. The audience takes them in by means of their projec-tion without ever having the celluloid in their possession. Again the orches-tral parts of symphonies, often printed in small numbers, are lent to and notbought by the concert impresarios.”54

Article 3(3) also specifies those performances and displays that fall outsideits definition of publication: “The performance of a dramatic, dramatico-musical, cinematographic or musical work, the public recitation of a liter-ary work, the communication by wire or the broadcasting of literary or ar-tistic works, the exhibition of a work of art and the construction of a work ofarchitecture shall not constitute publication.”55 Superficially, the distinctionbetween these uses, which “produce only a fleeting impression of the work,”56

and uses that do constitute publication is the distinction between the ephem-eral and the tangible. “For a work to be published there must exist somethingtangible embodying it.”57 Since, however, an ephemeral performance or dis-play can always be tangibly captured in a recording or film, the more precisedistinction is between copies that are authorized by the copyright owner, andcopies, such as those made by an audience member or passerby, that are not.

52. Berne Convention, 1948 Brussels Text, Art. 4(4).53. Berne Convention, 1971 Paris Text, Art. (3) (3).54. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris

Act, 1971) 27–28 (1978). “But this wording does not go so far as to allow abuse: it is not enoughto show, in the window of a single bookshop, a dozen copies of a book which has enjoyedmassive success in some other country outside the Union. Again, a single copy of a cinemato-graphic work sent to a festival to be shown before a restricted audience does not meet theconditions. In neither case are the reasonable requirements of the public satisfied.” Id. at 28.

See also Wilhelm Nordemann, Kai Vinck, Paul W. Hertin, & Gerald Meyer, InternationalCopyright and Neighboring Rights Law: Commentary with Special Emphasis on the European Com-munity 62 (1990).

55. Berne Convention, 1971 Paris Text, Art. 3(3).56. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris

Text, 1971) 28 (1978).57. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Text, 1971) 28 (1978).


Article 3(1) (b) establishes a point of attachment not only for works firstpublished in a Berne Union country but also for works first published “simul-taneously in a country outside the Union and in a country of the Union.”Article 3(4) elaborates: “A work shall be considered as having been pub-lished simultaneously in several countries if it has been published in two ormore countries within thirty days of its first publication.”58 For example, ifan author who is neither a national nor a habitual resident of a Berne Unioncountry first publishes his work in a non-Union country, he will nonethe-less be entitled to Berne protection so long as he also publishes it in a Unioncountry within thirty days of the work’s first publication.

(iii) Cinematographic Works; Architecture and Other Artistic Works. Ar-ticle 4 of the Berne Paris Text provides two sets of criteria that can establishpoints of attachment for cinematographic works and architectural and cer-tain other artistic works that lack a point of attachment under Article 3’sprovisions on nationality and place of publication. Article 4 provides that“[t]he protection of this Convention shall apply, even if the conditions ofArticle 3 are not fulfilled, to:

(a) authors of cinematographic works the maker of which has his headquartersor habitual residence in one of the countries of the Union;

(b) authors of works of architecture erected in a country of the Union or of otherartistic works incorporated in a building or other structure located in acountry of the Union.”59

The special points of attachment for cinematographic works and architec-tural and other artistic works were introduced in the 1967 Stockholm Revi-sion in an effort to promote the protection of two classes of works that char-acteristically resist traditional conceptions of publication.60 Similarly, sinceworks of architecture and fine art are characteristically only displayed and notdistributed in copies, Article 4(b) meets the need for a special point of attach-ment to protect these highly visible but nonetheless unpublished works.

§4.1.1.2. Universal Copyright Convention

The Universal Copyright Convention exists in two texts: the original GenevaText, which came into force in the United States on September 16, 1955, andthe 1971 Paris Text, which came into force in the United States on July 10,

58. Berne Convention, 1971 Paris Text, Art. 3(4).59. Berne Convention, 1971 Paris Text, Art. 4.60. See generally Sam Ricketson, The Berne Convention for the Protection of Literary and Ar-

tistic Works: 1886–1986 169–170 (1987).


1974.61 As with the Berne Convention and its several texts, substantive differ-ences between the two U.C.C. texts may require a determination in any caseof which text governs the protection of a particular work. Like the BerneConvention, the U.C.C. establishes the subject matter classes62 and points ofattachment63 that will qualify a work for protection.

a. does the work come within the scope of the u.c.c.?

Article I of the U.C.C. Paris Text extends the Convention’s protection to “lit-erary, scientific and artistic works, including writings, musical, dramatic andcinematographic works, and paintings, engravings and sculpture,”64 and itdoes not require member countries to protect such traditionally borderlinesubject matter as photographic works and works of applied art.65 Articles IIIand IV, which deal respectively with formalities and copyright term, effec-tively exclude from the scope of protected subject matter works that havefallen into the public domain under the law of the protecting country becauseof noncompliance with prescribed formalities or expiration of term.66 Fur-ther, the Convention’s protection is not retroactive: the “Convention shallnot apply to works or rights in works which, at the effective date of this Con-vention in a Contracting State where protection is claimed, are permanentlyin the public domain in the said Contracting State.”67

b. is there a point of attachment?

Article II of the U.C.C. Paris Text divides the Convention’s points of attach-ment between published and unpublished works. The provision makes theauthor’s nationality in a contracting state a point of attachment for bothpublished and unpublished works and makes publication in a contractingstate a further point of attachment for published works.68 Article VI defines“publication” to mean “the reproduction in tangible form and the generaldistribution to the public of copies of a work from which it can be read or

61. For background on the adoption of the Universal Copyright Convention, see §2.1.2.2,above. See generally Arpad Bogsch, The Law of Copyright Under the Universal Convention(3d rev. ed. 1968); Theodore R. Kupferman & Mathew Foner, eds., Universal Copyright Con-vention Analyzed (1955).

62. See §4.1.1.2.A, below.63. See §4.1.1.2.B, below.64. Universal Copyright Convention, 1971 Paris Text, Art. I.65. See Arpad Bogsch, The Law of Copyright Under the Universal Copyright Convention 10 (3rd

rev. ed. 1968).66. See Universal Copyright Convention, 1971 Paris Text, Arts. III, IV.67. Universal Copyright Convention, 1971 Paris Text, Art. VII.68. See Universal Copyright Convention, 1971 Paris Text, Art. ii.


otherwise visually perceived.”69 It is this definition, rather than any defini-tion employed under local law, that will control.70

More specifically, under Article II(1), “[p]ublished works of nationals of anyContracting State and works first published in that State shall enjoy in eachother Contracting State the same protection as that other State accords toworks of its nationals first published in its own territory, as well as the pro-tection specially granted by this Convention.”71 Article II(2) provides that“[u]npublished works of nationals of each Contracting State shall enjoy ineach other Contracting State the same protection as that other State accordsto unpublished works of its own nationals, as well as the protection speciallygranted by this Convention.”72 Article II(3) adds that “any Contracting Statemay, by domestic legislation, assimilate to its own nationals any person do-miciled in that State.”73

The U.C.C., like the Berne Convention, addresses only protection offoreigners and does not obligate member countries to extend convention-level protection to their own nationals. Must a U.C.C. country nonethelessgrant convention-level protection to a work of its own national if the workwas first published in another U.C.C. country? Reading Article II(1)’s re-quirements as “alternative and not cumulative,” but acknowledging that theanswer is “not entirely clear,” Dr. Bogsch concluded that in this situationthe work “seems to qualify as a work first published in another contractingcountry and thus it ought to be protected. The fact that the work is not a workof a national of another contracting country does not seem relevant sinceworks first published in another contracting country must be protectedirrespective of the author’s nationality.”74

§4.1.1.3. Other Copyright Treaties

Between the Chace Act in 189175 and adherence to the U.C.C. Geneva Textin 1955, the United States concluded bilateral copyright arrangements with

69. Universal Copyright Convention, 1971 Paris Text, Art. VI.70. See Arpad Bogsch, The Law of Copyright Under the Universal Copyright Convention

68 (3rd ed. 1968).71. Universal Copyright Convention, 1971 Paris Text, Art. II(1). “It is clear from the con-

struction of this sentence that there are two classes of published works which are subject tothe provisions of the Convention: (i) works of nationals of another contracting country, and,(ii) works first published in another contracting country.” Arpad Bogsch, The Law of Copy-right Under the Universal Convention 12 (3rd rev. ed. 1968).

72. Universal Copyright Convention, 1971 Paris Text, Art. II(2).73. Universal Copyright Convention, 1971 Paris Text, Art. II(3).74. Arpad Bogsch, The Law of Copyright Under the Universal Convention 12 (3d rev. ed. 1968).75. See Act of March 3, 1891, ch. 565, 26 Stat. 1106.


more than fifty nations.76 It also entered into two multilateral inter-Americantreaties, the 1902 Mexico City Convention and the 1910 Buenos Aires Con-vention, which largely superseded it.77 Since the U.S. adherence to the U.C.C.,and more recently to the Paris Text of the Berne Convention, these otherinternational arrangements have played a largely interstitial—but oftencritical—role in establishing whether, and under what terms, a U.S. authorof a work created or published before the United States adhered to the U.C.C.or Berne is entitled to copyright protection in another country.78

The bilateral and regional copyright treaties differ from each other, andfrom the U.C.C. and the Berne Convention, in the subject matter they pro-tect and the points of attachment they require. To take one example, the 1892U.S.–German Copyright Agreement extends protection to pedestrian photo-graphic snapshots that would not have been protected as photographic“works” under either the Berne Convention or domestic German law. Suchsubstantive and procedural differences mean that, in determining whethera work originating in the United States is entitled to protection in other coun-tries, it will sometimes be necessary to review the terms of any bilateral orregional treaty between the United States and the other country.

§4.1.1.4. What Treaty Governs?

If treaty standards were static, it would be relatively easy to answer the ques-tions whether, and to what extent, a particular country will protect a liter-ary or artistic work. But technological change and shifts in the wealth ofnations have led over time to shifts in the applicable treaty standards. TheBerne Convention, the premier treaty for copyright and author’s right, hasbeen revised several times since the first, 1886 Act, with each new text at-tracting some of the original members of the Union but not others, while alsowinning newcomers to the Berne club. This historical pattern of Berne ad-herence requires the U.S. copyright owner that seeks protection in anotherBerne country to determine whether its work will encounter either of twocomplicating legal facts. First is the situation where the protecting countryand the country providing the Berne point of attachment (possibly, but notnecessarily, the United States) have adhered to different texts of the BerneConvention.79 Second is the situation where the United States provides thepoint of attachment and where protection needs to be resolved not just under

76. See §2.1.1, above.77. See §2.1.3.1, above.78. See §4.1.1.4, below.79. See §4.1.1.4.A, below.


a Berne text but under a patchwork of Berne, the Universal Copyright Con-vention, and a bilateral or regional copyright treaty.80

a. different texts of the berne convention

Countries that first entered the Berne Union after the effective date of the 1971Paris Text can adhere only to the Paris Text and not to any earlier text.81 Bycontrast, countries that were already members of the Union in 1971 areunder no requirement to adhere to the Paris Text and may limit their inter-national obligations to the level of the latest Berne text to which they haveadhered—Brussels (1948), say, or Rome (1928).82 Where both the protect-ing country and the country providing the point of attachment have adheredto the Paris Text, the obligations imposed by the Paris Text will control dis-position of the work in issue. A different situation arises where the protect-ing country and the country providing the point of attachment both adheredto an earlier act—the Brussels Act, say—but only the protecting country hasalso adhered to the Paris Text. In this situation, the protecting country needonly extend Brussels-level protection to works with their point of attachmentin the other country, since Brussels is the only text the two countries havein common and consequently the only source of privity between them.83

A more complicated situation arises when the protecting country, a new-comer to the Berne Union, has adhered only to the Paris Text while thecountry providing the point of attachment has adhered only to an earlier—Brussels, say—text. Since, in this situation, no common text binds the twocountries, neither has any apparent obligation to protect works with a pointof attachment in the other. This situation was the subject of extensive de-bate in the course of the Stockholm Revision Conference and was ultimatelyresolved in Article 32 of the 1967 Stockholm Act, as carried forward in theParis Act.84 In general, Article 32(2) requires a protecting country that hasadhered only to the Paris Text to apply the Paris text to works with a pointof attachment in a country that has adhered only to a previous Berne text.Further, under this provision, Paris adherents “recognize that the said [non-Paris] country of the Union, in its relations with them . . . may apply theprovisions of the most recent Act by which it is bound”—the 1948 Brussels

80. See §4.1.1.4.B, below.81. See Berne Convention, 1971 Paris Text, Art. 34(l).82. See Berne Convention, 1971 Paris Text, Art. 32(l).83. See Paul Edward Geller, Copyright Protection in the Berne Union: Analyzing the

Issues, 5 Int. Prop. J. 8–9 (1989); Sam Ricketson, The Berne Convention for the Protection ofLiterary and Artistic Works: 1886–1986 813–814 (1987).

84. See Sam Ricketson, The Berne Convention for the Protection of Literary and ArtisticWorks: 1886–1986 814–825 (1987).


Act, in this example—or, subject to one exception, “has the right to adaptthe protection to the level provided for by this Act”—that is, the Paris Act.85

Implicit in Article 32’s formulation is the prospect that in the conversesituation, where the country providing the point of attachment has adheredto the Paris Text but the protecting country has not, the protecting countryhas no obligation to protect the work. According to Paul Geller, “commen-tary puts forward the view that the senior member, in adhering to the BerneUnion, bound itself by the Convention which, at the time of adherence, wasto be effective for an unlimited period of time and foreseeably subject to re-vised Acts to which new junior members would also accede as the BerneUnion developed. By implication, the senior member thus obligated itself toprotect works from any eventual junior member acceding to any subsequentBerne Act, but only pursuant to the last Act binding the senior member. Thusit would treat newly acceding junior members much like third-party benefi-ciaries of the earlier Berne Act it signed.”86

b. texts of different treaties

The United States adhered to the Berne Convention on March 1, 1989. Be-fore then, the country’s only truly multilateral copyright commitment wasto the Geneva and Paris Acts of the Universal Copyright Convention, whichcame into force in the United States on September 16, 1955, and July 10,1974, respectively. Before the United States adhered to the U.C.C., it was aparty to regional inter-American copyright conventions and to a large num-ber of bilateral copyright treaties. This multiplicity of treaties inevitably raisesthe question of which treaty will govern foreign protection of a U.S. work inany case. Two organizing principles provide the answer: a hierarchical prin-ciple that orders treaties according to their primacy, and a chronologicalprinciple that orders them over time.

(i) The Hierarchical Principle. Of all the treaty sources of protection for lit-erary and artistic works, the Berne Convention is supreme within its domain.Article 18(l) of the Paris text makes the Berne Convention “apply to all works,which, at the moment of its coming into force, have not yet fallen into thepublic domain in the country of origin through the expiry of the term of pro-tection.”87 Articles 19 and 20 carve out two exceptions to the Convention’ssupremacy. Under Article 19, “[t]he provisions of this Convention shall not

85. See generally Paul Edward Geller, Copyright Protection in the Berne Union: Analyzingthe Issues, 5 Int. Prop. J. 9 (1989); Sam Ricketson, The Berne Convention for the Protection ofLiterary and Artistic Works: 1886–1986 815–825 (1987).

86. Paul Edward Geller, Copyright Protection in the Berne Union: Analyzing the Issues,5 Int. Prop. J. 10 (1989) (footnote omitted).

87. Berne Convention, 1971 Paris Text, Art. 18(l).


preclude the making of a claim to the benefit of any greater protection whichmay be granted by legislation in a country of the Union.”88 Under Article 20,Union members “reserve the right to enter into special agreements amongthemselves, in so far as such agreements grant to authors more extensiverights than those granted by the Convention, or contain other provisions notcontrary to this Convention. The provisions of existing agreements whichsatisfy these conditions shall remain applicable.”89

The Universal Copyright Convention is next in the hierarchy of treaties. TheU.C.C. expressly subordinates its authority to that of the Berne Convention90

and effectively makes its provisions coequal with “multilateral or bilateralcopyright conventions or arrangements that are or may be in effect exclu-sively between two or more American Republics.”91 Apart from these pro-visions, the U.C.C. is in its domain superior to other copyright treaties.Article XIX of the Convention provides that “[t]his Convention shall notabrogate multilateral or bilateral conventions or arrangements in effect be-tween two or more Contracting States”; but “[i]n the event of any differencebetween the provisions of such existing conventions or arrangements andthe provisions of this Convention, the provisions of this Convention shallprevail.” Further, “[r]ights in works acquired in any Contracting State un-der existing conventions or arrangements before the date on which the Con-vention comes into force in such State shall not be affected.”92

The U.C.C.’s framers, with several Berne Union members among them, rec-onciled competing points in the two treaties, and secured the Berne Conven-tion’s primacy, by referring in U.C.C. Article XVII to an annexed declarationas “an integral part of this Convention for the States bound by the Berne Con-vention on 1 January 1951, or which have or may become bound to it at alater date.”93 The Appendix Declaration Relating to Article XVII provides inrelevant part that “The Universal Copyright Convention shall not be appli-cable to the relationships among countries of the Berne Union in so far as itrelates to the protection of works having as their country of origin, withinthe meaning of the Berne Convention, a country of the Berne Union.”94 Thismeans that if a work originated in a Berne Union country—as country oforigin is defined by the applicable Berne text—other Berne members are

88. Berne Convention, 1971 Paris Text, Art. 19.89. Berne Convention, 1971 Paris Text, Art. 20.90. See Universal Copyright Convention, 1971 Paris Text, Art. XVII(1). (“This Convention

shall not in any way affect the provisions of the Berne Convention for the Protection ofLiterary and Artistic Works or membership in the Union created by that Convention.”)

91. Universal Copyright Convention, 1971 Paris Text, Art. XVIII.92. Universal Copyright Convention, 1971 Paris Text, Art. XIX.93. Universal Copyright Convention, 1971 Paris Text, Art. XVII(2).94. Universal Copyright Convention, 1971 Paris Text, Appendix Declaration Relating to

Art. XVII.


obligated to apply the Berne standards of protection to the work and not theU.C.C. standards.95

(ii) The Chronological Principle. The relationship between the multilateraland bilateral treaties is chronological as well as hierarchical. One treaty inthe hierarchy may apply at one point in time while another, lower down theladder, may apply at another point. Atlas Film v. Janus Film,96 involving the1892 U.S.–German Copyright Agreement, the Universal Copyright Conven-tion, and the Berne Convention, illustrates the methodology employed insuch cases.

Under the facts of Atlas Film, plaintiff Janus was successor in interest to theGerman exploitation rights of several films that Buster Keaton had made inthe United States between 1921 and 1928. Upon expiration of the first twenty-eight–year term of U.S. copyright, the films’ copyright owner (plaintiff’s pre-decessor in interest) failed to renew the copyrights for a second twenty-eight–year term. Acknowledging that the films were in the public domain in theUnited States, plaintiff rested its claim of German copyright on two founda-tions: the January 15, 1892, bilateral copyright agreement between theUnited States and Germany and, for some of the films, first publication inGreat Britain or Japan, creating a Berne point of attachment in those twoUnion countries. The Court of Appeals ruled in the plaintiff’s favor on its firstargument and consequently did not reach decision on the second point. TheGerman Federal Supreme Court left the Court of Appeals ruling undisturbed.

The German Federal Supreme Court started its analysis with the terms ofthe 1892 U.S.–German Copyright Agreement, specifically its provision that“[c]itizens of the United States of America shall enjoy, in the German Em-pire, the protection of copyright as regards works of literature and art, as wellas photographs, against illegal reproduction, on the same basis on whichsuch protection is granted to subjects of the Empire.97 The provision for na-tional treatment meant that U.S. works, including films, were to receive thesame protection as German works, even though the German Copyright Actdid not cover films until after the 1892 treaty. National treatment also meantthat U.S. citizens enjoyed the same term of protection for their works as Ger-man citizens: fifty years after the author’s death. Since the 1892 treaty no-where required as a condition to protection in Germany that the work still

95. See generally Arpad Bogsch, The Law of Copyright Under the Universal Copyright Conven-tion 111–124 (3d rev. ed. 1968); Arpad Bogsch, Co-Existence of the Universal Copyright Con-vention with the Berne Conventions, in Universal Copyright Convention Analyzed 160–163 (1955).

96. Atlas Film & AV GmbH & Co. Verleih u. Vertrieb v. Janus Film und Fernsehen Ver-triebsgesellschaft GmbH, German Federal Supreme Court, Jan. 27, 1978 (Case 1 ZR 97/76), 10I.I.C. 358 (1979).

97. Agreement Between the German Reich and the United States of America Concerningthe Reciprocal Protection of Copyrights of January 15, 1892, Art. I.


be protected by copyright in the United States, the German copyright termfor the films continued to subsist—Keaton had died in 1966—even thoughthe twenty-eight–year U.S. term had long since expired and had not beenrenewed.

The court acknowledged that the Universal Copyright Convention, whichfirst entered into force between Germany and the United States on Septem-ber 16, 1955, complicated this straightforward analysis of national treatment.The U.C.C., like the U.S.–German Copyright Agreement, measured the termof protection by the law of the protecting country but, in Article IV(4) (a),established the so-called rule of the shorter term:98 “No Contracting Stateshall be obliged to grant protection to a work for a period longer than thatfixed for the class of works to which the work in question belongs . . . by thelaw of the Contracting State in which the work has first been published.”99

Thus if the U.C.C. and its rule of the shorter term applied, the Keaton filmswould be in the public domain in Germany since their term of protection inthe United States, where on the facts before the court they were presumablyfirst published, had long since expired.

Another complicating fact in Atlas Films was that the U.C.C. had not onlya rule of the shorter term but also a rule on the effect of other copyright trea-ties. U.C.C. Article XIX100 provides in its first sentence that the “Conventionshall not abrogate multilateral or bilateral conventions or arrangements ineffect between two or more Contracting States.” This provision presumablyleft the U.S.–German Copyright Agreement untouched and the GermanKeaton copyrights consequently intact. However, Article XIX’s second sen-tence provided that “[i]n the event of any difference between the provisionsof such existing conventions or arrangements and the provisions of thisConvention, the provisions of this Convention shall prevail.” This suggestedthat the rule of the shorter term applied after all and that the film copyrightswere in the public domain in Germany.

The court ultimately found the answer in U.C.C. Article XIX’s third sen-tence: “Rights in works acquired in any Contracting State under existingconventions or arrangements before the date on which this Conventioncomes into force in such State shall not be affected.” The court relied on thisformulation of the doctrine of acquired rights to conclude that the Keatonfilms were still protected under German copyright. Specifically, since theGerman rights in the films, including the right to the then applicable Ger-man term of protection, had been acquired under the 1892 U.S.–GermanCopyright Agreement, they were unaffected by the U.C.C., which entered intoforce decades after the rights were first acquired. Effectively, Keaton and

98. On the rule of the shorter term generally, see §5.3.2, below.99. Universal Copyright Convention, 1971 Paris Text, Art. IV(4) (a).100. Universal Copyright Convention, 1971 Paris Text, Art. XIX.


his successors in interest had obtained a vested right in the German term oflife plus fifty years.101

Atlas Film held that rights, once acquired, cannot be legislatively trun-cated. What effect will a protecting country’s subsequent extension of copy-right term have on the foreign claimant’s acquired rights? The Atlas Filmscourt observed that extension of the German copyright term would not op-erate to benefit an author whose work was in the public domain in its coun-try of origin at the time the extension was enacted in Germany. In 1978 thecourt ruled in the White Fang (Wolfsblut) case102 that Jack London’s shortstory White Fang was not entitled to the extended life plus seventy-year termintroduced by the 1965 German Copyright Act, which took effect on Janu-ary 1, 1969. The work had previously fallen into the public domain in theUnited States and in Germany by reason of London’s death on November 22,1916, and the 1965 Act was unequivocal about the applicability of the ruleof the shorter term.103

It seems clear from the Atlas Films and White Fang decisions that someolder U.S. works, whether or not in the public domain in the United States,will, notwithstanding U.C.C. Article XIX, continue to be protected under thelife plus seventy-year term introduced by the 1965 German Act. The entryinto force of the Berne Convention between the United States and Germanyon March 1, 1989, effectively superseding the U.C.C., should not change thisresult. If, as in the White Fang case, the work had fallen into the public do-main in both the United States and Germany before that date, there is noth-ing in the Berne Convention to resurrect protection in Germany. But, follow-ing the Atlas Films analysis, if the German copyright term for the work hadnot expired before March 1, 1989, German copyright would continue tosubsist on the work after that date.

101. Cf. Friedman v. Société Galba Films, Court of Appeals, Paris, April 24, 1974 7 I.I.C. 130(1976). In Atlas Films, it was evidently the court’s view that the specific terms of the 1892bilateral agreement, together with the terms of domestic German law, dictated the finding ofacquired rights, for the court rejected as inapposite the argument that other countries thathad adhered to pre-U.C.C. bilateral agreements with the United States had applied the rule ofthe shorter term under Article XIX’s second sentence, rather than the doctrine of acquiredrights under its third sentence.

102. Tele-Cine Film Produktion GmbH v. Constantin Film GmbH & Oceania Produzioni Inter-nazionali Cinematografiche SRL, German Federal Supreme Court, Jan. 27, 1978 (Case: I ZR 4/77) 10 I.I.C. 363 (1979).

103. “In this connection, the Court overlooked the fact that, according to Section 143,(l)Copyright Act, the extension was already effective as of September 17, 1965.” Josef Drexel,Duration of Copyright Protection Accorded U.S. Authors in the Federal Republic of Germany—Changes Due to the U.S. Accession to the Berne Convention, 22 I.I.C. 27, 39 (1991). See alsoEugen Ulmer, The Term of Protection for Works of American Origin in the Federal Republicof Germany, 10 I.I.C. 287, 292–293 (1979).


§4.1.2 Neighboring Rights

Three multilateral conventions deal with neighboring rights: the 1961International Convention for the Protection of Performers, Producers ofPhonograms and Broadcasting organizations (commonly called the RomeConvention),104 the 1971 Convention for the Protection of Producers ofPhonograms Against Unauthorized Duplication of Their Phonograms (com-monly called the Geneva Phonograms Convention),105 and the 1996 WIPOPerformances and Phonograms Treaty,106 which builds on the Rome Con-vention. The 1994 TRIPs Agreement107 also provides minimum standardsfor neighboring rights.

§4.1.2.1. International Convention for the Protection of Performers,Producers of Phonograms and BroadcastingOrganizations (Rome Convention)

a. does the production come within the scope ofthe rome convention?

The Rome Convention secures national treatment protection to performerswith respect to their performances,108 phonogram producers with respect totheir phonograms,109 and broadcasting organizations with respect to theirbroadcasts.110 The Convention expressly leaves “intact and shall in no wayaffect the protection of copyright in literary and artistic works.111 Also theConvention has no retroactive effect: “a performance or a broadcast takingplace or a phonogram fixed before that date [when the Convention entersinto force in a country] need not be given any rights internationally in theState in question.112 By contrast, the TRIPs Agreement does require retro-

104. See §2.2.1, above.105. See §2.2.2, above.106. See §2.2.3, above.107. See §2.3.2, above.108. Article 3(a) of the Rome Convention defines “performers” as “actors, singers, musi-

cians, dancers, and other persons who act, sing, deliver, declaim, play in, or otherwise per-form literary or artistic works.”

109. Article 3(b) of the Rome Convention defines “phonogram” as “any exclusively auralfixation of sounds of a performance or of other sounds” and Article 3(c) defines “producer ofphonograms” as “the person who, or the legal entity which, first fixes the sounds of a perfor-mance or other sounds.”

110. Article 3(f) of the Rome Convention defines “broadcasting” as “the transmission bywireless means for public reception of sounds or of images and sounds.”

111. Rome Convention, 1961, Art. 1.112. WIPO, Guide to the Rome Convention and to the Phonograms Convention 68 (1981).


active protection for the rights of performers and phonogram producers inexisting phonograms.113 Indeed, the first proceeding initiated under the TRIPsobligation complained of Japan’s noncompliance with this provision.114

b. points of attachment

Articles 4 through 6 of the Rome Convention prescribe the points of attach-ment, respectively, for performers,115 producers of phonograms,116 and broad-casting organizations.117 As under the Berne and Universal Copyright Con-ventions, the presence of a point of attachment in a country that adheres tothe Convention only ensures protection in other Convention countries andnot under the domestic law of the country in which the point of attachmentexists.118

(i) Performers. Article 4 of the Rome Convention prescribes three alterna-tive points of attachment for performers with respect to their performances,any one of which will qualify the performance for protection in other Romecountries. The first of these possible points of attachment for protection inone or more contracting states is that “the performance takes place in an-other Contracting State.”119 The WIPO Guide to the Rome Convention and thePhonograms Convention offers as an example “a soloist gives a piano recitalin Stockholm and the concert is broadcast by Danish radio; this performermay demand the application of the Convention by Denmark. But it will beremembered that in Sweden, where the concert took place, it is the Swedishnational law which applies.”120

As a second alternative, under Article 4 a performance will be protected ifit is “incorporated in a phonogram which is protected under Article 5 of thisConvention.”121 Finally, a performer will obtain protection for his perfor-mance if “the performance, not being fixed on a phonogram, is carried by abroadcast which is protected by Article 6 of this Convention.”122 The WIPOGuide offers as an example the situation where “a quartet plays a number ofmusical pieces before the microphone in a studio of an Italian broadcasting

113. See TRIPs Agreement Art. 70(2).114. See Lionel S. Sobel, Retroactive Copyright Protection for Recordings, Japanese Style:

An American Diplomatic Triumph . . . Complete with Anomalies and Ironies, 18 Ent. L.R. 4(Feb. 1997).

115. See §4.1.2.1.B(i), below.116. See §4.1.2.1.B(ii), below.117. See §4.2.1.B(iii), below.118. See WIPO, Guide to the Rome Convention and the Phonograms Convention 26 (1981).119. Rome Convention, 1961, Art. 4(a).120. WIPO, Guide to the Rome Convention and the Phonograms Convention 27 (1981).121. Rome Convention, 1961, Art. 4(b).122. Rome Convention, 1961, Art. 4(c).


organization which has the quartet’s consent to broadcast in Italy. If it isrebroadcast in the Federal Republic of Germany without the consent of thequartet, the latter may pray the Convention in aid.”123

Since the nationality of the performer underpins none of the points of attach-ment in Article 4, the Rome Convention would appear to offer a clear fieldof protection to performers who are nationals of a noncontracting party—most notably the United States of America. However, in a much-criticizeddecision, a German court dismissed an action brought by American singerand songwriter Bob Dylan to enjoin the distribution in Germany of copies ofa bootleg recording of his live performance in a concert in Italy.124 Since bothItaly and Germany adhere to the Rome Convention, the performance in Italywould, contrary to the court’s holding, appear to have provided the point ofattachment for protection in Germany under Article 4(a).

(ii) Producers of Phonograms. Article 5(l) of the Rome Convention pre-scribes three points of attachment for phonogram producers, any one ofwhich, if met, will secure protection for the phonogram in a contractingcountry: “(a) the producer of the phonogram is a national of another Con-tracting State (criterion of nationality); (b) the first fixation of the sound wasmade in another Contracting State (criterion of fixation); (c) the phonogramwas first published in another Contracting State (criterion of publication).”125

Article 5(2) effectively augments the publication criterion with a relaxedstandard of simultaneous publication: “If a phonogram was first publishedin a non-contracting State but if it was also published, within thirty days ofits first publication, in a Contracting State (simultaneous publication), it shallbe considered as first published in the Contracting State.”126

Article 5’s fixation and publication criteria create the opportunity for na-tionals of a noncontracting country, such as the United States, to obtainRome-level protection for their phonograms in contracting states throughthe expedient of recording their production, or first or simultaneously dis-tributing it, in a contracting country. Article 5(3), a compromise betweencountries that objected to the fixation criterion and countries that objectedto the publication criterion,127 partially reduces Article 5(l)’s options by al-lowing contracting states to elect not to “apply the criterion of publication

123. WIPO, Guide to the Rome Convention and to the Phonograms Convention 27–28 (1981).124. Bob Dylan, Federal Supreme Court, Nov. 14, 1985 (Case No. I ZR 68/83) 18 I.I.C. 418

422 (1987).125. Rome Convention, 1961, Article 5(1).126. Rome Convention, 1961, Art. 5(2). Article 3(d) defines “publication” as “the offering

of copies of a phonogram to the public in reasonable quantity.”127. See WIPO, Guide to the Rome Convention and to the Phonograms Convention 30

(1981).


or, alternatively, the criterion of fixation.”128 The fact that Article 5(3) al-lows a contracting state to elect out of either, but not both, of these two pointsof attachment ensures nationals of noncontracting states the possibility ofobtaining Rome-level protection through at least one of these two avenues.

(iii) Broadcasting Organizations. Article 6(1) of the Rome Convention es-tablishes two alternative points of attachment for broadcasting organizationsto obtain protection for their broadcasts in a contracting state: “(a) the head-quarters of the broadcasting organization is situated in another Contract-ing State” or “(b) the broadcast was transmitted from a transmitter situatedin another Contracting State.”129 According to the WIPO Guide to the RomeConvention, “it was agreed during the discussion in Rome that by the Statewhere the headquarters of the broadcasting organisation is situated shouldbe understood the State under the laws of which the broadcasting entity wasorganized. Thus, in the French text ‘siège social’ should be understood as theequivalent of ‘siège statutaire,’ and it was also agreed that the legal entity inquestion may be what is known in German as ‘offene Handelsgesellschaft’or ‘Kommanditgesellschaft.’”130 Under Article 6(2), a contracting state mayrequire that both, and not just one, of these two criteria be met for a broad-cast to be entitled to protection: “any Contracting State may declare that itwill protect broadcasts only if the headquarters of the broadcasting organi-zation is situated in another Contracting State and the broadcast was trans-mitted from a transmitter situated in the same Contracting State.”131

§4.1.2.2. Convention for the Protection of Producers of PhonogramsAgainst Unauthorized Duplication of Their Phonograms(Geneva Phonograms Convention)

Unlike the Rome Convention, which protects performers, phonogram pro-ducers, and broadcasting organizations, the Convention for the Protectionof Producers of Phonograms Against Unauthorized Duplication of TheirPhonograms protects only phonogram producers and only against piracy.Like the Rome Convention, the Geneva Phonograms Convention has no ret-roactive effect; under Article 7(3), “[n]o Contracting State shall be requiredto apply the provisions of this Convention to any phonogram fixed before thisConvention entered into force with respect to that State.”132

As a general rule, the Geneva Phonograms Convention prescribes a singlepoint of attachment, requiring each contracting state to “protect producers

128. Rome Convention, 1961, Art. 5(3).129. Rome Convention, 1961, Art. (6)(1).130. See WIPO, Guide to the Rome Convention and to the Phonograms Convention 32 (1981).131. Rome Convention, 1961, Art. 6(2).132. Geneva Phonograms Convention, 1971, Art. 7(3).


of phonograms who are nationals of other Contracting States.”133 Article 7(4)provides the single exception to nationality as the Convention’s point of at-tachment: “Any Contracting State which, on October 29, 1971, affords pro-tection to producers of phonograms solely on the basis of the place of firstfixation may, by a notification deposited with the Director General of theWorld Intellectual Property Organization, declare that it will apply this cri-terion instead of the criterion of the nationality of the producer.”134

§4.2PROTECTIBILITY OF FOREIGN WORKS IN THE UNITED STATES

Protection in the United States for works of foreign origin divides betweenunpublished and published works. Unpublished works enjoy full protectionunder the 1976 Copyright Act without regard to the domicile or nationalityof the author or to any treaty relations between the United States and thework’s country of origin.135 Published works, by contrast, will enjoy protec-tion under the 1976 Copyright Act only if they meet one or more of severalconditions imposed by section 104 of the Act.136 The two conditions thatprovide the most common basis for protection of published foreign works arethe existence of copyright treaty relations between the United States and thecountry in which the work was first published,137 or between the UnitedStates and the country of which the work’s author is a national or domicili-ary.138 In many cases, if a work has fallen into the public domain in the UnitedStates because of lack of national eligibility,139 or because the copyright ownerfailed to comply with a copyright formality applicable under U.S. law at thetime of the work’s publication, the fact of foreign origin may operate to re-store copyright in the work.140

The determination whether, and to what extent, a foreign work will beprotected under U.S. copyright law will turn in any case on the law in forcein the United States at the time of the work’s first publication, as well as on

133. Geneva Phonograms Convention, 1971, Art. 2. Article 1(a) defines “phonogram” as“any exclusively aural fixation of sounds of a performance or of other sounds,” and Article 1(b)defines “producer of phonograms” as “the person who, or the legal entity which, first fixesthe sounds of a performance or other sounds.”

134. Geneva Phonograms Convention, 1971, Art. 7 (4).135. U.S. 1976 Copyright Act §104(a).136. U.S. 1976 Copyright Act §104(b).137. U.S. 1976 Copyright Act §104(b) (2).138. U.S. 1976 Copyright Act §104(b) (1).139. See §4.2.2.5, below.140. U.S. 1976 Copyright Act 104A(h)(6).

§4.2. Protectibility of Foreign Works 147


the treaty relations, if any, that existed between the United States and thework’s country of origin at that time. For example, while the 1976 CopyrightAct protects works by foreign authors that were first published in the UnitedStates,141 the 1909 Copyright Act, which preceded it, did not make first pub-lication in the United States a point of attachment. As a result, a work by aforeign author that was first published in the United States before the effec-tive date of the 1976 Act, January 1, 1978, would have had to qualify forprotection under some other provision of the 1909 Act if it were not to havefallen into the public domain in the United States.142 Similarly, a work of aFrench national first published in France in 1982 will not enjoy protectionin the United States under the terms of the Berne Convention, because theUnited States did not adhere to the Berne Convention until March 1, 1989.Nonetheless, the work would be protected in the United States under theterms of the Universal Copyright Convention, 1971 Paris Text, to which bothFrance and the United States adhered on July 10, 1974.143

Once it is determined that a foreign work is protectible under U.S. law, theforeign copyright owner should consult the applicable Copyright Act’s own-ership rules, as well as the applicable choice of law rules on ownership, todetermine whether it is the copyright owner in the United States. (UnitedStates rules on copyright ownership differ, in some respects dramatically,from the rules applied in other countries.) Next the copyright owner shoulddetermine whether the work constitutes protectible subject matter under the1976 Act and, if so, into what subject matter category it falls, since the scopeof rights will sometimes vary with the work’s subject matter class. A soundrecording, for example, will receive less complete copyright protectionunder the 1976 Act than other forms of copyright subject matter. The copy-right owner should then determine the scope of its rights and remedies underthe 1976 Act and, finally, ascertain when the term of copyright expires inthe United States.

§4.2.1. Unpublished Works

Until the 1976 Copyright Act, copyright protection for unpublished worksin the United States was the province of state common law rather than fed-eral statutory law. Federal copyright law would protect the work only if andwhen the work was published with the required copyright notice affixed toall publicly distributed copies. State common law copyright imposed no for-

141. U.S. 1976 Copyright Act §104(b)(2).142. Transitional and Supplementary Provisions of 1976 Copyright Act §103.143. See generally Arpad Bogsch, Protection of Works of Foreign Origin, U.S. Copyright Office,

Study No. 32 (1959).On the hierarchical ordering of treaties, see §4.1.1.4, above.


mal conditions to protection, and it protected works of foreign authors, noless than works of U.S. authors, without any requirement of treaty or otherrelations with the work’s country of origin.144

The 1976 Copyright Act, which took effect on January 1, 1978, substan-tially preempted state common law copyright in the United States by mak-ing federal statutory protection commence upon a work’s fixation ratherthan upon its publication. As a consequence, state common law copyrighthas, since January 1, 1978, been confined to unfixed works.145 Works cre-ated, but not published, before January 1, 1978, are protected under the1976 Act for a statutorily limited term.146 Like state common law copyrightbefore it, the 1976 Copyright Act provides that unpublished works will en-joy copyright protection without regard to the nationality or domicile of theauthor.147 State common law copyright continues to protect unfixed workswithout regard to nationality or domicile.

§4.2.2. Published Works

Section 104(b) of the 1976 Copyright Act prescribes six basic points ofattachment that will qualify a work for protection in the United States ifnone of the work’s authors is a U.S. national or domiciliary and the workwas not first published in the United States.148 A foreign work will be en-titled to protection under the Act if, on the date of the work’s first publica-tion, one or more of its authors “is a national, domiciliary, or sovereignauthority of a treaty party, or is a stateless person, wherever that personmay be domiciled”;149 the work was first published “in a foreign nation that,on the date of first publication, is a treaty party”;150 the work “is a sound

144. See, e.g., Ferris v. Frohman, 223 U.S. 424, 433–435 (1912); Palmer v. DeWitt, 47 N.Y.532, 538 (1872).

145. Since publication generally turns on the public distribution of copies or phonorecordsof a work, cases will rarely arise in which publication will occur without the work’s prior fixa-tion. See 1976 U.S. Copyright Act §101 (definition of “publication”). See generally Paul Goldstein,1 Copyright §3.3 (2d ed. 1995).

146. The 1976 Copyright Act limits the term of protection for works created, but not pub-lished, before January 1, 1978, by subjecting them to the term of copyright prescribed by theAct generally and providing that in “no case, however, shall the term of copyright in such awork expire before December 31, 2002; and if the work is published on or before December 31,2002, the term of copyright shall not expire before December 31, 2047.” 1976 U.S. CopyrightAct §303(a).

147. U.S. 1976 Copyright Act §104(a).148. The 1976 Copyright Act also extends protection to a work if, on the date of its first

publication, one or more of its authors is a U.S. national or domiciliary, or the work was firstpublished in the United States. U.S. 1976 Copyright Act §104(a), (b).

149. U.S. 1976 Copyright Act §104(b) (1).150. U.S. 1976 Copyright Act §104(b) (2).



recording that was first fixed in a treaty party”;151 the work is a pictorial,graphic, sculptural, or architectural work that is incorporated or embod-ied in a building or other structure located in the United States or in a treatyparty;152 the work was first published by the United Nations or the Orga-nization of American States;153 or, the work comes within the scope of aPresidential proclamation.154

The 1976 Copyright Act defines the pivotal term “treaty party” as a “coun-try or intergovernmental organization other than the United States that isa party to an international agreement.”155 The Act defines “internationalagreement” to include the Berne Convention, the Universal Copyright Con-vention, the WTO Agreement, the Geneva Phonograms Convention, theWIPO Copyright Treaty, the WIPO Performances and Phonograms Treaty,and “any other copyright treaty to which the United States is a party.”156 Itis unclear whether the definition’s concluding category, “any other copyrighttreaty,” refers to all of the preceding treaties listed, such as the PhonogramsConvention, or refers only to those treaties such as the Berne and Univer-sal Copyright Conventions that literally deal with copyright. The most plau-sible construction of the category is that it refers to all of the treaties in-cluded in the definition with the exception of the WTO Agreement, whichis neither a treaty nor exclusively concerned with copyright and relatedrights. This construction would effectively bring within section 104’s ambitnot only past bilateral copyright treaties, but also future neighboring rightstreaties.

§4.2.2.1. Nationality or Domicile

Section 104(b) (1) of the 1976 Copyright Act makes nationality and domi-cile points of attachment for protection under the Act. A work will be sub-ject to protection if one or more of a work’s authors is a U.S. national or do-miciliary.157 For example, in the case of a co-authored work, the work willbe protected under the 1976 Act so long as one of the authors is a U.S. na-

151. U.S. 1976 Copyright Act §104(b) (3).152. U.S. 1976 Copyright Act §104(b) (4).153. U.S. 1976 Copyright Act §104(b) (5).154. U.S. 1976 Copyright Act §104(b) (6).155. U.S. 1976 Copyright Act 9101 (definition of “treaty party”).156. U.S. 1976 Copyright Act §101 (definition of “international agreement”).157. The 1976 Copyright Act does not define “domiciliary” but presumably connects the

term to the definition of domicile generally employed in U.S. jurisprudence. See, e.g., BryanGarner, ed., Black’s Law Dictionary 435 (5th ed. 1979) (“The place where a man has his true,fixed, and permanent home and principal establishment, and to which whenever he is ab-sent he has the intention of returning.”) See also G. Ricordi & Co. v. Columbia Gramophone Co.,258 F. 72–74 (S.D.N.Y. 1919).


tional or domiciliary.158 If none of the work’s authors is a U.S. national ordomiciliary, the work will nonetheless be subject to protection if, on the dateof the work’s first publication, one or more of the authors is “a national,domiciliary, or sovereign authority of a treaty party.” If one or more authorsis a “stateless person,” the work will be subject to protection regardless ofthe author’s domicile.159

What law controls the question of authorship for purposes of determiningwhether a point of attachment exists under section 104(b) (1)? The questionhas practical significance in the case of works created in the course of anemployment relationship where the employer is a national or domiciliary ofone country and the employee is a national or domiciliary of another. If U.S.law controls, the 1976 Copyright Act’s work for hire provisions may makethe employer the author for purposes of determining whether there is a pointof attachment. If, however, the law of the work’s country of origin controls,and that law recognizes only flesh-and-blood authors, the employee wouldbe the considered work’s author. Although the answer is not free from doubt,the weight of authority suggests that the law of the work’s country of originshould control the determination of authorship for these purposes.160 In anyevent, it is the nationality or domicile of the work’s author, and not the na-tionality or domicile of the work’s copyright owner, that governs the work’seligibility for protection under section 104(b) (1).161 Specifically, if the work’sauthor is a national or domiciliary of the United States or of a qualifying for-eign country on the date of first publication, the Act will protect the workeven though the copyright owner is not a national or domiciliary of theUnited States or of a qualifying foreign country.

§4.2.2.2. Place of Publication

A work’s first publication in the United States or in a foreign country that isa treaty party on the date of first publication will qualify the work for U.S.copyright protection under section 104(b) (2) of the 1976 Copyright Act.

158. The U.S. 1909 Copyright Act, which governs works first published before January 1,1978, did not expressly protect works of which only one co-author was a U.S. national ordomiciliary. Nonetheless, the Act may have implicitly protected such works. See, e.g., G. Ricordi& Co. v. Columbia Graphophone Co., 258 F.72, 75 (S.D.N.Y. 1919) (alternative holding).

159. The U.S. 1909 Copyright Act, which governed works published before January 1,1978, did not expressly protect works authored by stateless persons. Nonetheless, at least onecourt has held that works by stateless persons qualified for protection under the Act. SeeHoughton Mifflin Co. v. Stackpole Sons, Inc., 104 F.2d 306, 308, 42 U.S.P.Q. 96 (2d Cir.), cert.denied, 308 U.S. 597, 43 U.S.P.Q. 521 (1939).

160. See §3.3.2.1.A, above.161. See, e.g., Bong v. Alfred S. Campbell Art Co., 214 U.S. 236, 245–247 (1909) (construing

Act of March 3, 1891).



As amended on October 28, 1998, by the Digital Millennium CopyrightAct,162 section 104(b) provides that, for purposes of section 104(b) (2), “awork that is published in the United States or a treaty party within 30 daysafter publication in a foreign nation that is not a treaty party shall be con-sidered to be first published in the United States or such treaty party, as thecase may be.”

The determination whether first publication constitutes a point of attach-ment entitling a work to protection under U.S. law requires consideration ofthe conditions that the U.S. Copyright Act imposed for this point of attachmenton the date the work was first published. Between March 1, 1989, the effectivedate of the Berne Implementation Act, and October 28, 1998, the effective dateof the Digital Millennium Copyright Act’s amendment of section 104(b), thethirty-day grace period applied only to “Berne Convention works,” defined inpart as a “work first published in a nation adhering to the Berne Convention,or . . . simultaneously first published in a nation adhering to the Berne Con-vention and in a foreign nation that does not adhere to the Berne Conven-tion.”163 Between January 1, 1978, the effective date of the 1976 CopyrightAct, and March 1, 1989, there was no provision for a grace period for this pointof attachment. Since the 1909 Copyright Act did not make first publication inthe United States a basis for protection at all, the first publication in the UnitedStates of a work by a foreign author before January 1, 1978, did not constitutea point of attachment entitling the work to protection.

§4.2.2.3. Presidential Proclamation

Like the 1909 Copyright Act, the 1976 Copyright Act extends copyright toforeign works that come within the scope of a Presidential proclamation thatthe work’s country of origin has complied with a requirement or require-ments imposed by the United States. Where the 1909 Act required a findingthat the country of origin gave national or reciprocal treatment to U.S. works,or was party to a reciprocity-based treaty to which the United States couldadhere,164 the 1976 Act requires a finding of national treatment alone:“Whenever the President finds that a particular foreign nation extends, toworks by authors who are nationals or domiciliaries of the United States orto works that are first published in the United States, copyright protectionon substantially the same basis as that on which the foreign nation extendsprotection to works of its own nationals and domiciliaries and works firstpublished in that nation, the President may by proclamation extend protec-tion under this title to works of which one or more of the authors is, on the

162. Pub. L. 105–304, 112 Stat. 2862 (Oct. 28, 1998).163. U.S. 1976 Copyright Act §101 (definition of “Berne Convention work”) (repealed).164. U.S. 1909 Copyright Act §9(b).


date of first publication, a national, domiciliary, or sovereign authority of thatnation, or which was first published in that nation.”165

A Presidential proclamation is both a necessary and a sufficient conditionto protection under section 104(b) (6) of the 1976 Copyright Act and thepredecessor provision of the 1909 Act. Even if the foreign country meets theconditions required for the necessary Presidential finding, this fact alone willnot provide a point of attachment; the Presidential proclamation must issuefor a point of attachment to exist.166 Similarly, the issuance of a Presidentialproclamation concludes the question of the foreign country’s compliancewith the statutory standards, and a court will not look behind a proclama-tion to determine whether in fact the standards have been met.167 An opinionof the U.S. Attorney General has concluded both that the proclamationshould identify the date on which the foreign country met the conditionsprescribed by the statute, and that the copyright owner of the foreign workcan recover for infringements occurring after that date.168

§4.2.2.4. Place of Fixation

Section 104(b) (3) of the 1976 Copyright Act, added by the 1998 Digital Mil-lennium Copyright Act amendments, provides as a point of attachment that“the work is a sound recording that was first fixed in a treaty party.” Sincesection 102 of the 1976 Copyright Act assimilates sound recordings to otherforms of copyright subject matter, this provision represents an additional,rather than an exclusive, point of attachment for sound recordings. For ex-ample, a sound recording first published in the United States or in a treatycountry will similarly enjoy a point of attachment under section 104(b).

Under section 104(b) (4) of the 1976 Copyright Act, a pictorial, graphic,or sculptural work will be entitled to protection in the United States if it isincorporated in a building or other structure located in the United States orin a treaty party; architectural works embodied in a building receive the sametreatment. Like section 104(b) (3)’s extension of a special point of attach-ment in the case of sound recordings, this point of attachment supplementsthe points of attachment prescribed in the other provisions of section 104(b).For example, a mural created by a national of a treaty party and installed ina building located in another treaty party will be entitled to protection

165. U.S. 1976 Copyright Act §104(b) (6).166. See Bong v. Alfred S. Campbell Art Co., 214 U.S. 236 (1909). See also Chappell & Co. v.

Fields, 210 F. 864 (2d Cir. 1914).167. See Chappell & Co. v. Fields, 210 F. 864, 866 (2d Cir. 1914).168. See 29 Ops. Atty Gen. 64, 70–72 (1911). Proclamations made under the 1909 Act

continue in force according to their terms under the 1976 Act. See 1976 U.S. Copyright ActTransitional & Supplementary Provisions §104.



under section 104(b) (1) as well as under section 104(b) (4). Although theprovision conforms U.S. copyright law to the requirements of the Berne Con-vention, 1971 Paris Act,169 it extends to all treaty parties and not just to thosethat are members of the Berne Union.

§4.2.2.5. U.N. and O.A.S. Works

Section 104(b) (5) provides protection for works “first published by the UnitedNations or any of its specialized agencies, or by the Organization of Ameri-can States.” According to the authoritative House Report on the 1976 Copy-right Act, this point of attachment represents a treaty obligation of the UnitedStates. “Under the Second Protocol of the Universal Copyright Convention,protection under U.S. Copyright law is expressly required for works publishedby the United Nations, by U.N. specialized agencies, and by the Organizationof American States.”170 The provision first appeared in the 1976 CopyrightAct and consequently offers a point of attachment only for works first pub-lished on or after January 1, 1978, the Act’s effective date.

§4.2.2.6. Retroactive Protection for Works Lackinga Point of Attachment

Section 104A of the 1976 Copyright Act, as amended by the 1994 UruguayRound Agreements Act, restores U.S. copyright to qualifying foreign worksthat forfeited copyright for any one or more of several reasons, includingfailure to meet the national eligibility requirements earlier imposed by U.S.law.171 Copyright in the restored work “shall subsist for the remainder of theterm of copyright that the work would have otherwise been granted in theUnited States if the work never entered the public domain in the UnitedStates.”172 An Administrative Action Statement on the Uruguay RoundAmendments gives as an example of restoration of copyright under section104A “a Chinese play from 1983 will be protected until December 31st of thefiftieth year after the year in which the author dies.”173

169. Berne Convention, 1971 Paris Text, Art. 4(b).170. U.S. House Report 58.171. Section 104A(h) (6) defines “restored work” to include not only works that fell into

the public domain for lack of national eligibility, but also for noncompliance with copyrightformalities such as affixation of copyright notice and renewal of copyright term, and for lackof subject matter protection in the case of sound recordings fixed before February 15, 1972.

172. U.S. 1976 Copyright Act §104A(a) (1) (3).173. Uruguay Round Agreements Act, Statement of Administrative Action, Pub. L. No. 103–

465, 1994 U.S.C.A.A.N. 4040, 4290.


For copyright in a work to be restored under section 104A, the work mustmeet three requirements: it cannot be in the public domain in its source coun-try through expiration of its term of protection there;174 it must have at leastone author or rightholder “who was, at the time the work was created, anational or domiciliary of an eligible country”;175 and, if the work was pub-lished, it must have been “first published in an eligible country and not pub-lished in the United States during the 30-day period following publication insuch eligible country.”176 The Act defines “eligible country” to include anation other than the United States that becomes a member of the WorldTrade Organization after the date of enactment of the Uruguay Round Agree-ments Act; that is a member of the Berne Union; that, effective upon the entryinto force with respect to the United States, has adhered to the WIPO Copy-right Treaty or the Performances and Phonograms Treaty; or that becomessubject to a Presidential proclamation.177 Restored copyrights vest automati-cally on the date of restoration—January 1, 1996, in the case of works whosesource country was, on that date, a member of the World Trade Organiza-tion or of the Berne Union.178

§4.2.3. Moral Rights and Neighboring Rights

Moral rights and neighboring rights in the United States are variously pro-tected under federal and state law. Federal law, for example, protects themoral right of integrity through the Copyright Act’s grant of an exclusivederivative right in section 106179 and section 106A’s special provision forauthors of works of visual art,180 as well as under federal unfair competi-tion law.181 An assortment of state law doctrines—defamation, privacy,publicity, contract, unfair competition—can also protect reputational in-terests in a work’s integrity, as may state legislation protecting fine art.182

The distinction between state and federal law is important, since some, butnot all, federal law in this area imposes conditions on protection for for-eign works, while state law requires no point of attachment. For a work of

174. U.S. 1976 Copyright Act §104A(h) (6) (B).175. U.S. 1976 Copyright Act §104A(h) (6) (D).176. U.S. 1976 Copyright Act §104A(h) (6) (D).177. U.S. 1976 Copyright Act §104A(h)) (3).178. U.S. 1976 Copyright Act §104A(h) (2) (A). In the case of any other source country of

the restored work, the date of restoration is the date of the country’s adherence to the BerneConvention or membership in the WTO, or the date of the relevant Presidential proclama-tion. §104A(h) (2) (B).

179. U.S. 1976 Copyright Act §106(2).180. U.S. 1976 Copyright Act §106A(a) (3).181. 15 U.S.C. §1125 (a) (1).182. See §5.4.2.2, below.



foreign origin to enjoy derivative rights under section 106, or protectionunder section 106A, it must meet the conditions imposed by section 104.By contrast, neither federal unfair competition law nor any of the appli-cable state law doctrines imposes any conditions on protection of foreignauthors or works.

Moral rights other than the right of integrity are also protected under fed-eral and state law in the United States. Section 106A of the 1976 Copy-right Act protects the right of attribution, but only in the case of qualify-ing works of visual art, and only if the work has a point of attachment undersection 104 of the 1976 Copyright Act. Federal and state unfair competi-tion doctrines, and contract and tort rules, offer less rigorous protectionfor the attribution right but do not require a point of attachment. The moralright of disclosure is substantially embodied in the 1976 Act’s exclusiveright of distribution to the public,183 and the right of withdrawal is partiallyeffected by the Act’s provision for termination of transfers.184 Both provi-sions require compliance with section 104’s conditions for protection inthe United States.

Federal copyright law in the United States encompasses rights and sub-ject matter that in many other countries are protected under doctrines ofneighboring rights. The 1976 Copyright Act confers limited rights on per-formers and record producers who fix their sound recordings in phono-records. Broadcasters also enjoy protection for their contributions underthe Copyright Act. Because these works come within the Copyright Act,they must, to be protected, meet the conditions imposed by section 104.Unfixed works, which are generally protected under the state law doctrineof common law copyright, do not require a point of attachment to qualifyfor protection in the United States. Federal antibootlegging provisions, en-acted as part of the implementation of the TRIPs Agreement in U.S. law,185

augment state law protection of unfixed works by imposing civil and crimi-nal liability on the unauthorized fixation, distribution, or transmission of“the sounds or sounds and images of a live musical performance in a copyor phonorecord186 and impose no conditions of nationality or domicile onprotection.

183. U.S. 1976 Copyright Act §106(3).184. U.S. 1976 Copyright Act §§203, 304(c).185. Pub. L. No. 103–465, 108 Stat. 4809 (1994).186. 17 U.S. Code §1101.

§5

protection under copyright

and neighboring rights

157

§5.1SUBJECT MATTER

Copyright systems around the world have historically protected a wide arrayof intellectual productions created through traditional forms of individualauthorship. Novels, dramas, and poems have long come within copyrightsubject matter, as have musical compositions, paintings, drawings, andprints. However, legislation varies from country to country in the treatmentof less traditional forms of creative productions, particularly those that areconnected to industrial technology and are the product of team effort ratherthan individual authorship. Industrial design, for example, often receivesspecial treatment because its connection to technological arts places it in aborderland between copyright and patent. Many countries treat sound re-cordings specially because of the technological means essential to their cre-ation. Another reason for treating productions such as industrial design andsound recordings differently is that they are characteristically the productof collaborative, rather than individual, creativity.

Civil law countries have generally, but not consistently, consigned pro-tection of collaborative technological productions to regimes of neighbor-ing rights. Common law countries, with their utilitarian emphasis on theproducts rather than the processes of creative work, have generally, butnot consistently, included these productions in the subject matter of copy-right, alongside such traditional objects as novels and musical works. TheU.S. Copyright Act, for example, includes broadcasts and all forms of perfor-mance, not just sound recordings, among its copyrightable works, givingthem the same term of protection as it does more traditional classes of copy-

158 Protection Under Copyright and Neighboring Rights

right subject matter.1 The 1988 Copyright, Designs and Patents Act in theUnited Kingdom characterizes sound recordings, broadcasts, and the typo-graphical format of published works as full-fledged copyrightable works;however, the Act identifies the authors of these works differently than it doesthe authors of more traditional works, and it extends a shorter term of pro-tection to them.

Because important questions, such as the availability of protection for for-eign works as well as ownership, term of protection, and rights, may turnon whether a production comes within copyright or some other system, it isimportant in any case to determine the classification that the protectingcountry employs. At the same time, it is impossible to predict with confidencewhether a national legislature will decide to bring a new form of subjectmatter into copyright or leave it to some other system of protection. Com-puter programs, for example, are both technological and collaborative prod-ucts and, during their early history, were widely thought to be the naturalobject of sui generis protection; indeed, at one time there was a concertedmovement in this direction both on the European continent and in Japan.Nonetheless, by the 1990s, copyright protection for computer programs asliterary works had become an international norm within the framework ofthe Berne Convention, Paris Act.2

The Berne Convention has proved sufficiently flexible to accommodatethe relatively expansive notions of common law countries about protectiblesubject matter, while leaving it to other treaties to secure internationalnorms for the subject matter that civil law countries generally consign toneighboring rights. The International Convention for the Protection ofPerformers, Producers of Phonograms and Broadcasting Organizations,commonly called the Rome Convention, prescribes minimum standards forrights in performances, phonograms and broadcasts.3 (The United States,which is not a party to the Rome Convention, protects this subject matterunder copyright, although without the minimum rights prescribed by theRome Convention.) Neighboring rights are also protected under the 1996WIPO Performances and Phonograms Treaty,4 the 1971 Geneva Phono-grams Convention,5 the 1974 Brussels Satellite Convention,6 and Article 14of the TRIPs Agreement.7

1. See §5.1.2, below.2. See TRIPs Agreement Art. 10(1); WIPO Copyright Treaty Art. 4.3. See §2.2.1, above.4. See §2.2.3, above.5. See §2.2.2, above.6. See §2.2.4, above.7. See §2.3.2, above.

§5.1.1. Literary and Artistic Works

Article 2(1) of the Berne Convention’s Paris Text defines “literary and artis-tic works” in the most encompassing terms, to “include every production inthe literary, scientific, and artistic domain, whatever may be the mode orform of its expression.”8 Every country that has adhered to the Paris Text orto the TRIPs Agreement, which in Article 9(1) incorporates the Berne ParisText by reference,9 has effectively obligated itself to protect “literary andartistic works” within Berne’s expansive terms:

. . . every production in the literary, scientific and artistic domain, whatevermay be the mode or form of its expression, such as books, pamphlets and otherwritings; lectures, addresses, sermons and other works of the same nature;dramatic or dramatico-musical works; choreographic works and entertain-ments in dumb show; musical compositions with or without words; cinemato-graphic works to which are assimilated works expressed by a process analo-gous to cinematography; works of drawing, painting, architecture, sculpture,engraving and lithography; photographic works to which are assimilated worksexpressed by a process analogous to photography; works of applied art; illus-trations, maps, plans, sketches and three-dimensional works relative to geog-raphy, topography, architecture or science.10

Article 2 of the Berne Paris Text further requires protection for derivativeworks, such as translations and adaptations,11 and collective works, suchas encyclopedias and anthologies, “which, by reason of their selectionand arrangement of their contents, constitute intellectual creations.”12 Inaddition to effectively incorporating the Berne Convention’s definition ofprotected subject matter, the TRIPs Agreement requires member statesto protect computer programs and original compilations of data or othermaterial.13

Article 2’s encompassing terms are open to varying interpretations fromone country to another. Further, Article 2 establishes a floor, not a ceil-ing, to protectible subject matter, and leaves member countries free to addother categories. The U.S. Copyright Act, for example, protects sound re-cordings, broadcasts, and other fixed performances as copyrighted works.14

Article 2(8) of the Convention is, however, explicit that the “protection of

8. Berne Convention, 1971 Paris Text, Art. 2(1).9. TRIPs Agreement Art. 9(1).10. Berne Convention, 1971 Paris Text, Art. 2(1).11. Berne Convention, 1971 Paris Text, Art. 2(3).12. Berne Convention, 1971 Paris Text, Art. 2(5). See also WIPO Copyright Treaty Art. 3.13. TRIPs Agreement Art. 10. See also WIPO Copyright Treaty Arts. 4, 5.14. United States, 1976 Copyright Act §102(a).



this Convention shall not apply to news of the day or to miscellaneous factshaving the character of mere items of press information.”15

§5.1.1.1. Protectible Subject Matter

National legislation typically emulates the Berne Convention’s generousdefinition of “literary and artistic works” as “every production in the liter-ary, scientific, and artistic domain, whatever may be the mode or form of itsexpression.”16 The determination whether a literary or artistic creationprotectible under the law of one country will constitute protectible subjectmatter under foreign legislation requires inquiry, first, into whether the ex-pression comes within one of the subject matter categories prescribed by theforeign legislation17 and, if it does, whether the subject matter meets the for-eign law’s minimum qualitative standards.18

National laws usually impose not only a floor but also a threshold to pro-tection. From the start, Berne’s reference to every production in the “scien-tific” domain did not literally include technological inventions, which werethe subject of the roughly contemporaneous Paris Convention for the Pro-tection of Industrial Property.19 “Science” in nineteenth-century usage gen-erally meant “knowledge,” and this was presumably what Berne’s framershad in mind when they used the term.20 Similarly, Article 2’s use of the term“every production” cannot be divorced from the object stated in Article 1—“protection of the rights of authors”21 —or from the premise that only trulyauthorial works are ensured protection. Although the Berne Conventionnowhere defines “author” or “work,” commentators generally agree that,as Adolf Dietz put it, “the jus conventionis has been founded on the concept ofauthor in the sense of the natural person who has created the work, as philo-sophical, semantic and systematic arguments show.”22

15. Berne Convention, 1971 Paris Text, Art. 2(8).16. Berne Convention, 1971 Paris Text, Art. 2(1).17. See §5.1.1.1.B, below.18. See §5.1.1.1.A, below. If the literary or artistic creation fails either requirement, it may

nonetheless qualify for protection under one or more neighboring rights.19. Paris Convention for the Protection of Industrial Property of March 20, 1883.20. Berne’s drafters evidently borrowed the term from earlier bilateral conventions. See

Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 232 (1987). In current parlance, the term is certainly surplusage, for, as ProfessorRicketson points out, “[T]he adjective ‘scientific’ in the context of ‘literary and artistic works’seems unnecessary, as works concerned with scientific matters will invariably be either liter-ary productions (a written description of an experiment, process, device, or the like) or artis-tic productions (diagrams, drawings, illustrations).” Id.

21. Berne Convention, 1971 Paris Text, Art. 1 (emphasis added).22. Adolf Dietz, The Concept of Author Under the Berne Convention, 155 R.I.D.A. 2, 10–

12 (1993) (footnote omitted). See also Sam Ricketson, The Berne Convention for the Protection

a. standards for protection

The normal standard for protection of literary and artistic works, appliedacross both common law and civil law systems, is that the work distinctivelybe the product of its author’s efforts and not copied from some other work orworks. This nearly universal emphasis on authorial presence as the standardfor protection explains the widespread assumption that the Universal Copy-right Convention,23 no less than the Berne Convention,24 predicates protec-tion for the product of human intellect and creativity.25

Countries following the common law tradition characteristically phrasethe test in terms of originality, to connote that the work originated with itsauthor and no one else.26 The U.S. Supreme Court has ruled that “[t]he copy-right of the book, if not pirated from other works, would be valid withoutregard to the novelty, or want of novelty, of its subject matter.”27 Accordingto a 1916 English Chancery decision, “[t]he originality which is requiredrelates to the expression of the thought. But the Act does not require thatthe expression must be in an original or novel form, but that the work mustnot be copied from another work—that it should originate from the author.”28

In much the same way, courts in civil law countries usually look for someimprint of the author’s personality. The German legislation, for example,requires that the work be a “personal intellectual creation,”29 and the Ital-

of Literary and Artistic Works: 1886–1986 159 (1987); Wilhelm Nordemann, Kai Vinck, PaulW. Hertin, & Gerald Meyer, International Copyright and Neighboring Rights Law: Commentarywith Special Emphasis on the European Community 48–49 (1990); David Vaver, The NationalTreatment Requirements of the Berne and Universal Copyright Conventions (Part 1), 17 I.I.C.,577, 592 (1986). But see Stephen M. Stewart & Hamish Sandison, International Copyright andNeighbouring Rights, 113–114 (2d ed. 1989) (“Common law legislations and others influencedby them recognise legal entities . . . as original right owners.”).

23. Universal Copyright Convention, 1971 Paris Text, Art. I.24. Berne Convention, 1971 Paris Text, Arts. 1, 2.25. See generally Arpad Bogsch, The Law of Copyright Under the Universal Convention 7 (3d

rev. ed. 1968); Wilhelm Nordemann, Kai Vinck, Paul W. Hertin, & Gerald Meyer, InternationalCopyright and Neighboring Rights Law: Commentary with Special Emphasis on the European Com-munity 43 (1990).

26. See, e.g., United Kingdom, Copyright Designs and Patents Act 1988 §1(1)(a) (“originalliterary, dramatic, musical or artistic works”); Canada, Copyright Act §4(1) (“original liter-ary, dramatic, musical and artistic work”), DRG Inc. v. Datafile Ltd. (1987) 18 C.P.R. (3d) 538,550, 27 C.I.P.R. 136 (Fed. Ct.), aff’d (1991) 35 C.P.R. (3d) 243 (Fed. C.A.) (holding that a sys-tem of color-coded labels for file folders satisfied the originality requirement of the CanadianCopyright Act because the creator made a substantial innovation); Australia, 1991 CopyrightAmendment Act §32 (“original literary, dramatic, musical or artistic work”).

27. Baker v. Selden, 101 U.S. 99, 102 (1879).28. University of London Press, Ltd. v. University Tutorial Press, Ltd. [1916] 2 Ch. 601, 608–

609.29. Germany, Copyright Act §2(2) (1993) (“Personal intellectual creations alone shall con-

stitute works within the meaning of this Law.”). See generally Gerhard Schricker, Copyright



ian legislation contemplates “[i]intellectual works having a creative char-acter.”30 The Continental requirement of an authorial impress should not,however, be mistaken for a particularly elevated standard of originality.German law protects such so-called kleine Münze, or “small change,” as op-erating instructions31 and headnotes for judicial decisions,32 and the DutchCopyright Act’s protection for “all other writings” together with “books,pamphlets, newspapers, periodicals”33 has been interpreted to encompass“even the most banal or trivial writings,” such as radio and television list-ings, address books, and telephone directories “provided they have beenpublished or intended for publication.”34 Although French law does not ex-pressly extend protection to works possessing only a low level of originality,the tradition of substantial deference to trial court fact findings on original-ity may effectively support a lower standard from case to case.35

General agreement also exists on what elements are not required for a workto be protected. A work need not be novel in the sense that it did not existbefore it was created by the author. For example, as Professor Jane Ginsburghas observed, under the French test for originality, “it is possible to have twoidentical protected works, so long as they were independently created.”36

Similarly, in the United States, Judge Learned Hand captured the essence ofthis rule in his observation that “if by some magic a man who had neverknown it were to compose anew Keats’s Ode on a Grecian Urn, he would bean ‘author,’ and, if he copyrighted it, others might not copy the poem, thoughthey might of course copy Keats’s.”37 Courts will not as a rule inquire into awork’s aesthetic merit38 or into its objects; they will judge the work strictlyon the author’s contribution and not the ends—aesthetic or otherwise—to

Protection for Advertising Ideas, Concepts and Campaigns Under German Law, 28 I.I.C. 477,484–85 (1997).

30. Italy, Copyright Act Art. 1.31. Bedienungsanweisung (“Operating Instructions”), German Federal Supreme Court,

Oct. 10, 1991 (Case No. I ZR 147/89), 23 I.I.C. 846 (1992).32. Leitsätze (“Headnotes”), Nov. 21, 1991, German Federal Supreme Court (Case No. I

ZR 190/89), 24 I.I.C. 668 (1993).33. Netherlands, Copyright Act Art. 10(1).34. P. Bernt Hugenholtz, Dutch Copyright Law, 1990–1995, 169 R.I.D.A. 129, 135 (1996).35. See André Françon, News from France, 165 R.I.D.A. 94, 112–114 (1995).36. Jane C. Ginsburg, French Copyright Law: A Comparative Overview, 36 J. Copr. Soc’y

269, 274 (1989). See also Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., 3C.P.R. (3d) 81 (B.C.) (1984) (holding that an advertising brochure was copyrightable eventhough it was composed of elements that have been used by other advertisers).

37. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir.), cert. denied, 298U.S. 669 (1936).

38. See, e.g., Jane Ginsburg, French Copyright Law: A Comparative Overview, 36 J. Copr.Soc’y 269, 274 (1989); “Photograph,” Supreme Court of Belgium (April 27, 1989), 22 I.I.C. 272(1991). See also WIPO, Guide to the Berne Convention for the Protection of Literary and ArtisticWorks (Paris Act, 1971) 13 (“It is generally agreed that the value or merit of a work, essentially

which he applies it.39 At one time in the United States, courts required someshowing of aesthetic merit as a condition to copyright. But in 1903, in a caseinvolving circus posters, the Supreme Court rejected such a qualitative thresh-old on the ground that “[i]t would be a dangerous undertaking for personstrained only to the law to constitute themselves final judges of the worth ofpictorial illustrations.”40 Products of utilitarian design represent the princi-pal exception to this general rule, possibly because the absence of a unified,sustaining rationale for this subject matter has opened the door to subjec-tive judgments on aesthetic quality.41

The generalized standard of originality applies to all classes of literary andartistic works, from high art to lowly directories, catalogues, and instruc-tion manuals. Because, however, factual works like catalogues draw soheavily on unprotectible data, and because functional works like instructionmanuals must, if they are to have any value, precisely track relevant scien-tific principles or technological requirements, courts in both civil law andcommon law countries scrutinize these classes of subject matter with par-ticular care. In Feist Publications, Inc. v. Rural Telephone Service Co.,42 theU.S. Supreme Court rejected copyright protection for alphabetized telephonedirectory white pages and ruled that, although originality traditionally“means only that the work was independently created by the author (asopposed to copied from other works),” it also requires, in cases such as these,that the work possess “at least some minimal degree of creativity.”43 TheCourt noted, however, that “the requisite level of creativity is extremely low;even a slight amount will suffice.”44 In a 1997 decision, the Canadian Fed-eral Court of Appeal withheld protection from an arrangement of telephonedirectory yellow pages, giving persuasive weight to the Feist decision asauthority under the requirement imposed by the North American Free TradeAgreement that compilations of data or other material that, by reason of the

a subjective value judgement, is also of no account; in trying a case, for example, the judgedoes not have to appreciate the artistic merits or cultural advantages of a work.”).

39. See, e.g., Caroline Carreau, Merit and Copyright, 109 R.I.D.A. 13 (1981); Sam Ricketson,The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986, 231 (1987);WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act,1971) 13 (1978) (“[the work] may be produced for purely educational purposes or with amerely utilitarian or commercial aim, without this making any difference to the protection itenjoys”). See also France, Intellectual Property Code Art. L. 112–1 (“The provisions of thisCode shall protect the rights of authors in all works of the mind, whatever their kind, form ofexpression, merit or purpose.”).

40. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).41. See §5.1.1.1.B(viii), below.42. 499 U.S. 340 (1991).43. 499 U.S. at 345.44. 499 U.S. at 345.



selection or arrangement of their contents constitute intellectual creations,shall be protected as such.45

Creativity as an element of the originality requirement has a longer his-tory in civil law than in common law countries. Germany at one time com-monly applied a higher standard of creativity to works, such as directoriesand computer programs, that occupy the margins of traditional author-ship.46 The Dutch Supreme Court has similarly imposed on the collection ofwords in a dictionary the stringent test that it “result from a selection pro-cess expressing the author’s views”;47 one commentator has observed theanomaly of such a strict standard under Dutch copyright law which else-where regularly protects nonoriginal writings.48 But, particularly in the Eu-ropean Union, the trend is toward a uniform standard, and in these coun-tries if any categorical difference exists between factual or functional worksand the more elevated fare of copyright, it is in which party effectively bearsthe burden of proof on originality.49 In the usual case, the defendant bearsthe burden of disproving originality; by contrast, in the case of factual andfunctional works, the plaintiff may bear the burden of proving originality.50

Art reproductions and restorations present a particularly thorny challengeto the originality requirement. It can require considerable craft, and possi-bly some art, to recreate a work of fine art exactly. Yet the greater thecraftsman’s exactitude, the greater is the distance between his copy and eventhe most minimal originality standard requiring that the copyright claim-ant not copy from the original. One court in the United States upheld copy-right in a scaled-down reproduction of Auguste Rodin’s “Hand of God” onthe ground that “great skill and originality” were needed to “produce a scale

45. Tele-Direct (Publications) Inc. v. American Business Information, Inc. 76 C.P.R. 3d 296,303–304, (1997), rev. denied, 1998.

46. See, e.g., Inkasso-Programm (“Collection Program”), German Federal Supreme Court,May 9, 1985 (Case No. I ZR 52/83), 17 I.I.C. 681, 688 (1986). See generally Gerhard Schricker,Farewell to the “Level of Creativity” (Schöpfungshöhe) in German Copyright Law, 26 I.I.C. 41(1995).

47. Van Dale v. Romme, Hoge Raad, Jan. 4, 1991, [(English trans. in E.J. Dommering & P.B.Hugenholtz, eds., Protecting Works of Fact 93 (1991)]. See also Ivan Cherpillod, News fromSwitzerland, 160 R.I.D.A. 132, 138–142 (1994) (“[W]here the creative freedom enjoyed bythe author is limited, copyright protection will be granted even if there is only a small degreeof creative activity.”).

48. P. Bernt Hugenholtz, Dutch Copyright Law, 1990–1995, 169 R.I.D.A. 129, 169 (1996).49. Id.Professor Schricker cites as examples of European harmonization in the direction of a uni-

form originality standard, computer programs in the 1991 Software Directive; photographyin the case of the 1993 Term Directive, and databases in the case of the Database Directive,then in draft form. Gerhard Schricker, Farewell to the “Level of Creativity” (Schöpfungshohe)in German Copyright Law, 26 I.I.C., 44–45, (1995).

50. See, e.g., Fédération Française de Randonnée Pédestre v. Editions Franck Mercier, Court ofCassation, 1st Civil Chamber, June 30, 1998, 178 R.I.D.A. 236 (1998).

reduction of a great work with exactitude.”51 An Italian court offered a moresubtle rationale for protecting the work of an art restorer. As interpreted byProfessor Fabiani, who likened the work of a restorer “to that of an authorwho completes a work which was left unfinished by its original author,” thebasic condition for granting protection was that “through work of a very highstandard, implying artistic and cultural knowledge of a creative nature whichgave the work a quid novi, it could be made accessible to the public again.”52

b. classes of subject matter

The extensive, but not comprehensive, list of the classes of works to be pro-tected under Article 2(1) of the Berne Paris Text53 and the terser list underArticle I54 of the U.C.C. Paris Text describe only a minimum,55 and mem-bers are free to add new categories of protectible works. Nonetheless, thereis a contemporary tendency, when extending copyright protection to newforms of subject matter, to assimilate the new forms to existing categories ofworks. Computer programs, for example, have been widely assimilated toliterary works,56 with both the TRIPs Agreement and the WIPO CopyrightTreaty characterizing computer programs as at least comparable to literaryworks under the Berne Convention.57 The Berne categories themselves havebeen expanded over time to add new classes of subject matter, such as ar-chitectural works, added by the 1908 Berlin text and cinematographic worksadded by the 1948 Brussels text.

(i) Literary Works. Courts and legislatures generally give a broad defini-tional scope to the “books, pamphlets and other writings”58 specified in theBerne Convention and the “writings”59 specified in the Universal CopyrightConvention. The German Author’s Rights Act covers “works of language,such as writings, speeches and computer programs,”60 and the French Act

51. Alva Studios, Inc. v. Winninger, 177 F. Supp. 265, 267 (S.D.N.Y. 1959).52. Mario Fabiani, News from Italy, 161 R.I.D.A. 160, 180–181 (1994).53. Berne Convention, 1971 Paris Text, Art. 2(1).54. Universal Copyright Convention, 1971 Paris Text, Art. I.55. Berne Convention, 1971 Paris Text Art. 2(6) makes this point explicit by providing that

“[t]he works mentioned in this Article shall enjoy protection in all countries of the Union.”56. See §5.1.1.1.B(vii), below.57. TRIPs Agreement Art. 10(1); WIPO Copyright Treaty Art. 4. Where the TRIPs Agree-

ment states that “[c]omputer programs, whether in source or object code, shall be protectedas literary works under the Berne Convention (1971),” the WIPO Copyright Treaty states that“[c]omputer programs are protected as literary works within the meaning of Article 2 of theBerne Convention.”

58. Berne Convention, 1971 Paris Text, Art. 2(1).59. Universal Copyright Convention, 1974 Paris Text, Art. I.60. Germany, Copyright Act Art. 2(1).



lists “[b]ooks, pamphlets and other literary, artistic and scientific writings”and “[l]ectures, addresses, sermons, pleadings and other works of such na-ture.”61 The United Kingdom’s 1988 Copyright, Designs and Patents Actprotects as literary works “any work, other than a dramatic or musical work,which is written, spoken or sung.”62 The U.S. Copyright Act defines “literaryworks” as “works, other than audiovisual works, expressed in words, num-bers, or other verbal or numerical symbols or indicia, regardless of the natureof the material objects such as books, periodicals, manuscripts, phono-records, film, tapes, disks, or cards, in which they are embodied.”63

The WIPO Guide to the Berne Convention offers the most particularized in-ventory of literary works protected under the Convention: “novels, news,poems, recitations, short stories whether fictional or not, pamphlets, trea-tises or handbooks on philosophy, history and all other natural or physicalscience, almanacs, year books, programmes, guides, etc., etc., irrespectiveof their contents, their length, their purpose (entertainment, education,information, discussion, advertisement, propaganda, etc.) and their form(manuscript, typescript, printing).”64

The principal limits on protectible literary works are qualitative ratherthan quantitative, and the scope of protection they receive will usually varywith the extent to which the particular genre leaves room for creative ex-pression. Courts generally assume that there is less opportunity for originalexpression in adaptations and translations,65 in collective works, such asanthologies,66 and in utilitarian works, such as instruction manuals or com-puter programs, than there is in unfettered fiction like novels and stories, andconsequently give these works a narrow range of protection.67 It is commonlysaid that the title of a literary or other work is not protectible, but this is soprobably because titles characteristically lack sufficient expressive contentto rise above unprotectible ideas.68 Under French copyright law, for example,

61. France, Intellectual Property Code Art. L 112–2(1), (3).62. United Kingdom, Copyright, Designs and Patents Act 1988 §3(1). The provision ex-

pressly includes in this category “a table or compilation, and (b) a computer program.”63. U.S. 1976 Copyright Act §101. According to the legislative history on the Act, this

definition “includes computer data bases and computer programs to the extent that they in-corporate authorship in the programmer’s expression of original ideas, as distinguished fromthe ideas themselves.” U.S. House Report, 54.

64. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (ParisText, 1971) 13–14 (1978).

65. See §5.1.1.1.B(v), below.66. See §5.1.1.1.B(vi), below.67. See §5.1.1.1.B(vii), below.68. See, e.g., Rose v. Information Services, Ltd. [Chancery Div. 1987] F.S.R. 254 (“The

Lawyer’s Diary 1986” insufficiently expressive as title of a lawyer’s diary to qualify for copy-right); Francis Day & Hunter v. Twentieth Century Fox, 4 All E.R. 192 (1939) (holding that theuse of the title of a famous song as the title of a motion picture is an insufficient basis for aclaim of copyright infringement).

a title will be protected if it is original.69 (Unfair competition protection willoften be available where a competitor’s use of a work’s title confuses con-sumers as to source.) Similarly, as Professor Gerhard Schricker has observed,“[t]here is no uniform view on the copyrightability of advertising slogans.Mostly, copyright protection is not ruled out per se, yet copyright require-ments are regarded as difficult to meet because of the brevity of advertisingslogans.”70 Copyright law in most countries will protect a literary characterif the character is sufficiently delineated.71

(ii) Dramatic Works (Including Dance and Motion Pictures). Both the BerneConvention and the Universal Copyright Convention specify “dramatic works”as a required subject matter category,72 with the Berne convention annex-ing “dramatico-musical works” to this class. The category, which appearedin the earliest texts of both treaties, clearly encompasses traditional theatri-cal works, such as plays, operas, and musical comedies. National legislationhas given the category an expansive scope. The British legislation, for example,provides that “‘dramatic work’ includes a work of dance or mime,”73 while theFrench statute tracks Berne by providing for “[d]ramatic or [d]ramatico-musical works,”74 and the German Act presumably includes this class ofworks in “works of language” and “works of pantomime.”75 The U.S. Copy-right Act protects “dramatic works, including any accompanying music.”76

Although the U.S. Act does not define the term, judicial decisions in the UnitedStates have defined “dramatic work” to require a story consisting of plot andincident in which the actions of the characters advance the narrative.77

69. France, Intellectual Property Code Art. L. 112–4.70. Gerhard Schricker, Copyright Protection for Advertising Ideas, Concepts and Cam-

paigns Under German Law, 28 I.I.C. 477, 490–491 (1997). (“Some academics have completelyruled out copyrightability. Decisions have mostly denied copyright protection. Copyright pro-tection was rejected for ‘Hamburg goes to E.’; ‘Ja . . . Jacobi’, and also for ‘the most importantevent of the year’. Two examples where copyright protection was granted were: ‘With myForma bra, feeling smooth as a butterfly in Spring’ and ‘a heavenly bed in my hand luggage’.According to the normal standards of copyright law, protection for single words would bedenied.”) (footnotes omitted.)

71. See, e.g., de Villiers v. Soton, Court of Cassation, 1st Civil Chamber, May 5, 1993, 158R.I.D.A. 205 (1993); Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930).

72. Berne Convention, 1971 Paris Text Art. 2(1); Universal Copyright Convention, 1974Paris Text, Art. I.

73. United Kingdom, Copyright, Designs and Patents Act 1988 §3(1).74. France, Intellectual Property Code Art. L. 112–2(3).75. Germany, Copyright Act Art. 2(1)(1),(3).76. U.S. 1976 Copyright Act §102(a)(3).77. See, e.g., Universal Pictures Co. v. Harold Lloyd Corp., 162 F.2d 354, 359 (9th Cir. 1947);

Seltzer v. Sunbrock, 22 F.Supp. 621, 628–629 (S.D. Cal. 1938) (“The courts, in determiningwhat constitutes a dramatic composition, have emphatically stated that there must be astory—a thread of consecutively related events—either narrated or presented by dialogue oraction or both.”)



Choreography and pantomime, though assigned a separate category in theBerne text,78 are sometimes grouped with dramatic works under nationallegislation. The 1908 Berlin Text, which introduced the category, includeda requirement that the choreographic work or pantomime be “fixed in writ-ing or otherwise,”79 a requirement that was not dropped until the 1967Stockholm Revision, which left it to national legislation to determine whetherany class of work has to be fixed as a condition to protection.80 The 1976 U.S.Copyright Act includes “pantomimes and choreographic works” as a sepa-rate class of copyrightable subject matter and subjects them to a fixationrequirement as it does all other forms of copyright subject matter.81 Judicialdecisions under earlier copyright acts had at least suggested that pantomimesand choreographic works could qualify as dramatic works if they possessedsufficient dramatic content.82

“Cinematographic works,” to which Article 2(1) of the Berne Conventionassimilates “works expressed by a process analogous to cinematography,”include filmed or videotaped fixations of traditional dramatic works such asplays and musical comedies, but also, according to the WIPO Berne Conven-tion Guide, encompass all possible forms of filmed content, from documen-tary films to cartoons, regardless of the technical process employed.83

The WIPO Guide’s expansive construction of “cinematographic works”accurately characterizes the scope given to cinematographic works in mostif not all countries. The United Kingdom Copyright, Designs and PatentsAct defines “film” to mean “a recording on any medium from which a mov-ing image may by any means be produced. The U.S. Copyright Act broadlyprotects “motion pictures and other audiovisual works,”84 requiring onlythat the work “consist of a series of related images which are intrinsicallyintended to be shown by the use of machines or devices such as projectors,viewers or electronic equipment, together with accompanying sounds, if

78. Berne Convention, 1971 Paris Text, Art. 2(1).79. Berne Convention, 1908 Berlin Text, Art. (2)(1).80. Berne Convention, 1908 Berlin Text, Art. 2(2).81. U.S. 1976 Copyright Act §102(a)(4).82. See, e.g., Kalem Co. v. Harper Bros., 222 U.S. 55, 61 (1911); Fuller v. Bemis, 50 F. 926

(C.C.S.D.N.Y. 1892).83. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 15 (1978). See also Arpad Bogsch, The Law of Copyright Under the UniversalCopyright Convention 9 (3rd rev. ed. 1968) [“Silent or sound motion pictures shall be pro-tected irrespective of their destination (theatrical exhibition, television broadcasting, exhi-bition for a restricted group of spectators), the person of their producers (producers of com-mercial films, amateurs, broadcasting organizations producing kinescopes), their genre (filmdramas, documentaries, news-reels, etc.), length, mode of realization (filming of ‘nature,’cartoons) or technical process used (pictures on transparent films, on electronic tapes,etc.”)].

84. U.S. 1976 Copyright Act §102(a) (6).

any, regardless of the nature of the material objects, such as films or tapes,in which the works are embodied.”85

The gloss provided by the WIPO Guide may, however, exceed the width ofthis category in other countries.86 Just as some civil law countries resistedbringing photographs and other mechanical productions under their author’sright legislation, some civil law countries have only tentatively acceptedmotion pictures into the domain of literary works and even today may pro-tect them only incompletely.87 Nonetheless, the category of motion pictureshas received an expansive definition in such important centers of film pro-duction as France88 and Germany.89

(iii) Musical Works. The Berne Convention category of “musical composi-tions with or without words”90 encompasses music in its widest aspect, fromadvertising jingles to hymns, choruses, and symphonies, whether scored fora single instrument, for several, or for large orchestras.91 The Berne ParisText leaves it to local legislation to determine whether fixation should be re-quired as a condition of protection for musical works.92

Although some of the older national copyright acts defined protectiblemusic in conventional terms, invoking combinations of melody and har-mony, modern legislation generally attempts no qualitative distinctions andembraces any expression of sound. Some countries, such as France and the

85. U.S. 1976 Copyright Act §101. Section 101 defines “motion pictures” as “audiovisualworks consisting of a series of related images which, when shown in succession, impart animpression of motion, together with accompanying sounds, if any.”

86. See, e.g., Pascal Kamina, Authorship of Films and Implementation of the Term Direc-tive: The Dramatic Tale of Two Copyrights, 16 E.I.P.R. 319 (1994).

87. Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:1886–1986 555–558 (1987).

88. See France, Intellectual Property Code Art. L. 112–2(6).89. See, e.g., Filmregisseur (“Film Director,”), German Federal Supreme Court, Nov. 24,

1983, (Case I ZR 147/81), 16 I.I.C. 119 (1985). See also Spain, Copyright Act Art. 86(1).90. Berne Convention, 1971 Paris Text, Art. 2(1). See also Universal Copyright Conven-

tion 1971 Paris Text, Art. I (musical works).91. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris

Act, 1971) 14 (1978).The legal distinction between musical works and their performance separates the Berne

Convention, on one side, from the Rome and Geneva Conventions, on the other. The distinc-tion is frequently arbitrary, most notably in the case of musical arrangements—protected asworks under Berne—which may be hard to differentiate from a performer’s particular man-ner of rendering a song, which is protected only as a performance or phonogram outside Berne.The increasingly catholic approach to definition of musical works, particularly in countriesthat relegate sound recordings to neighboring rights protection, will inevitably threaten thetraditional distinction.

92. See §5.1.1.4, below. Fixation, if required, can usually be in written notation or re-corded form.



United States, define protectible musical works to include any accompany-ing words.93 Others, such as the United Kingdom, define musical works tomean “a work consisting of music, exclusive of any words or action intendedto be sung, spoken or performed with the music.”94 The distinction is conse-quential since, under the British approach, if different authors wrote themusic and words, these two elements of a single song would have differentterms of copyright (measured by the lives of the different authors) and possi-bly different points of attachment (if determined by the author’s nationalityor domicile).

(iv) Works of Visual Art. National legislation, at least in Berne countries,gives a broad compass to protectible works of visual art, following the Con-vention’s exhaustive listing: “works of drawing, painting, architecture,sculpture, engraving and lithography; photographic works to which areassimilated works expressed by a process analogous to photography; worksof applied art; illustrations, maps, plans, sketches and three-dimensionalworks relative to geography, topography, architecture or science.”95 TheWIPO Guide to the Berne Convention observes that “this category covers vir-tually all artistic works whether in two dimensions (drawings, engravings,lithographs, etc.) or in three (sculptures, statues, works of architecture,monuments, etc.) independent of their nature (figurative or abstract) andtheir intention (pure or commercial art).”96

As with protectible subject matter generally, courts do not require worksof visual art to meet any aesthetic standard, requiring only that the workoriginate with its putative author and bear the stamp of his personality. Sec-tion 4(1) of the 1988 British Act defines “artistic work” to include “a graphicwork, photograph, sculpture or collage, irrespective of artistic quality.”97

Courts applying the traditional copyright distinction between idea and ex-pression will withhold protection from such fundamental building blocks invisual art as color, perspective, geometric shape, and standard arrangements

93. France, Intellectual Property Code Art. L. 112–2(5); U.S. 1976 Copyright Act §102(a) (2).

94. United Kingdom, Copyright, Designs and Patents Act 1988 §3(1).95. Berne Convention, 1971 Paris Text Art. 2(1). The Universal Copyright Convention,

1971 Paris Text Art. I., is more sparing in listing as examples “paintings, engravings and sculp-ture.” Nonetheless, as Dr. Bogsch has observed, “[t]hese words should be broadly interpreted,as far as the technique is concerned. Thus ‘painting’ probably includes also drawings, and‘engravings’ also include lithographs.” Arpad Bogsch, The Law of Copyright Under the Univer-sal Convention 9 (3d rev. ed. 1968).

96. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (ParisAct, 1971) 16 (1978).

97. United Kingdom, Copyright, Designs and Patents Act 1988 §4(1) (a). The other twoclasses of artistic works—works of architecture and works of artistic craftsmanship—are notexpressly made “irrespective of artistic quality.”

dictated by aesthetic convention but will protect the artist’s combination ofthese elements into the work’s expression.98

Product labels, and even trademarks, obtain protection in many coun-tries,99 as do advertisements, fabric designs, and catalogue illustrations.Cartoon figures, such as the popular French character Asterix, will, if suffi-ciently delineated, be protected, and not only in the individual poses in whichthey are depicted, but in any pose in which the infringer places them.100 Inthis respect, copyright in visually depicted characters probably confers awider range of protection than copyright in other forms of pictorial, graphic,and sculptural works. Unlike paintings, photographs, or novelty items, acharacter can take on a life of its own and copyright will protect the charac-ter against copies in postures, settings, and attitudes far removed from anyof the author’s original depictions.

If courts do not impose aesthetic standards on works of visual art, theywill nonetheless conform the scope of protection for these works to the con-straints on originality inherent in a particular genre. Maps, for example,will be protected only to the extent of the cartographer’s original contri-butions to the underlying facts.101 Protection for technical drawings willbe limited by technological or scientific imperative.102 Courts or legislatorsin some countries further limit protection for technical and design draw-ings to reproductions in two-dimensional format, giving no protectionagainst three-dimensional constructions made from the drawings;103 pro-tection against three-dimensional renderings will be given in these coun-tries only to the extent that the drawing qualifies as plans for an architec-tural work. Works of architecture and applied art will, to the extent they

98. See, e.g., Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1075–1077 (2d Cir. 1992) (plaintiff’ssequencing of “ego fixation” labels lacked originality because it was functionally dictated;however, attachment of labels to geometric figures contained “the minimal degree of creativ-ity to make it copyrightable.”).

99. See, e.g., DRG Inc. v. Datafile Ltd. (1987) 18 C.P.R. (3d) 538, 545–546, 27 C.I.P.R. 136(Fed.Ct.), aff’d (1991) [117 N.R. 308], 35 C.P.R. (3d) 243 (Fed. C.A.) (holding that color-codedfile folder labels are not disqualified from copyright protection because of their functionalpurpose); Motel 6, Inc. v. No. 6 Motel Ltd. (1981) 127 D.L.R. (3d) 267, 56 C.P.R. (2d) 44, 54(Fed. Ct.) (holding that the Motel 6 trademark is protected under Canadian law against in-fringement); Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) (circus posters);Novelty Textile Mills, Inc. v. Joan Fabrics Corp. 558 F.2d 1090 (2d Cir. 1977) (fabric designs).

100. “Alcolix,” German Federal Supreme Court, March 11, 1993 (Case No. I ZR 263[91]),25 I.I.C. 605, 607 (1994).

101. See, e.g., Fédération Française de Randonnée Pédestre v. Editions Franck Mercier, Courtof Cassation, 1st Civil Chamber, June 30, 1998, 178 R.I.D.A. 236 (1998); United States v.Hamilton, 583 F.2d 448 (9th Cir. 1978).

102. See, e.g., Elektrodenfabrik (“Electrode Factory”) German Federal Supreme Court, May10, 1984 (Case No. I ZR 85/82), 17 I.I.C. 430 (1986); Baker v. Selden, 101 U.S. 99, 107 (1879).

103. See, e.g., Elektrodenfabrik (“Electrode Factory”) German Federal Supreme Court, May10, 1984 (Case No. I ZR 85/82), 17 I.I.C. 430 (1986). See also U.S. 1976 Copyright Act §113(b).



embody utilitarian design, encounter stringent limits on protection. Amend-ments to the U.S. Copyright Act in 1990, extending protection to architec-tural works,104 included protection for “the overall form as well as thearrangement and composition of spaces and elements in the design” butexcluded protection for “individual standard features.”105

Photographs receive more varied copyright treatment from country tocountry than any other form of subject matter, with the possible exceptionof industrial design. The Universal Copyright Convention does not requiremember countries to protect photographs.106 The Berne Paris Text, thoughit requires protection for photographs, gives member countries considerablelatitude in setting the term of protection for “photographic works to whichare assimilated works expressed by a process analogous to photography.”107

Variations in the Berne Convention’s treatment of photographs from oneBerne text to another, and in the national responses to these changes, re-quire care in determining whether a photograph produced or published at aparticular time was covered under the then applicable law of the protectingcountry.

In his valuable study on the protection of photographic works, ProfessorGunnar Karnell has observed that “[t]here is room for a wide variety of differ-ent approaches to the issue of photography protection under national copy-right rules, and such a great variety does indeed exist.”108 The most promi-nent points of difference in national treatment of photographs are in lengthof copyright term and in the requirement of artistic content, imposed by somecountries. A 1979 study of forty-four countries revealed twenty differentterms of protection.109 While most countries impose a single originality stan-

104. Pub. L. No. 101–650, tit. vii, 104 Stat. 5133 (Dec. 1, 1990).105. U.S. 1976 Copyright Act §101.106. The Universal Copyright Convention, 1971 Paris Text Art. IV(3), does, however, pro-

vide that if a member country protects photographic works, the term of protection must notbe less than ten years.

107. Berne Convention, 1971 Paris Text, Art. 2(1). Article 7(4) of the Berne Paris Act pro-vides, “It shall be a matter for legislation in the countries of the Union to determine the termof protection of photographic works and that of works of applied art in so far as they are pro-tected as artistic works; however, this term shall last at least until the end of a period of twenty-five years from the making of such work.” Article 9 of the WIPO Copyright Treaty providesthat “[i]n respect of photographic works, the Contracting Parties shall not apply the provi-sion of Article 7(4) of the Berne Convention.”

108. Gunnar Karnell, Photography: A Stepchild of International Conventions and NationalLaws on Copyright, 24 Copyright 132, 134 (1988). See also Ysolde Gendreau, La Protection desPhotographies en Droit d’Auteur Français, Américain, Britannique et Canadien (1994); RainerOesch, Oikeus Valokuvaan: Tutkimus Valokuvan Suojan Kehity Ksestä Ja Sisällöstä 313–314 (1993)(English summary); Suzanne Byrne, Photography and the Law of Copyright, 20 I.I.C. 37(1989).

109. Gunnar Karnell, Photography: A Stepchild of International Conventions and NationalLaws on Copyright, 24 Copyright 132, 135 (1988).

dard on all photographs, some, such as Germany, impose a standard of in-tellectual creativity for copyright protection of photographic works110 anda looser standard for neighboring rights protection of simple photographssuch as snapshots.111 Within the European Union, the Term of ProtectionDirective112 has introduced some measure of uniformity not only in provid-ing for a harmonized term of copyright protection for photographic works,113

but also in predicating a uniform standard that holds a photographic work“within the meaning of the Berne Convention” to be original “if it is theauthor’s own intellectual creation reflecting his personality, no other crite-ria such as merit or purpose being taken into account.”114

(v) Derivative Works (Including Translations, Adaptations, and Arrange-ments). Article 2(3) of the Berne Convention provides that “[t]ranslations,adaptations, arrangements of music and other alterations of a literary orartistic work shall be protected as original works without prejudice to thecopyright in the original work.” Article L. 112-3 of the French IntellectualProperty Code includes “translation, adaptations, transformations or ar-rangements of works of the mind” as copyrightable subject matter. The Ger-man Act provides for the protection of “[t]ranslations and other adaptationsof a work which constitute personal intellectual creations of the adapter.”115

The British Act assimilates the full range of derivative works into its basicprotection of literary, dramatic, musical and artistic works,116 and the U.S.Act defines “derivative work”117 as “a work based upon one or more preex-isting works, such as a translation, musical arrangement, dramatization,fictionalization, motion picture version, sound recording, art reproduction,abridgment, condensation, or any other form in which a work may be re-cast, transformed or adapted.”118

Courts characteristically apply the same originality standard to derivativeworks that they do to literary and artistic works generally, and subject them

110. Germany, Copyright Act Art 2(1) (5). See also Spain, Copyright Act Art. 10(1)(h).111. Germany, Copyright Act Art. 72. See also Spain, Copyright Act Art. 118. See generally

Adolf Dietz, Letter from the Federal Republic of Germany (1), 26 Copyright 58, 73–74 (1990).112. Council Directive 93/98/EEC (“Term of Protection Directive”) Oct. 29, 1993, OJ L 290.113. E.C. Term of Protection Directive Art. 6.114. E.C. Term of Protection Directive Recital 17. According to the Recital and Article 6,

Member States may also provide for the protection of other photographs not meeting this standard.115. Germany, Copyright Act Art 3. The German Act expressly excludes protection for

“[i]nsignificant adaptations of a nonprotected musical work.” Id.116. See E. P. Skone James et al., Copyright ¶¶3–33 through 3–43 (13th ed. 1991); William

Cornish, Intellectual Property 332–341 (3rd ed. 1996).117. U.S. 1976 Copyright Act §103(a).118. U.S. 1976 Copyright Act §101. “A work consisting of editorial revisions, annotations,

elaborations or other modifications which, as a whole, represent an original work of author-ship, is a ‘derivative work.’” Id.



to the same constraints. For example, just as a fictional work will enjoy acomparatively wide scope of protection, so will a translation of that work;however, just as a technical manual will obtain a narrow scope of protec-tion, so will a translation of the manual that requires the same degree offunctional precision. Courts in both France and the United States have foundthe required originality in art reproductions that reflected, even to a modestdegree, the impress of the adapter’s personality.119

The phrase in Berne Article 2(3) “without prejudice to the copyright in theoriginal work” opens a significant ambiguity about the legal status of a de-rivative work created without permission from the copyright owner of theunderlying work. It is clear, as the WIPO Guide to the Berne Convention ob-serves, that unless the underlying work is in the public domain, the author’sconsent is needed to translate, adapt, arrange, or otherwise alter the work.120

But the phrase does not indicate whether use of the underlying copyrightedmaterial without authority not only subjects the derivative work’s creatorto suit by the copyright owner for infringement of the derivative right in theunderlying work, but also deprives the derivative work of copyright.121 TheU.S. Copyright Act expressly provides that, in the case of both derivativeworks and compilations, “protection for a work employing preexisting ma-terial in which copyright subsists does not extend to any part of the work inwhich such material has been used unlawfully.”122 Courts in the UnitedKingdom take the opposite approach and will uphold copyright in a workthat infringes copyright in the underlying work so long as the derivative workcontributes new expression to it.123

(vi) Compilations and Collective Works (Including Databases). Article 2(5)of the Berne Paris Text provides that “[c]ollections of literary or artistic workssuch as encyclopaedias and anthologies which, by reason of the selection andarrangement of their contents, constitute intellectual creations shall be pro-

119. See, e.g., Gieules v. Sagne, Court of Cassation, I Civil Chamber, Nov. 9, 1993, 161 R.I.D.A.273 (1994); Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc. 191 F.2d. 99 (2d Cir. 1951).

120. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works(Paris Act, 1971) (1978).

121. See generally David Vaver, Translation and Copyright: A Canadian Focus, 16 E.I.P.R.159, 161 (1994); David Vaver, Abridgments and Abstracts: Copyright Implications, 17 E.I.P.R.225, 229 (1995).

122. U.S. 1976 Copyright Act §103(a).123. See, e.g., Redwood Music Ltd. v. Chappell & Co. Ltd., [Q.B. 1982] R.P.C. 109, 120. (“It is

understandable that the owner of a copyright should be entitled to restrain publication of aninfringing work; but the idea that he should be entitled to reap the benefit of another’s origi-nal work, by exploiting it, however extensive such work might be, however innocently it mighthave been made, offends against justice and commonsense.”) See generally E. P. Skone Jameset al., Copyright ¶¶3–44 through 3–48 (13th ed. 1991).

tected as such, without prejudice to the copyright in each of the works form-ing part of such collections.”124

The category created by Article 2(5) is confined to works that, like ency-clopedias and anthologies, are collections of preexisting works. National leg-islation on compilations sometimes follows this formulation. The Frenchlegislation, for example, lists “anthologies or collection of various works.”125

The German Copyright Act speaks more broadly of “[c]ollections of worksor of other contributions.”126 The WIPO Copyright Treaty and the TRIPsAgreement require protection for “[c]ompilations of data or other material”which “by reason of the selection or arrangement of their contents consti-tute intellectual creations.”127 This language would include collections ofuncopyrightable data—telephone directories, for example, or auto partscatalogues—as well as compilations of literary and artistic works. It is un-clear whether these newer formulations represent an expansion over BerneArticle 2 as a whole and not just over Article 2(5), since “literary works”in Article 2(1) may be read broadly to encompass compilations of data.

The formulations for compilations employed in the WIPO Copyright Treatyand the TRIPs Agreement are sufficiently broad to encompass automatedelectronic databases. The E.C. Database Directive’s encompassing definitionof a “database” protectible by copyright—“a collection of independent works,data or other materials arranged in a systematic or methodical way and in-dividually accessible by electronic or other means”128 —leaves no doubt that,although computerized electronic databases may have been the occasion forpromulgating the Database Directive, all compilations, whether in book orother manual form, come within its scope.129 The Directive also provides for

124. Berne Convention, 1971 Paris Text, Art. 2(5).125. France, Intellectual Property Code Art. L. 112–113. Compare Germany Copyright Act

Art. 4 (“Collections of works or of other contributions . . .”).126. Germany, Copyright Act Art. 4.127. WIPO Copyright Treaty Art. 5. (“Compilations of data or other material, in any form,

which by reason of the selection or arrangement of their contents constitute intellectualcreations, are protected as such. This protection does not extend to the data or material itselfand is without prejudice to any copyright subsisting in the data or material contained inthe compilation.”)

TRIPs Agreement Art. 10. (“Compilations of data or other material, whether in machinereadable or other form, which by reason of the selection or arrangement of their contentsconstitute intellectual creations shall be protected as such. Such protection, which shall notextend to the data or the material itself, shall be without prejudice to any copyright subsist-ing in the data or material itself.”)

128. Council Directive 96/9 EC (“Database Directive”), March 11, 1996, OJ L 977, Art. 1(2).129. Differences in coverage between the Database Directive, the Berne Convention, and

preexisting national laws inside the European Union complicate coordination of protectionas the Directive is implemented locally. See Simon Chalton, The Effect of the E.C. Database Di-rective on United Kingdom Copyright Law in Relation to Databases: A Comparison of Fea-tures, 19 E.I.P.R. 278, 281 (1997).



the protection of the collected data themselves through a second, noncopy-right regime.130

The generally encompassing definitions given to compilations in com-mon law countries offer ample latitude for protection of databases and,indeed, any collections of data that meet the required standard of original-ity. The Canadian Copyright Act, for example, defines a compilation as “awork resulting from the selection or arrangement of literary, dramatic,musical or artistic works or of parts thereof” or “a work resulting from theselection or arrangement of data.”131 The U.S. Copyright Act defines a“compilation” as “a work formed by the collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged insuch a way that the resulting work as a whole constitutes an original workof authorship,”132 Section 101 of the Act includes in this category “col-lective works,” defined as “work[s], such as a periodical issue, anthology,or encyclopedia, in which a number of contributions, constituting sepa-rate and independent works in themselves, are assembled into a collectivewhole.”133

The seminal standard of originality for compilations is the requirementprescribed by Article 2(5) of the Berne Convention that the “selection andarrangement” of the contents constitute an “intellectual creation.” TheWIPO Guide to the Berne Convention explains that the “maker must bringto bear an element of creativity; merely listing the works or extracts with-out offering any personal contribution is not enough.”134 This standard hasbeen applied by member countries with varying degrees of strictness. Ger-man courts have historically insisted on a clear showing of individual in-tellectual creativity,135 while British courts impose virtually no standardat all beyond the contribution of “skill, judgment, labor and learning.”136

The United States, though a latecomer to the Berne Union, has through itsSupreme Court adopted a standard comparable to the strictest standardsadopted under the Convention.137

The European Database Directive provides that “databases which, by rea-son of the selection or arrangement of their contents, constitute the author’sown intellectual creation shall be protected as such by copyright. No other

130. See §5.4.1.2.D, below.131. Canada, Copyright Act, §2.132. U.S. 1976 Copyright Act §101.133. U.S. 1976 Copyright Act §101.134. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 20 (1978).135. See, e.g., Bedienungsanweisung (“Operating Instructions”), German Federal Supreme

Court, Oct. 10, 1991 (Case No. I ZR 147/89), 23 I.I.C. 846 (1992).136. See, e.g., Macmillan & Co. Ltd. v. Cooper [1923] 40 T.L.R. 186, 188 (1924); Independent

Television Publications Ltd. v. Time Out Ltd., [Ch. Div. 1984] F.S.R. 64.137. See Feist Publications, Inc. v. Rural Telephone Service, Co. Inc., 499 U.S. 340 (1991).

criteria shall be applied to determine their eligibility for that protection.”138

The requirement that a copyrightable database “constitute the author’s ownintellectual creation” deriving from acts of selection or arrangement consti-tutes both a ceiling and a floor, and it has obligated some European Unioncountries, such as the Netherlands and the United Kingdom, to raise theiroriginality standard for this class of works, and other countries, such as Ger-many, to lower their standard.139

(vii) Utilitarian Literary Works (Including Computer Programs). Nationallegislatures and courts have shown little reluctance to bring utilitarian workscontaining some expressive elements, such as texts, engineering manuals,and recipe books, into the company of novels, essays, and poetry under therubric of literary works. A decision of the German Federal Supreme Courtinvolving illustrated operating instructions for a power saw typifies the con-ditions on which courts will extend copyright to essentially utilitarian pro-ductions. The court there agreed with the lower court that copyright pro-tection had to depend on the presence of some measure of creativity risingabove mere technical proficiency, but it ruled that the lower court had failedto account for the creative possibilities presented by the manual’s integrationof text with the selection and arrangement of complementing illustrations.140

In the United States an 1879 decision of the Supreme Court dealing with aclaim of copyright in a bookkeeping text continues to provide the operativeprinciple for functional works. In the Court’s view, if the art the book teaches“cannot be used without employing the methods and diagrams used to il-lustrate the book, or such as are similar to them, such methods and diagramsare to be considered as necessary incidents to the art, and given therewithto the public; not given for the purpose of publication in other works explana-tory of the art, but for the purpose of practical application.”141

Computer programs, which are quintessentially utilitarian works, earlyfaced distinctive obstacles to inclusion in the general class of literary works.One hurdle was that programs are generally written in source code, whichis difficult for humans to apprehend, or in object code, which is impossible

138. E.C. Database Directive Art 3(1). Further, the “copyright protection of databases pro-vided for by this Directive shall not extend to their contents and shall be without prejudice toany rights subsisting in those contents themselves.” E.C. Database Directive Art. 3(2).

139. See Michael Lehmann, The European Database Directive and Its Implementation intoGerman Law, 29 I.I.C. 776, 781–782 (1998).

140. Bedienungsanweisung (“Operating Instructions”) German Federal Supreme Court, Oct.10, 1991 (Case No. I ZR 147/89), 23 I.I.C. 846, 851 (1992). See also Shinto Teramoto, Copy-rightability and Scope of Protection for Works of Utilitarian Nature Under Japanese Law, 28I.I.C. 51, 74 (1997) (noting that Japanese copyright law determines copyrightability throughfactors such as the “‘degree to which expression in a work is restricted by utilitarian function’”).

141. Baker v. Selden, 101 U.S. 99, 103 (1879).



for humans to apprehend. Another hurdle was that programs are regularlyembodied in digital media such as disks and silicon chips. By the mid-1980s,however, most major industrial nations had resolved these issues and broughtcomputer programs into the realm of literary works. By recent count, over sixtycountries, most of them Berne adherents, protect computer programs as lit-erary works, a trend no doubt supported by a provision in TRIPs Agreementthat “[c]omputer programs, whether in source or object code, shall be pro-tected as literary works under the Berne Convention”142 and in the WIPOCopyright Treaty that “[c]omputer programs are protected as literary workswithin the meaning of Article 2 of the Berne Convention. Such protectionapplies to computer programs, whatever may be the mode or form of theirexpression.”143

Copyright legislation in a handful of countries expressly defines computerprograms. The Japanese Copyright Act, amended in 1985 to extend copyrightto computer software, defines a computer program (Puroguramu) as “an ex-pression of combined instructions given to a computer so as to make it func-tion and obtain a certain result.”144 The U.S. Copyright Act defines “com-puter program” as “a set of statements or instructions to be used directly orindirectly in a computer in order to bring about a certain result.”145 The leg-islation in the United Kingdom, which, like most copyright legislation, pro-tects computer programs but does not define them, also extends copyrightprotection to traditional works such as drawings, stories, and songs, that aregenerated by programmed computers.146 Since such works will often lack ahuman author, the legislation provides that in these cases that author forpurposes of copyright is “the person by whom the arrangements necessaryfor the creation of the work are undertaken.”147

With these threshold issues of classification and definition resolved, courtscontinue to grapple with the problem of defining the standards and scope ofprotectible subject matter in computer programs. At one time the GermanFederal Supreme Court effectively imposed a patent-like inventiveness stan-dard on computer programs, requiring a level of creativity exceeding that ofthe “average programmer.”148 Implementation of the 1991 E.C. SoftwareDirective, which sought to harmonize copyright protection for computer

142. TRIPs Agreement Art. 10(1).143. WIPO Copyright Treaty Art. 4.144. Japan, Copyright Act, Art. 2(1)(Xbis). See generally Teruo Doi, Chronique du Japon,

167 R.I.D.A. 103, 147–153 (1996).145. U.S. 1976 Copyright Act §101.146. United Kingdom, Copyright, Designs and Patents Act 1988, §178 (definition of “com-

puter-generated” in relation to a work).147. United Kingdom, Copyright, Designs & Patents Act 1988 §9(3).148. See Inkasso-Programm (“Collection Program”), German Federal Supreme Court, May

9, 1985 (Case No. I ZR 52/83), 17 I.I.C. 681, 688 (1986).

programs throughout the European Union, effectively required the Germanlegislator to lower this standard.149 In a direct rejection of the German in-ventiveness standard, Article 1(3) provides that “[a] computer program shallbe protected if it is original in the sense that it is the author’s own intellec-tual creation. No other criteria shall be applied to determine its eligibility forprotection.”150 Case law in Germany has since confirmed the applicabilityof the lowered standard.151 Implementation of the Directive in the Nether-lands has effectively raised the standard of originality by excluding computerprograms from the legislative category of writings and, consequently, fromwhat Bernt Hugenholtz has characterized as the “quick and easy protectionof the quasi-copyright in non-original writings.”152 The standard adoptedby the Directive has also influenced courts outside the European Union.153

Article 1(1) of the E.C. Software Directive requires member states to “pro-tect computer programs, by copyright, as literary works within the meaningof the Berne Convention for the Protection of Literary and Artistic Works.”154

Article 1(2) attempts no precise separation of functional from nonfunctionalelements in computer programs, relying instead on the general idea-expres-sion distinction: “[p]rotection in accordance with this Directive shall applyto the expression in any form of a computer program. Ideas and principleswhich underlie any element of a computer program, including those whichunderlie its interfaces, are not protected by copyright under this Direc-tive.”155 The Directive’s specific reference to ideas and principles underly-ing a program’s interfaces reflects the decision to exclude any possibilitythat computer interface specifications would come within copyright con-trol and dangerously hobble interoperability of computer programs andequipment. Outside the European Union, some countries rely on the tradi-tional idea-expression distinction to define the scope of protectible subjectmatter in computer programs, while others, such as Japan, have specifi-cally legislated on the question.156

149. See Andreas Raubenheimer, Implementation of the EC Software Directive in Germany:Special Provisions for Protection of Computer Programs, 27 I.I.C. 609, 617–618 (1996). Seegenerally Michael Lehman & Colin Tapper, A Handbook of European Software Law (1995); BridgetCzarnota & Robert Hart, Legal Protection of Computer Programs in Europe: A Guide to the EC Di-rective (1991).

150. Council Directive 91/250 E.E.C. (“Software Directive”), May 14, 1991, 0J L 122, Art. 1(3).151. Buchhaltungsprogramm (“Accounting Program”) German Federal Supreme Court,

July 14, 1993 (Case No. I ZR 47/91), 26 I.I.C. 127 (1995).152. P. Bernt Hugenholtz, Dutch Copyright Law, 1990–1995, 169 R.I.D.A. 129, 157

(1996).153. See, e.g., Ivan Cherpillod, News From Switzerland, 160 R.I.D.A. 132, 144 (1994).154. E.C. Software Directive Art. 1(1).155. E.C. Software Directive Art. 1(2).156. Japan, Copyright Act Art. 10(3)(“[P]rotection . . . shall not extend to any program-

ming language, rule or algorithm used for make such [program] works.”).



(viii) Applied Art and Industrial Design. Works of applied art and indus-trial design rival only photographic works157 in the multiplicity of their treat-ment under national legislation. One reason for the proliferation of conflictingapproaches is that applied art and industrial design encompass a continuumfrom mass novelty items, such as earrings and toys, to works of industrial de-sign, such as chairs and lamps, in which art and function intertwine. Anotherreason for the diversity is that the different national approaches emerged inthe early part of the nineteenth century and consequently were well en-trenched by the time the Berne Convention was conceived.158

National approaches to the protection of applied art and industrial designroughly divide into three categories: the cumulative or unity of art approach,which brings under copyright all works of visual art, whatever their contentor application, and makes copyright protection cumulative with the protec-tion given under any independent design protection law; the partial cumula-tive approach, which gives these works copyright protection but subjectsthem to a higher than usual creativity standard; and the noncumulative orduality of art approach, which excludes industrial designs from copyright andremits them exclusively to the applicable sui generis design statute.159 Thesethree categories are by no means impermeable and are not always internallyconsistent; differences within categories will sometimes be as great as thedifferences between the categories.

France is the most prominent exponent of the unity of art approach. TheFrench Act nominally encompasses “all works of the mind, whatever theirkind, form of expression, merit or purpose”160 and will in theory protect asalt shaker no less than a Brancusi sculpture.161 In fact, the French legisla-tion is not quite as embracing as the “unity of art” notion might suggest and,much like the noncumulative approach, rejects copyright protection forstrictly functional elements of works of applied art. Consequently, while theunity of art theory in France will not draw the line of copyright so that itexcludes mass-produced articles of artistic craftsmanship, it will deny copy-right to a design if the article’s form and its function are inseparable, as for

157. See §5.1.1.1.B(iv), above.158. See generally Sam Ricketson, The Berne Convention for the Protection of Literary and Ar-

tistic Works: 1886–1986 267–269 (1987).159. For a particularly insightful analysis of these approaches, see J. H. Reichman, Design

Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948 to theCopyright Act of 1976, 1983 Duke L.J. 1143; J. H. Reichman, Design Protection After the Copy-right Act of 1976: A Comparative View of the Emerging Interim Models, 31 J. Copr. Soc’y 267(1983).

160. France, Intellectual Property Code Art. L. 112-1.161. See Court of Cassation, Decision of May 2, [1961], JCP II 12.242, cited in Jane C.

Ginsburg, French Copyright Law: A Comparative Overview, 36 J. Copr. Soc’y 269, 273 n. 21(1989). See also Jaap Spoor, The Impact of Copyright on Benelux Design Protection Law, inJan Kabel & Gerard Mom, eds., Essays in Honour of Herman Cohen Jehoram 59 (1998).

example when the design of a salt shaker, however elegant, was dictated byits function.162

Germany, the most prominent adherent to the partial cumulation approach,expressly includes works of applied art among its categories of protectedsubject matter,163 and German courts have upheld copyright protection forindustrial objects such as an aesthetically pleasing chair design.164 The ob-ject must, however, pass a higher than usual originality standard and clearlysurpass works of average design.165 Nonetheless, German courts may attacha presumption of originality to some forms of industrial design that it doesnot to others. Professor Dietz has, for example, traced a line of German de-cisions indulging a generous standard for furniture design, particularlychairs.166

The noncumulative approach, associated with Italy, extends copyrightprotection to artistic works “even when such works are applied to an indus-trial product if their artistic value is distinct from the industrial character ofthe product with which they are associated.”167 The U.S. Copyright Act ap-proximates this approach to industrial design, withholding protection fromutilitarian elements of industrial design by defining protectible “pictorial,graphic, and sculptural works” to include “works of artistic craftsmanshipinsofar as their form but not their mechanical or utilitarian aspects are con-cerned,” and by providing further that the design of a useful article “shall beconsidered a pictorial, graphic, or sculptural work only if, and only to theextent that, such design incorporates pictorial, graphic, or sculptural featuresthat can be identified separately from, and are capable of existing indepen-dently of, the utilitarian aspects of the article.”168

162. See, e.g., Thermopac & Borne v. Seprosy, Court of Cassation, Civ. I, March 28, 1995,165 R.I.D.A. 326 (1995) (egg box); Arum v. Claire & Troyenne, Court of Cassation, Comm., Fin.,& Econ. Div. March 21, 1995, 166 R.I.D.A. 278 (1995) (coat design).

163. Germany, Copyright Act Art. 2(1)(4).164. See, e.g., “Lounge Chair,” Germany, Court of Appeals, Frankfurt, March 19, 1981 (Case

No. 6 U 160/79), 13 I.I.C. 777 (1982) (copyright protection for Eames lounge chair).165. See, e.g., Silberdistel (“Silver Thistle”), German Federal Supreme Court, June 22, 1995

(Case No. I ZR 119/93), 28 I.I.C. 140 (1997) (lower court’s findings insufficient to support levelof creativity necessary for copyright protection for work of applied art). See generally GerhardSchricker, Farewell to the “Level of Creativity” (Schöpfungshöe) in German Copyright Law, 26I.I.C. 41, 42 (1995).

166. See Adolf Dietz, Copyright Law Developments in Germany from 1993 to Mid-1997 (I),175 R.I.D.A. 96, 188–190 (1998); Adolf Dietz, Copyright Law Developments in the FederalRepublic of Germany (from 1989 to the Beginning of 1993), 157 R.I.D.A. 128, 186–188 (1993).

167. Italy, Copyright Act Art. 2(4).See generally J. H. Reichman, Design Protection in Domestic and Foreign Copyright Law:

From the Berne Revision of 1948 to the Copyright Act of 1976, 1983 Duke L.J. 1143, 1161,1169.

168. U.S. 1976 Copyright Act §101. Section 101 defines “useful article” as “an article hav-ing an intrinsic utilitarian function that is not merely to portray the appearance of the article



Courts in the United States divide over the manner in which an artisticfeature must be separable from the article’s utilitarian aspects in order toqualify for copyright. Some courts require the artistic features to be physi-cally separable; an example would be a simulated antique telephone used asa removable casing for a pencil sharpener.169 Other courts allow conceptualas well as physical separability; an example would be a heavily ornamentedbelt buckle in which the sculptural features incorporated in the buckle’sdesign can stand on their own as a work of art traditionally conceived andthe buckle would be equally useful without it.170

The 1988 Copyright, Designs and Patents Act in the United Kingdom par-allels the approach taken by the U.S. Copyright Act in some respects. Copy-right protection under the British Act pivots on section 51, which providesthat it does not constitute infringement to produce an article based on a “de-sign document or model” embodying a design “for anything other than anartistic work or a typeface.”171 The Act defines “design” for these purposesas “the design of any aspect of the shape or configuration (whether internalor external) of the whole or part of an article, other than surface decora-tion.”172 Like the U.S. Act, the British Act permits protection for physicallyseparable ornamentation; unlike the U.S. Act, it would deny protection toconceptually separable, internal or external design features.

The Paris Text of the Berne Convention includes works of applied artamong Article 2(1)’s classes of protected works173 and, in Article 2(7), co-ordinates the obligations of member countries following any one of the threeapproaches to this subject matter:

or convey information,” and adds, “[a]n article that is normally part of a useful article is con-sidered a ‘useful article.’”

169. See Ted Arnold Ltd. v. Silvercraft Co., 259 F. Supp. 733 (S.D.N.Y. 1966). See also Esquire,Inc. v. Ringer, 591 F.2d 796 (D.C.Cir. 1978).

170. See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980). Seegenerally Shira Perlmutter, Conceptual Separability and Copyright in the Designs of UsefulArticles, 37 J. Copyr. Soc’y 339 (1990); Paul Goldstein, 1 Copyright §2.5.3 (2d ed. 1996).

171. Professor Cornish has observed, “Under the 1988 Act, as before, copyright in a draw-ing arises irrespective of artistic quality, provided that there is sufficient labour, skill and judg-ment to give originality. It may be infringed by reproducing it in a three-dimensional article;and it matters not whether the act of copying is direct or indirect. The main object of section 51is accordingly to limit the application of that principle, by cutting out the application of copy-right to industrial products which are not themselves capable of being the subject of copy-right. It accordingly states that the act of making an article from a ‘design document or model’which records or embodies a design cannot after all constitute infringement.” William Cor-nish, Intellectual Property 495 (3rd ed. 1996).

172. United Kingdom, Copyright, Designs & Patents Act 1988 §51(3).173. “[T]he Convention uses this general expression [‘works of applied art’] to cover the

artistic contributions of the makers of knick-knacks, jewelry, gold and silverware, furniture,wallpaper, ornaments, clothing, etc.” WIPO, Guide to the Berne Convention for the Protection ofLiterary and Artistic Works (Paris Act, 1971) 16 (1978).

Subject to the provisions of Article 7(4) of this Convention, it shall be a matterfor legislation in the countries of the Union to determine the extent of the ap-plication of their laws to works of applied art and industrial designs and mod-els, as well as the conditions under which such works, designs and models shallbe protected. Works protected in the country of origin solely as designs andmodels shall be entitled in another country of the Union only to such specialprotection as is granted in that country to designs and models; however, if nosuch special protection is granted in that country, such works shall be protectedas artistic works.174

The 1967 Stockholm Revision added the last clause, requiring a country thatlacks a design registration statute to give copyright protection to works ofapplied art coming from a country that gives them only noncumulative de-sign protection.175 This might appear to impose an unequal burden on copy-right countries, particularly those that take a partial cumulative approach.However, because most countries today have an industrial design statute,the disparity is more apparent than real.176

The phrase in Article 2(7) limiting the protecting country’s obligationswith respect to works “protected in the country of origin solely as designsand models” raises the question whether a protecting country that grantsboth copyright protection and special protection to works of applied art candeny copyright protection where the work’s country of origin would denycopyright protection to the particular work in issue, but not to the generalclass of applied art to which the work belongs. For example, the U.S. Copy-right Act will protect the artistic features of a useful article if, and to the ex-tent that, the features are separable from the article’s utilitarian features.Consequently, while copyright law in the United States will protect the de-sign of artistically detailed lamp bases in general, it will deny protection toany lamp base whose artistic features lack the required separability. Will alamp base that lacks the required separable elements be entitled to copyrightprotection, or only to design protection, in another Union country?

Although not free of ambiguity, the language of Article 2(7) suggests thatthe provision should be construed to deny copyright protection only in caseswhere the country of origin excludes copyright protection to works of ap-plied art generally. Writing about Article 2(5) of the 1948 Brussels Act,

174. Berne Convention, 1971 Paris Text, Art. 2(7).175. See Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:

1886–1986 279–280 (1987).176. National discretion is constrained in other ways as well. “In fact member countries

are not given a completely free hand: they must observe a minimum term of protection forsuch works of applied art as they protect as artistic works (i.e., by their copyright law). Thisminimum is twenty-five years from the making of the work (see paragraph (4) of Article 7).”WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act,1971) 22 (1978).



which is in this respect identical to Article 2(7) of the Paris Act, ProfessorRicketson has observed that “it was only where copyright protection wasexcluded in country A by reason of the sole application of designs legislationthat copyright protection in country B could be refused. Accordingly, if theonly restriction of protection in country A was to be found in the jurispru-dence of that country, the courts in country B were not entitled to adopt acorresponding reduction in protection.”177

Practical considerations underline this conclusion. If Article 2(7)’s reci-procity provisions were to be applied at the level of national jurisprudencerather than at the level of statutory formulation as Ricketson suggests, acourt in the protecting country would effectively be required to replicate thefact-finding and deliberative processes of a hypothetical court in the coun-try of origin to determine whether that court would find the design featuresin issue to be copyrightable. In judicial systems where the court of last re-sort has not addressed the issue, and where lower courts have interpretedthe statutory provisions differently, the court in the protecting country, withno dispositive guidance, would have to choose from competing judicial ap-proaches the one it concludes best represents national law.

§5.1.1.2. Unprotectible Subject Matter

a. ideas

Every mature copyright system withholds protection from ideas and otherbuilding blocks of literary and artistic expression: words and basic plots andthemes in the case of literary works; individual notes and common themesin music; color and perspective in visual art. As stated in the TRIPs Agree-ment, “Copyright protection shall extend to expression and not to ideas, pro-cedures, methods of operation or mathematical concepts as such.”178 TheE.C. Software Directive contains a specific application of the general principlein its provision that protection under the Directive “shall apply to the expres-sion in any form of a computer program. Ideas and principles which under-lie any element of a computer program, including those which underlie itsinterfaces, are not protected by copyright under this Directive.”179

The Berne Convention nowhere categorically bars protection for ideas.Nonetheless, the Convention’s requirements of authorship and original-

177. Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:1886–1986 278–279 (1987).

178. TRIPs Agreement Art. 9(2). On the origins of this provision, the first express formu-lation of the idea-expression distinction in an international agreement, see Daniel Gervais,The TRIPs Agreement: Drafting History and Analysis 78 (1998). See also WIPO Copyright TreatyArt. 2.

179. E.C. Software Directive Art 1(2).

ity implicitly support such a bar.180 Further, Article 2(8)’s provision that“[t]he protection of this Convention shall not apply to the news of the dayor to miscellaneous facts having the character of mere items of press infor-mation” may represent a specific application of the bar.181 Like ideas andother building blocks, news of the day and press items may be protectedoutside copyright under unfair competition law or, possibly, neighboringrights in broadcasts.

Courts in the United States have elaborated two doctrines, merger andscènes à faire, that substantively, if not always explicitly, are employed toeffectuate the idea-expression distinction in other countries as well. The twodoctrines implement the rule that ideas are uncopyrightable by denyingcopyright to otherwise copyrightable expressions where the underlying ideacan be expressed in only one or a limited number of ways.182 Merger doc-trine applies to functional works, such as forms, rules, and computer pro-grams.183 The scènes à faire doctrine applies mainly to fictional works suchas novels and dramas, and it withholds protection from such elements asstock incidents or character attributes that are preordained by unprotectibleideas like basic plot or character type.184

b. official texts

Article 2(4) of the Berne Paris Text provides that “[i]t shall be a matter forlegislation in the countries of the Union to determine the protection to begranted to official texts of a legislative, administrative and legal nature, andto official translations of such texts.” The language reflects a division amongUnion members on this delicate subject.185 However, the final clause of Ar-ticle 2(4) of the Paris Text provides that a member cannot deny protectionto nonofficial translations of these texts—presumably translations made by

180. See WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works(Paris Act, 1971) 12 (1978).

181. Berne Convention, 1971 Paris Text, Art. 2(8). See, e.g., WIPO, Guide to the Berne Con-vention for the Protection of Literary and Artistic Works (Paris Act, 1971), 22–23 (1978) (“Therationale of this provision is that the Convention does not set out to protect mere news or mis-cellaneous facts because such material does not possess the qualifications necessary for it tobe considered a work.”) See also Sam Ricketson The Berne Convention for the Protection of Liter-ary and Artistic Works: 1886–1986 304 (1987).

182. See Paul Goldstein, 1 Copyright §2.3.2 (2d ed. 1996).183. See, e.g., Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967).184. See, e.g., Reyher v. Children’s Television Workshop, 533 F.2d 87, 92, (2d Cir.) (“Where a

lost child is the protagonist, there is likely to be a reunion with parents.”), cert. denied, 429U.S. 980 (1976); Walker v. Time-Life Films, Inc., 784 F.2d 44, 50, (2d Cir.) (presence of drunks,prostitutes, and abandoned cars was inescapable in the depiction of an economically depressedarea of New York City), cert. denied, 476 U.S. 1159 (1986).

185. Berne Convention, 1971 Paris Text, Art. 2(4).



private publishers.186 This rule probably does not control the vexed questionwhether copyright can be withheld from texts that, though prepared pri-vately, have received the imprimatur of official action, or from regulatorycodes drafted by private groups that have subsequently been enacted intolaw.187

Most countries deny copyright to statutes, judicial opinions, and otherofficial texts. The German Copyright Act, for example, withholds protectionfrom “[l]aws, ordinances, official decrees, and notices and also decisions andofficial grounds of decisions,”188 and the Japanese Copyright Law withholdsprotection from the “Constitution and other laws and regulations,” official“notifications” and “judgments, decisions, orders and decrees of law courts,as well as rulings and decisions made by administrative organs in proceed-ings similar to judicial ones.”189 Courts in the United States have long with-held copyright from such legal documents as judicial opinions and legisla-tive enactments. The principle behind the rule is that, in a democracy, lawsmust be freely available to the public.190 The U.S. Copyright Act also with-holds protection from all forms of otherwise copyrightable works, and notjust official documents, if the work was “prepared by an officer or employeeof the United States Government as part of that person’s official duties.”191

A few countries, most notably within the British Commonwealth, use theconcepts of Crown and Parliamentary copyright to protect official publica-tions, including government reports and legislation, usually subject to gen-erous provision for free use.192 Noting that “Crown copyright under the 1988Act arises where a work is made by an officer or servant of the Crown in thecourse of his duties” and that “Parliamentary copyright is, in the main, givento whichever House has, by its direction or control, had the work made; orto both, if they are jointly responsible,” Professor Cornish has observed that“[t]he United Kingdom is not a country in which ideas of free access to, and

186. Berne Convention, 1971 Paris Text, Art. 2(4) (“It shall be a matter for legislation in thecountries of the Union to determine the protection to be granted to official texts of a legislative,administrative and legal nature, and to official translations of such texts.”) (Emphasis added.)

187. See Paul Goldstein, 1 Copyright §2.5.2 (2d ed. 1996).For the approach taken by German courts to this difficult question, see Adolf Dietz, Copy-

right Law Developments in the Federal Republic of Germany (from 1989 to the Beginning of1993), 157 R.I.D.A. 190 (1993).

188. Germany, Copyright Act Art. 5(1). See also Leitsätze (“Headnotes”) German FederalSupreme Court, Nov. 21, 1991 (Case No. I ZR 190 (89), 24 I.I.C. 668, 675 (1993).

189. Japan, Copyright Act Art. 13.190. See, e.g., Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 668 (1834); Callaghan v. Myers,

128 U.S. 617, 647 (1888).191. U.S. 1976 Copyright Act §§101, 105.192. See United Kingdom, Copyright, Designs and Patents Act, 1988 §§163–167; Canada,

Copyright Act §12. See generally Barry Torno, Crown Copyright in Canada: A Legacy of Confu-sion 38–48 (Consumer & Corporate Affairs Canada, 1981); David Vaver, Copyright and theState in Canada and the United States, 10 Int. Prop. J. 187 (1996).

free use of, government information flourish with any vigour. Were this so,there would have developed, as in the United States, much more embracingnotions of public domain material in which no copyright may be claimed.As it is, in Britain, the Crown has copyright even in Acts of Parliament andChurch of England Measures. For these, as for delegated legislation and offi-cial reports, the government will doubtless continue to specify by TreasuryCircular how far it will countenance free copying by others.”193

Article 2bis of the Berne Paris Text allows member countries to choosewhether to deny copyright to “political speeches and speeches delivered in thecourse of legal proceedings.”194 The principle behind the provision is that theConvention should not stymie free public access to such politically and legallyaffected information. Article 2bis(3), providing that “the author shall enjoythe exclusive right of making a collection of his works mentioned in the preced-ing paragraphs,” is entirely consistent with this rationale.195 “At the BrusselsRevision (1948), the point was made that to give the authors of the works inquestion an exclusive right in no way hampered the reporting of political meet-ings and legal proceedings. To allow others to make and to publish collectionsof them was scarcely justified on the ground of freedom of information.”196

§5.1.1.3. Formalities

a. general

Compliance with formalities as a condition to copyright protection dates tothe first copyright act, the British Statute of Anne in 1710, requiring regis-tration and deposit of copies of a work at the Hall of the Stationers’ Com-pany.197 Legislation in England and other countries in the ensuing two cen-turies variously made copyright depend on compliance with such punctilioas registration, deposit, and affixation of notice of the author’s claim of copy-right to publicly distributed copies of the work. This practice changed withthe 1908 Berlin Act of the Berne Convention. Every text of the Convention,starting with the 1908 Act, has provided that “[t]he enjoyment and the ex-ercise” of the rights guaranteed by the Convention in the works protectedunder the Convention “shall not be subject to any formality.”198

193. William Cornish, Intellectual Property 480 (3rd ed. 1996) (footnotes omitted).194. Berne Convention, 1971 Paris Text, Art. 2bis(1).195. Berne Convention, Paris Text, Art. 2bis(3).196. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971).197. 8 Anne, c. 19 (1710).198. Berne Convention, 1908 Berlin Text, Art. 4(2); Berne Convention, 1928 Rome Text,

Art. 4(2); Berne Convention, 1948 Brussels Text, Art. 4(2); Berne Convention, 1967 StockholmText, Art. 5(2); Berne Convention, 1971, Paris Text, Art. 5(2).



The prohibition on formalities as a condition to copyright, presently em-bodied in Article 5(2) of the Paris Text, requires that protection for literaryand artistic works in all countries of the Union be unencumbered by suchformal requirements as affixation of copyright notice, registration, depositof copies, payment of registration fees, or domestic manufacture.199 The ruleapplies only to foreign Berne works; the work’s country of origin may im-pose formalities as a condition to the work’s protection.200 So, for example,before the effective date of the Berne Implementation Amendments, March 1,1989, the U.S. Copyright Act provided as a general rule that no action forcopyright infringement could be instituted until registration had been madefor the claim of copyright in issue.”201 As initially amended, the Act exempted“Berne Convention works whose country of origin is not the United States”from its requirement that a claim of copyright be registered as a prerequisiteto an infringement action. As subsequently amended, the Act broadened theexemption for foreign works by confining the registration requirement toactions for infringement of copyright in any “United States work.”202

Many countries continue to impose some form of deposit or registrationrequirement, although not as a condition to copyright. French law requiresthe deposit of copies of works in national repositories, principally the NationalMuseum.203 A copy of any book published in the United Kingdom must bedeposited in the British Library.204 The German Copyright Act provides for


200. Article 5(3) underlines this result in its provision that “[p]rotection in the country oforigin is governed by domestic law.”

201. U.S. 1976 Copyright Act §411.202. For purposes of section 411, a work is a “United States work” only if

(1) in the case of a published work, the work is first published(A) in the United States;(B) simultaneously in the United States and another treaty party or parties, whose

law grants a term of copyright protection that is the same as or longer than theterm provided in the United States;

(C) simultaneously in the United States and a foreign nation that is not a treatyparty; or

(D) in a foreign nation that is not a treaty party, and all of the authors of the workare nationals, domiciliaries, or habitual residents of, or in the case of an audiovi-sual work legal entities with headquarters in, the United States;

(2) in the case of an unpublished work, all the authors of the work are nationals,domiciliaries, or habitual residents of the United States, or, in the case of an unpub-lished audiovisual work, the authors are legal entities with headquarters in theUnited States; or

(3) in the case of a pictorial, graphic, or sculptural work incorporated in a building orstructure, the building or structure is located in the United States.

203. Law on Statutory Deposit, No. 92-546 of June 20, 1992.204. United Kingdom, 1911 Copyright Act §15.

a Register of Authors, situated in the German Patent Office, for registrationof the author’s true name in the case of anonymous and pseudonymousworks; registration is to serve as a vehicle for the disclosure of identity re-quired to extend the term of copyright in these works under Article 66(2) ofthe German Act.205 Like the German Act, the Japanese Copyright Act pro-vides for registration of the author’s real name in the case of anonymous andpseudonymous works.206

Although affixation of copyright notice is no longer a condition to copy-right protection, prudent copyright owners will nonetheless commonly affixto the copies or phonorecords that embody their works a copyright noticeconsisting of an encircled “c” together with the name of the copyright ownerand the year of the work’s first publication. One reason is that this form ofnotice is an inexpensive means for complying with all formalities—not justthe notice formality—in those countries that have adhered to the UniversalCopyright Convention. The U.C.C. provides that notice in this form will ob-viate compliance with “formalities such as deposit, registration, notice, no-tarial certificates, payment of fees or manufacture or publication” in anyU.C.C. country of which the work’s author is not a national, and in whichthe work was not first published.207 A second reason to affix notice is entirelypractical: copyright notice serves as a low-cost “No Trespassing” sign, alert-ing potential poachers to the copyright owner’s seriousness about enforc-ing its rights.

b. united states

During most of the twentieth century, the United States stood virtually alonein its insistence on compliance with formalities, including affixation of copy-right notice, as a condition to copyright protection. The 1976 Copyright Actprescribes three formalities: affixation of copyright notice to publicly distrib-uted copies and phonorecords of copyrighted works,208 deposit of copies andphonorecords in the U.S. Copyright Office,209 and registration of claims tocopyright in the Copyright Office.210 Although, since the 1976 Act’s amend-ment by the Berne Convention Implementation Act of 1988,211 none of theseformalities is a condition to copyright protection, formalities continue to beimportant under the Act. Affixation of copyright notice, though optional,

205. Germany, Copyright Act Arts. 66(2), 138.206. Japan, Copyright Act Art. 75. The Japanese legislation also provides specially for reg-

istration of computer programs. See Japan, Copyright Act Arts. 76bis(1).207. Universal Copyright Convention, 1971 Paris Text Art. III(1).208. U.S. 1976 Copyright Act §§401, 402.209. U.S. 1976 Copyright Act §§407, 408(b).210. U.S. 1976 Copyright Act §408.211. Pub. L. No. 100-568, 102 Stat, 2853 (Oct. 31, 1988).



may affect monetary recovery for infringement.212 Failure to make the re-quired deposit will subject the copyright owner to a fine.213 A certificate of aregistration made within five years of a work’s first publication constitutesprima facie evidence of the copyright’s validity and of the facts stated in thecertificate.214 Timely registration is required for a copyright owner to obtainstatutory damages and attorney’s fees for infringement.215

The notice requirements imposed by the 1909 Copyright Act216 and by the1976 Copyright Act before the effective date of the Berne Amendments re-main relevant today. If a work was published without the notice required bythe 1909 Act before the date the 1976 Act took effect, January 1, 1978, it fellinto the public domain and will not be protected under the 1976 Act. Simi-larly, if copyright notice was omitted from copies or phonorecords publiclydistributed on or after January 1, 1978, but before the effective date of theBerne Amendments, March 1, 1989, and none of the 1976 Act’s curativeprovisions saved the copyright, the work fell into the public domain and willnot be protected under the 1976 Act as amended. Registration as a require-ment of copyright renewal, although prospectively eliminated by amend-ments in 1992,217 continues to apply to works for which initial copyright wassecured before January 1, 1964; absent timely renewal registration for sucha work, the work fell into the public domain at the end of its initial term ofcopyright.

Certain foreign works that fell into the public domain in the United Statesfor failure to comply with statutory formalities have been restored to copy-right under amendments to the U.S. Copyright Act made by the 1994 Uru-guay Round Agreements Act.218 Expanding on the far more limited restora-tion provisions of the North American Free Trade Agreement ImplementationAct,219 the Uruguay Round amendments restored copyright in all forms ofcopyrighted works and cured not only omissions of copyright notice butomission of other formalities, such as failure to register for copyright renewaland to comply with domestic manufacturing requirements. The 1994 amend-ments also extended protection to foreign works that were in the public do-main in the United States for reasons other than noncompliance with statu-

212. U.S. 1976 Copyright Act §§401(d), 402(d).213. U.S. 1976 Copyright Act §407(d).214. U.S. 1976 Copyright Act §410(c).215. U.S. 1976 Copyright Act §412.216. U.S. 1909 Copyright Act §10.217. Pub. L. No. 102-307, 106 Stat. 264 (1992).218. Pub. L. No. 103-465, tit. v., 514, 108 Stat. 4809, 4976 (1994). Although Article 18 of

the Berne Convention, 1971 Paris Act, obligated the United States to retroactively protectworks that had fallen into the public domain for failure to comply with statutory formalities,the United States did not act on this obligation until legislation was passed implementing theTRIPs Agreement.

219. Pub. L. No. 103–182, 107 Stat. 2057 (1993).

tory formalities: sound recordings fixed before February 15, 1972, and workscoming from a country with which the United States did not have copyrightrelations at the time the work was first published.

(i) Copyright Notice. Until the 1988 Berne Implementation Amendmentseliminated notice as a condition to copyright protection, U.S. copyright lawrequired that copyright notice be affixed to publicly distributed copies orphonorecords of a work as a condition to protection for the work. Judicialdecisions under the 1909 Act, and the text of the 1976 Copyright Act, hadsuccessively liberalized the copyright notice requirement by relaxing ruleson the prescribed form, content, and position of copyright notice, and byproviding more generous excuses for errors or omissions. Whether the omis-sion of copyright notice from publicly distributed copies or phonorecords ofa work forfeited copyright in the work will depend on the notice requirementin force at the time the copies or phonorecords in question were distributedto the public. In the case of copies or phonorecords publicly distributed onor after January 1, 1978, the effective date of the 1976 Copyright Act, butbefore March 1, 1989, the effective date of the Berne Implementation Amend-ments, the 1976 Act’s requirements on form, content, and position of notice,as well as its curative provisions, will govern. The notice requirements of the1909 Copyright Act govern copies or phonorecords of a work publicly dis-tributed before January 1, 1978.

Unlike the 1976 Copyright Act, which made the notice requirement applywhenever a work was published inside or outside the United States with theauthority of the copyright owner, the 1909 Copyright Act left open the ques-tion whether notice had to be affixed to copies of works first published out-side the United States.220 The governing rule under the 1909 Act appears tobe that first publication abroad without copyright notice will not forfeit copy-right. For example, in Twin Books Corp. v. Walt Disney Co.,221 the court ruledthat first publication of the children’s classic Bambi in Germany in 1923without copyright notice did not forfeit the work’s U.S. copyright.222

(ii) Registration. Copyright registration may be obtained for a work at anytime during the term of copyright and is not a condition to copyright. The1976 Copyright Act does, however, offer several incentives to prompt regis-tration. Section 410(c) of the Act limits the automatic prima facie effect ofregistration certificates to registrations made “before or within five years afterthe publication of the work,” and section 412 provides as a rule that noaward of statutory damages or attorney’s fees shall be made for “(1) any

220. U.S. 1909 Copyright Act §10.221. 83 F.3d 1162 (9th Cir. 1996).222. See also Heim v. Universal Pictures Co., 154 F.2d 480 (2d Cir. 1946).



infringement of copyright in an unpublished work commenced before theeffective date of its registration; or (2) any infringement of copyright com-menced after first publication of the work and before the effective date of itsregistration, unless such registration is made within three months after thefirst publication of the work.” Generally, if a work originated in the UnitedStates, or in a country with which the United States does not have copyrighttreaty relations, the claim to copyright must be registered before an infringe-ment action can be instituted.223 Although qualifying foreign works are ex-empt from this requirement, the procedural benefits arising from registra-tion will usually more than repay the modest filing expense involved.

(iii) Deposit. The 1976 Copyright Act imposes mandatory deposit224 andregistration deposit225 requirements, neither of which is a condition to copy-right. The mandatory deposit provision requires the copyright owner of awork published in the United States to deposit two copies or phonorecords ofthe work within three months from the work’s date of publication; failure todeposit the copies will subject the copyright owner to liability for fines andcosts. Registration deposit is intended to identify the copyrighted work forpurposes of registration. As a rule, “the material deposited for registrationshall include (1) in the case of an unpublished work, one complete copy orphonorecord; (2) in the case of a published work, two complete copies orphonorecords of the best edition; (3) in the case of a work first published

223. U.S. 1976 Copyright Act §411.Section 411 requires registration as a condition for instituting actions only against “in-

fringement of copyright in any United States work.” Section 101 provides that a work is a“United States work” only if

(1) in the case of a published work, the work is first published(A) in the United States;(B) simultaneously in the United States and another treaty party or parties, whose

law grants a term of copyright protection that is the same as or longer than theterm provided in the United States,

(C) simultaneously in the United States and a foreign nation that is not a treatyparty; or

(D) in a foreign nation that is not a treaty party, and all of the authors of the workare nationals, domiciliaries, or habitual residents of, or in the case of an audiovi-sual work legal entities with headquarters in, the United States;

(2) in the case of an unpublished work, all the authors of the work are nationals,domiciliaries, or habitual residents of the United States, or, in the case of an unpub-lished audiovisual work, all the authors are legal entities with headquarters in theUnited States; or

(3) in the case of a pictorial, graphic, or sculptural work incorporated in a building orstructure, the building or structure is located in the United States.

224. U.S. 1976 Copyright Act §407.225. U.S. 1976 Copyright Act §408(b).

outside the United States, one complete copy or phonorecord as so published;(4) in the case of a contribution to a collective work, one complete copy orphonorecord of the best edition of the collective work.”226

(iv) Domestic Manufacturing Requirement. Section 601 of the 1976 Copy-right Act provides that, before July 1, 1986, and subject to specified excep-tions, “the importation into or public distribution in the United States ofcopies of a work consisting preponderantly of nondramatic literary materialthat is in the English language and is protected under this title is prohibitedunless the portions consisting of such material have been manufactured inthe United States or Canada.” Importation or public distribution of copies ofa work in violation of section 601 “does not invalidate protection for the workunder this title,” but it may give an infringer a complete defense in an in-fringement action.227 By contrast, the counterpart requirement in the 1909Act228 at least arguably made forfeiture a sanction for noncompliance. Ifnoncompliance forfeited copyright under the 1909 Act, a work published inviolation of the manufacturing requirement before the effective date of the1976 Act would be in the public domain in the United States except to theextent that copyright in the work was restored under the restoration provi-sions of the Uruguay Round Agreements Act.229

(v) Renewal Formalities. The 1909 Copyright Act granted an initial termof copyright measured by twenty-eight years from the work’s first publi-cation and a second, twenty-eight-year, renewal term upon compliancewith prescribed registration formalities.230 Although the 1976 Act replacedthe renewal feature with a single copyright term conforming to the BerneConvention’s minimum standard, the Act retained the renewal mechanismfor works in their first copyright term on January 1, 1978, entitling authorsof works in their first copyright term on that date to renew their copyrightsfor a further term of forty-seven years, extended by amendments enacted in1998 to sixty-seven years.231

In 1992 Congress amended the 1976 Act to divide works for which renewalregistration is required and those for which it is not, between works for whichcopyright was secured before January 1, 1964, and works for which copy-right was secured between January 1, 1964, and December 31, 1977.232

Copyrights secured before January 1, 1964, will enjoy a renewal term only

226. U.S. 1976 Copyright Act §408(b).227. U.S. 1976 Copyright Act §601(d).228. U.S. 1909 Copyright Act §16.229. See §5.1.1.3.B(iv), above.230. U.S. 1909 Copyright Act §24.231. U.S. 1976 Copyright Act §304(a).232. Pub. L. No. 102-307, 106 Stat. 264 (1992).



if the author or other designated statutory claimant obtained a renewal reg-istration within one year before the end of the original twenty-eight-yearcopyright term; absent renewal registration, the work fell into the publicdomain at the end of the original term, subject, however, to restoration un-der the Uruguay Round Agreements Act in appropriate cases.233 By contrast,copyrights first secured between January 1, 1964, and December 31, 1977,are today automatically renewed for a sixty-seven-year term without regis-tration in the twenty-eighth year.

(vi) Restoration of Copyright. The 1994 Uruguay Round Agreements Actrevised section 104A of the 1976 Copyright Act to vest copyright in quali-fying foreign works “automatically on the date of restoration.” January 1,1996, is the date of restoration of copyright in a work whose source countrywas, on that date, a member of the World Trade Organization or an adher-ent to the Berne Convention.234 Copyright in a restored work “shall subsistfor the remainder of the term of copyright that the work would have other-wise been granted in the United States if the work never entered the publicdomain in the United States.”235

Section 104A restores copyright in any “original work of authorship” thatmeets three requirements: the work cannot be in the public domain in itssource country through expiration of its term of protection there;236 the workmust have at least one author or rightholder “who was, at the time the workwas created, a national or domiciliary of an eligible country”;237 and, if thework was published, it must have been “first published in an eligible coun-try and not published in the United States during the 30-day period follow-ing publication in such eligible country.”238 The provision defines “restored

233. See §5.1.1.3.B(iv), below.234. U.S. 1976 Copyright Act §104A(h) (2).235. U.S. 1976 Copyright Act §104A(a) (B).236. U.S. 1976 Copyright Act §104A(h) (6) (B). Section §104A(h) (8) defines “source coun-

try” as:

(A) a nation other than the United States;(B) in the case of an unpublished work

i(i) the eligible country in which the author or rightholder is a national or domicili-ary, or, if a restored work has more than one author or rightholder, of which themajority of foreign authors or rightholders are nationals or domiciliaries; or

(ii) if the majority of authors or rightholders are not foreign, the nation other thanthe United States which has the most significant contacts with the work; and

(C) in the case of a published worki(i) the eligible country in which the work is first published; or(ii) if the restored work is published on the same day in two or more eligible coun-

tries, the eligible country which has the most significant contacts with the work.

237. U.S. 1976 Copyright Act §104A(h) (6) (D).238. U.S. 1976 Copyright Act §104A(h) (6) (D).

work” to include not only foreign works that lost copyright through theomission of copyright notice but, more generally, works that fell into thepublic domain in the United States because of “(i) noncompliance with for-malities imposed at any time by United States copyright law, including fail-ure of renewal . . . or failure to comply with any manufacturing require-ments; (ii) lack of subject matter protection in the case of sound recordingsfixed before February 15, 1972; or (iii) lack of national eligibility.”239

Section 104A distinguishes between enforcement of restored copyrightsagainst alleged infringers that did, and those that did not, invest in relianceon the work’s earlier public domain status. If the infringer is not a “relianceparty,”240 full copyright remedies will automatically be available against it“on or after the date of restoration of a restored copyright with respect to anact of infringement of the restored copyright that is commenced on or afterthe date of restoration.”241 By contrast, the owner of a restored copyright whobrings an infringement action against a reliance party must comply witheither of two conditions. One condition requires the copyright owner to filea notice of intent to enforce the restored copyright during a period of twenty-four months beginning on the date of restoration; the notice is to be filed withthe U.S. Copyright Office for publication by the Office in the Federal Regis-ter. Alternatively, the copyright owner can serve a notice of intent to enforcethe restored copyright directly on the reliance party. If the copyright ownermeets both conditions, the prescribed twelve-month immunity period for theinfringer runs from the earlier of publication or service of notice.242

239. U.S. 1976 Copyright Act §104A(h) (6) (C). An Administrative Action Statement onthe 1994 amendments gives three examples of copyrights that will be restored under section104A:

A French short story that was first published without copyright notice in 1935 will betreated as if it had both been published with a proper notice and properly renewed, mean-ing that its restored copyright will expire on December 31, 2010 (75 years after the U.S.copyright would have come into existence);

A Chinese play from 1983 will be protected until December 31 of the fiftieth year afterthe year in which its author dies; or

A Mexican sound recording first published in Mexico in 1965 will be protected until De-cember 31, 2040.

Uruguay Round Agreements Act, Statement of Administrative Action, Pub. L. No. 103-465,1994 U.S.C.C.A.N. 4040, 4290.

240. A “reliance party” is any person who, “(A) with respect to a particular work, engagesin acts, before the source country of that work becomes an eligible country, which would haveviolated section 106 if the restored work had been subject to copyright protection, and who, afterthe source country becomes an eligible country, continues to engage in such acts; (B) before thesource country of a particular work becomes an eligible country, makes or acquires one or morecopies or phonorecords of the work.” U.S. 1976 Copyright Act §104A(h) (4).

241. U.S. 1976 Copyright Act, §104A(d) (1).242. U.S. 1976 Copyright Act §104A(d) (2).



A restoration enforcement notice may be filed with the U.S. Copyright Officeonly within twenty-four months of the work’s restoration date, while a noticemay be served on a reliance party at any time after the copyright’s restora-tion.243 A restoration enforcement notice filed in the Copyright Office will beeffective against any potentially infringing use and against any potential in-fringer. By contrast, notice served directly on a reliance party will be effectiveonly with respect to the use specified in the notice, and only against the partyserved or any third party who knows of its service and content. The Acteffectively gives a reliance party a one-year grace period from the date it re-ceives actual notice from the copyright owner, or constructive notice from theCopyright Office filing, whichever is earlier, during which to write off its in-vestment in the restored work and exploit its own version in the marketplace.

In a departure from the 1976 Copyright Act’s general silence on the ques-tion of what country’s law is to govern determinations of authorship andinitial ownership of copyright, section 104A(b) provides that “[a] restoredwork [sic] vests initially in the author or initial rightholder of the work asdetermined by the law of the source country of the work.” Read literally, thisprovision would vest ownership of the restored copyright in the work’s au-thor or original owner even though, before copyright restoration, he assignedhis rights to a third party. The Administration Action Statement suggeststhat the amendments intended a different result: “If the author or initialrightholder at any time assigned, licensed or otherwise alienated or disposedof an exclusive or non-exclusive interest in the copyright, that disposition isto be given effect according to the terms of the agreement.”244

§5.1.1.4. Fixation

Countries divide on whether to require a work’s fixation in some tangiblemedium as a condition to its protection. The Berne Paris Text supports thisdivision by providing that it shall “be a matter for legislation in the countriesof the Union to prescribe that works in general or any specified categories ofworks shall not be protected unless they have been fixed in some materialform.”245 The U.S. Copyright Act’s definition of fixation is typical: a work isfixed in a tangible medium of expression “when its embodiment in a copy orphonorecord, by or under the authority of the author, is sufficiently perma-nent or stable to permit it to be perceived, reproduced, or otherwise commu-nicated for a period of more than transitory duration.”246

243. U.S. 1976 Copyright Act §104A(e).244. Uruguay Round Agreements Act, Statement of Administrative Action, Pub. L.

No. 103-465, 1994 U.S.C.C.A.N. 4040, 4290.245. Berne Convention, 1971 Paris Text, Art. 2(2).246. U.S. 1976 Copyright Act §101.

By rough measure, countries requiring fixation as a condition to protec-tion belong to the common law tradition of copyright, while those that donot are aligned with the civil law tradition. The division may have as muchto do with differences in approach to pleadings and proof between the twotraditions as it does with differences in the underlying philosophies of copy-right and author’s right.247 Also, Professor Ysolde Gendreau has suggestedthat the requirement occupies a historic trajectory and that “the abandon-ment of the criterion of fixation seems to reflect a more modern version ofcopyright”; while French legislation initially imposed a fixation requirement,case law and theory “gradually caused the law to develop so that fixation ofthe work ceased to be a precondition of protection.”248 Requirements maydiffer even among countries imposing a fixation requirement. For example,where the U.S. Copyright Act requires the fixation to be “by or under theauthority of the author,” the British legislation expressly makes the author’sassent to the act of fixation unnecessary.249

§5.1.2. Performances, Phonograms (Sound Recordings),Broadcasts, and Other Productions

Performances, phonograms and broadcasts make up the principal subjectmatter of neighboring rights. Together with other creative productions, suchas databases, this subject matter “neighbors” the subject matter of author’sright and copyright because it is thought to fall outside the domain of liter-ary and artistic works and to lack the authorial creativity required for ad-mission into the cathedral of author’s right. Neighboring rights and otherrelated rights are generally subject to neither the Berne nor the UniversalCopyright Convention but to other international or regional treaty arrange-ments, and the terms for protection of foreign works under neighboring rightsagreements will often differ sharply from the national treatment principle ofthe two multilateral copyright conventions. The European Database Direc-tive, for example, generally requires Council action before the Directive’s suigeneris protection will be extended to databases made in third countries, and“only if such third countries offer comparable protection to databases pro-duced by nationals of a Member State or persons who have their habitual

247. “Even in those cases in which fixation is demanded as a matter of proof, one school ofthought believes that, if a lecture is given extempore, or a tune improvised on the piano, andanother records it, the latter, by doing so, perfects the copyright in favour of the lecturer orpianist.” WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works(Paris Act, 1971) 18 (1978).

248. Ysolde Gendreau, The Criterion of Fixation in Copyright Law, 159 R.I.D.A. 110, 126(1994).

249. United Kingdom. Copyright, Designs and Patents Act 1988 §3(3).



residence in the territory of the Community.”250 At the same time, where acountry, such as the United States, treats the subject matter of neighboringrights as the subject matter of copyright, the Berne and U.C.C. points of at-tachment will control protection in the United States.

It is a legal fiction that the subject matter of neighboring and other re-lated rights lacks the authorial creativity that characterizes the subjectmatter of copyright and author’s right. A performance by a leading con-cert pianist may embody as much, if not more, creativity as the trite adver-tising jingle that qualifies for author’s right protection. One reason thefiction persists is the force of history. Another reason is expedience. Phono-grams and broadcasts are typically large-scale, collaborative enterprisesinvolving several co-workers with differing levels of responsibility. Unlikeauthor’s right doctrine, with its rigid insistence that only humans can beauthors and, consequently, initial right holders, neighboring rights doc-trine easily accommodates the expedient of corporate creation and originalownership.

National legislatures have in some places brought classes of subject mat-ter other than performances, phonograms, and broadcasts onto this secondtier of intellectual property protection. The German Copyright Act, for ex-ample, gives rights to motion picture producers for their contribution to afilm’s production,251 to publishers of scientific editions for substantial edito-rial contributions to public domain works,252 and to photographers for theirordinary, routine photographs, such as school portraits.253 The 1988 Copy-right, Designs and Patents Act in the United Kingdom extends protection to“the typographical arrangements of published editions,” effectively securingthe publisher’s investment in producing a published work against its un-authorized reproduction in facsimile form.254 The European Union’s 1996Database Directive requires member states not only to give copyright protec-tion to the authorial elements of databases,255 but also to “provide for a right

250. E.C. Database Directive, Recital 56; Art. 11(3).251. Germany, Copyright Act Art. 94. See Filmhersteller (“Film Producer”) German Fed-

eral Supreme Court, Oct. 22, 1992 (Case 1 ZR 300190), 25 I.I.C. 287, 288 (1994) (stating thatthe “achievement of the film producer which is to be awarded protection under sec. 94 of theCopyright Act is not ascribable to an artistic-creative contribution to the substance of the film,although this may occasionally be the case, but in accepting the financial responsibility . . .(and) organizational activities (necessary) . . . for the production of an artistic work which isappropriate for exploitation”).

252. Germany, Copyright Act Art. 70.253. Germany, Copyright Act Art. 72.254. United Kingdom, Copyright, Designs and Patents Act 1988 §§1(1)(c), 8. See generally

Hugh Laddie, Peter Prescott, & Mary Vitoria, The Modern Law of Copyright and DesignsChap. 8 (2d ed. 1995).

255. E.C. Database Directive Art. 3(1).

for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verificationor presentation of the contents to prevent extraction and/or re-utilisation ofthe whole or of a substantial part, evaluated qualitatively and/or quantita-tively, of the contents of that database.”256

§5.1.2.1. Performances

The Rome Convention does not define “performances” but does define the“performers” whose activities will constitute a protected performance:257

“performers means actors, singers, musicians, dancers, and other personswho act, sing, deliver, declaim, play in, or otherwise perform literary or ar-tistic works.”258 The WIPO Performances and Phonograms Treaty adoptsthis formulation but adds “interpret” to the possible activities of performersand “expressions of folklore” to the objects of a performance.259 The WIPOGuide to the Rome Convention suggests that performers include not only thosewho directly interpret the work, such as singers or dancers, but also partici-pants who execute it, such as symphony orchestra conductors.260

The Rome Convention makes the performance of “literary or artisticworks” an essential part of its definition of “performers.” The Convention doesnot require that the literary or artistic work be presently covered by copy-right—the rendition of a public domain work will also qualify the perfor-mance for protection261—but the object of the performances must be a “work”in the sense of the Berne Convention or the U.C.C.262 Article 9 of the Rome

256. E.C. Database Directive Art. 7(1).257. “[A]s the General Report points out it was decided that obviously performance

means the activities of a performer as such, and it was agreed that whenever the Conven-tion uses the expression ‘performance’ or in the French text ‘exécution’ it must be under-stood as a generic term which also includes recitation and presentation (‘récitation’ and‘représentation’).” WIPO, Guide to the Rome Convention and to the Phonograms Convention 22(1981).

258. Rome Convention Art. 3(a).259. WIPO Performances and Phonograms Treaty Art. 2(a): “For the purposes of this

Treaty: ‘performers’ are actors, singers, musicians, dancers, and other persons who act, sing,deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expres-sions of folklore.”

260. “The French text uses, for the single word ‘performer,’ ‘artiste interprète ou exécutant.’The words ‘artiste interprète’ are usually used of soloists and actors, whereas members of anorchestra, including the conductor, are usually ‘artistes exécutants.’ In order that there shouldbe no doubt that conductors of instrumental and vocal groups were protected, both were con-sidered included in the expression ‘artiste interprète ou exécutant.’” WIPO, Guide to the RomeConvention and to the Phonograms Convention 21 (1981).

261. See WIPO, Guide to the Rome Convention and to the Phonograms Convention 21 (1981).262. WIPO, Guide to the Rome Convention and to the Phonograms Convention 21 (1981).



Convention leaves it to member states to decide whether to extend protec-tion to “variety and circus artists” and others whose performances are notconnected to literary or artistic works.263

National legislation in Rome Convention countries generally conforms tothe minimum standards implicit in the Convention’s definition of perfor-mance. Some go beyond the minimum and include performances of varietyacts or improvisation, as well as renditions of works,264 or make explicit thatall participants—conductors as well as players—qualify for protection.265

The more subtle question of where performance leaves off and authorshipbegins—when, for example, a conductor’s interpretation becomes an ar-rangement entitled to protection as a derivative work—requires the mostdelicate analysis of the copyright and neighboring rights laws of the protect-ing country.

In the United States, a performance will be protected under copyright lawso long as it is fixed in a tangible medium of expression and meets the Copy-right Act’s modest originality standard. A filmed or videotaped circus per-formance, for example, will be no less protectible as a motion picture or otheraudiovisual work than would a scripted dramatic work.266 Similarly, a vocalperformance fixed on tape, compact disk, or other form of phonorecord willbe protected as a “sound recording” under the Copyright Act.267 Protectionmay be available for unfixed performances under state common law copy-right or unfair competition doctrines.268 In the case of the unauthorizedfixation, transmission, or marketing of the sounds, images, or both, of a livemusical performance, an extensive array of copyright remedies will be avail-able under federal antibootlegging provisions.269

§5.1.2.2. Phonograms

The Rome Convention for the Protection of Performers, Producers of Phono-grams and Broadcasting Organizations, and the more closely circumscribed

263. Article 9 provides: “Any Contracting State may, by its domestic laws and regulations,extend the protection provided for in this Convention to artists who do not perform literaryor artistic works.”

264. See, e.g., France, Intellectual Property Code, Art. L. 212–1 (“[p]erformers shall be thosepersons who . . . perform . . . variety, circus or puppet acts”); United Kingdom, The Copyright,Designs and Patents Act 1988 §180 (“‘[p]erformance’ means . . . a performance of a varietyact or any similar presentation”).

265. See, e.g., Germany, Copyright Act Art. 73 (“[p]erformer means a person who . . . par-ticipates artistically in the recitation or performance of a work”).

266. U.S. 1976 Copyright Act §102(a) (6).267. U.S. 1976 Copyright Act §102(a) (7).268. See Paul Goldstein, 3 Copyright §15.4 (1996).269. 17 U.S. Code ch. 11 (1999).

Geneva Phonograms Convention, define “phonogram” identically as “anyexclusively aural fixation of sounds of a performance or of other sounds,”270

and “producers of phonograms” identically as “the person who, or the legalentity which, first fixes the sounds of a performance or other sounds.”271

Although a phonogram may constitute the fixed form of a performance, theterm is both broader and narrower than the product of a performance asdefined in the Rome Convention. A phonogram may fix not only a perfor-mance of work, but also “other sounds,”272 and a phonogram can only bean aural, not a visual fixation. Also, while a performer will invariably be aflesh-and-blood participant, it will often be a corporate phonogram producerthat arranges for and finances the fixation.

The U.S. Copyright Act includes among its copyrightable subject matter,“sound recordings,”273 defined as “works that result from the fixation of aseries of musical, spoken or other sounds, but not including the sounds ac-companying a motion picture or other audiovisual work, regardless of thenature of the material objects, such as disks, tapes, or other phonorecords,in which they are embodied.”274 According to the authoritative Congres-sional report on the 1976 Act, the protectible elements of a sound recordinglie in the contributions “of the performers whose performance is capturedand on the part of the record producer responsible for setting up the record-ing session, capturing and electronically processing the sounds, and com-piling and editing them to make the final sound recording.”275

§5.1.2.3. Broadcasts

Of the three classes of neighboring rights subject matter that the Rome Con-vention brings under protection, the Convention is least explicit about theproducts of broadcasting organizations. The Convention definition of “broad-

270. Rome Convention Art. 3(b); Geneva Phonograms Convention Art. 1(a). CompareWIPO Performances and Phonograms Treaty, Art 2(b): “‘phonogram’ means the fixation ofthe sounds of a performance or of other sounds, or of a representation of sounds other than inthe form of a fixation incorporated in a cinematographic or other audiovisual work.”

271. Rome Convention Art 3(c); Geneva Phonograms Convention Art. 1(b). Compare WIPOPerformances and Phonograms Treaty Art. 2(d): “‘producer of a phonogram’ means the per-son, or the legal entity, who or which takes the initiative and has the responsibility for thefirst fixation of the sounds of a performance or other sounds, or the representations of sounds.”

272. “[T]he fixation may be of sounds of a performance or of other sounds. During the RomeConference bird-song and natural noises were given as examples of the latter. In other words,whatever the origin of the sound, the phonogram as such is protected by the Convention.”WIPO, Guide to the Rome Convention and to the Phonograms Convention 22 (1981).

273. U.S. 1976 Copyright Act §102(a) (7).274. U.S. 1976 Copyright Act §101.275. U.S. House Report 56.



casting” as “the transmission by wireless means for public reception of soundsor of images and sounds” implies protection for a broadcaster’s technicalcontributions to the assembly and production, as well as for the transmis-sion of both live and prerecorded events and, entirely apart from any works,performances or phonograms that may be embodied in the broadcast.276

Protection for broadcast content may also be granted under legislation orcase law securing a country’s obligations under the Brussels Satellite Con-vention’s provisions respecting programme-carrying signals.277

Broadcasts are protected by copyright in the United States. Since piracywill often occur as the broadcast is made and before it can be fixed in somematerial support, the U.S. Copyright Act has defined the term “fixed” to makecopyright available to producers whose live broadcasts reach the public inunfixed form, so long as the broadcaster ensures that the signal is fixed si-multaneously with the broadcast: “A work consisting of sounds, images, orboth, that are being transmitted, is ‘fixed’ for purposes of this title if a fixa-tion of the work is being made simultaneously with its transmission.”278 Thussomeone who, without authority, retransmits or copies a live broadcast off

the air will be liable for infringing the copyright in the content of the broad-cast if the copyright owner had simultaneously fixed the broadcast in a copyor phonorecord.279

§5.1.2.4. Formalities

As a rule, national legislatures do not impose formalities as a condition toprotection of neighboring rights. However, against the possibility that acountry will impose formalities against foreign phonogram producers orperformers whose performances are fixed in phonograms, the Rome Conven-tion provides that any such formality “shall be considered as fulfilled” if allcopies of the phonogram, or its packages, bear a notice consisting of an en-circled “P” “accompanied by the year date of first publication, placed in such

276. Rome Convention Art. 3(f). Compare WIPO Performances and Phonograms TreatyArt. 2(f): “‘broadcasting’ means the transmission by wireless means for public reception ofsounds or of images and sounds or of the representations thereof; such transmission by sat-ellite is also “‘broadcasting’; transmission of encrypted signals is ‘broadcasting’ where themeans for decrypting are provided to the public by the broadcasting organisation or withits consent.”

277. Brussels Convention (1974) Art. 2(1).278. U.S. 1976 Copyright Act §101 U.S. House Report, 52.279. This special provision for live broadcasts is restricted to works that are “transmitted.”

As a result, an actor, singer, or musician whose performance is being simultaneously fixedbut is not being transmitted will have no rights under the Copyright Act against someone inthe audience who copies his performance. He may, however, have rights under state or fed-eral antibootlegging laws.

a manner as to give reasonable notice of claim of protection.”280 The GenevaPhonograms Convention makes comparable provisions for complying withformalities in foreign countries.281

As a practical matter, since phonogram producers and performers will notbe able to control the ultimate destination of their products, it is prudent forthem to affix the notice prescribed by the Rome and Geneva Conventions totheir products against the event that the destination turns out to be a Romeor Geneva Convention country that requires formalities as a condition toprotection. The notice option offered by the Rome and Geneva Conventionsis far from onerous and will commonly be met by the presence on the packag-ing of the name of the record company and the performers involved, to-gether with the symbol of the encircled “P” and the year date of publica-tion. Further, the WIPO Guide to the Rome Convention and to the PhonogramsConvention underscores a point that applies to the Geneva Convention aswell: “It was also clearly understood that, in countries where no formali-ties are required as a condition of protection, convention protection mustbe granted even if the phonogram does not bear the notice specified by theConvention.”282

§5.2OWNERSHIP

The Berne Convention and the Universal Copyright Convention are virtu-ally silent on two economically salient questions: Who qualifies as the au-thor and original owner of rights in a literary or artistic work? What require-ments, if any, must be met for a transfer of these rights to be effective? Aprovision in the July 23, 1990, draft of the copyright provisions of the TRIPsAgreement would have provided that rights “shall be freely and separatelyexploitable and transferable,” but it was ultimately dropped.283 The conse-quence—and doubtless also the cause—of the silence of international agree-ments on these important questions is that countries vary, sometimes widely,in the answers they have given. Professor Eugen Ulmer’s observation on thediverse treatment of copyright contracts, made in 1976, remains true today:“[I]n some instances we find detailed statutory regulations; in others the lawscontain but a few general provisions and regulate only specific types of con-tracts; in still others statutory provisions on this subject are almost totally

280. Rome Convention, Art. 11.281. Geneva Phonogram Convention Art. 5.282. WIPO, Guide to the Rome Convention and to the Phonograms Convention 45 (1981).283. Daniel Gervais, The TRIPs Agreement: Drafting History and Analysis 102 (1998).



absent. Only a few rules are generally recognized, for example, the principlethat an author who has sold the original of his work may not be assumed tohave transferred the copyright exploitation rights.”284

Over the past several decades, the problem of identifying a work’s authoror authors has been magnified by the trend to large-scale collaboration inthe creation of literary and artistic works. Motion pictures, computer pro-grams, and collective works such as encyclopedias are examples. This de-velopment has placed particular strains on the civil law tradition, whichhas had to reconcile a philosophical commitment to the autonomy of theindividual author with the economic pressure to consolidate ownership ina single individual or institution to facilitate a work’s exploitation in themarketplace.

Changes in the conditions of authorship have produced changes in the legaldefinition of authors. Consequently, in tracing a work’s chain of title, atten-tion needs to be paid to the legal definition of author that obtained under theapplicable national law at the time of the work’s creation or first publication.Under U.S. law, for example, some works that the 1909 Copyright Act wouldhave characterized as joint works or as works made for hire will not be jointworks or works for hire under the 1976 Copyright Act. This means that, intracing the chain of title to a work published before the effective date of the1976 Act, January 1, 1978, the prospective transferee needs to consult the1909 Act’s rules on authorship to identify the work’s author and originalowner.285

The first part of this section traces legal patterns of authorship and initialownership from simple to complex arrangements—from individual author-ship,286 to collaborative authorship,287 to works created in the course of anemployment relationship.288 Motion pictures, which commonly embody ele-ments of both collaborative and employed creativity, are considered last.289

The second part of this section describes the rules and institutions that regu-late transfers from the initial copyright owner: limitations on the principleof freedom of contract, including constructional presumptions;290 rules onformalities and priorities between competing transfers;291 and the operationof copyright collecting societies.292

284. Eugen Ulmer, Some Thoughts on the Law of Copyright Contracts, 7 I.I.C. 202 (1976).285. See, e.g., Roth v. Pritikin, 710 F.2d 934, 937–939 (2d Cir.), cert. denied, 464 U.S. 961

(1983), aff’d in part, rev’d in part on remand, 787 F.2d 54 (2d Cir. 1986).286. See §5.2.1.1, below.287. See §5.2.1.2, below.288. See §5.2.1.4, below.289. See §5.2.1.5, below.290. See §5.2.2.1, below.291. See §5.2.2.2, below.292. See §5.2.2.3, below.

§5.2.1. Original Ownership

§5.2.1.1. Individual Authorship

As a rule, copyright legislation in both civil law and common law countriesidentifies a work’s author and its original owner as the flesh-and-blood, natu-ral person who conceived and executed the work. French law, for example,permits original ownership of authors’ rights to vest in corporate, as opposedto natural, persons in only limited circumstances: ownership of copyrightin collective works293 and of computer programs created in the course ofemployment, in which case copyright vests in the employer.294 German lawis even more rigorous in its requirement that a work’s author be a naturalperson and that the term of copyright be measured accordingly.295

Common law countries are notably less insistent than civil law countriesin the requirement that a work’s author and initial copyright owner be anatural person or persons. The British legislation vests copyright in literary,dramatic, musical, and artistic works in the work’s actual author,296 sub-ject only to encompassing rules on works made in the course of employ-ment297 and to a special provision for computer-generated works, for whichthe author and initial owner is “the person by whom the arrangements nec-essary for the creation of the work are undertaken.”298 The U.S. CopyrightAct similarly vests copyright in the employer in the case of works made forhire but, unlike the British Act, characterizes the employer in this case asnot only the initial copyright owner, but the work’s author as well.299

The insistence in civil law countries that the original owner be a natural,not a corporate person is generally absent from neighboring rights legislation,which, though encompassing human performers, also contemplates phono-gram producers and broadcasting organizations—categories in which corpo-rate rather than natural persons will typically predominate. For example, theFrench Intellectual Property Code vests the ownership of a sound recording inits producer, defined as any “natural or legal person who takes the initiativeand responsibility for the initial fixation of a sequence of sounds.”300 The Ger-man Copyright Act gives “the exclusive right to reproduce and distribute” asound recording to its producer; “[i]f the audio recording has been produced

293. France, Intellectual Property Code Art. L 113-5. This provision does not so much al-locate ownership as it allocates the burden of proof on ownership.

294. France Intellectual Property Code Art. L 113-9.295. Germany, Copyright Act Arts. 7-10.296. United Kingdom, Copyright, Designs & Patents Act 1988 §§9, 11.297. United Kingdom, Copyright, Designs & Patents Act 1988 §11(2).298. United Kingdom, Copyright, Designs & Patents Act 1988 §9(3).299. See §5.2.1.4, below.300. France, Intellectual Property Code Art. L 213-1.



by an enterprise, the owner of the enterprise shall be deemed the producer.”301

The 1988 Copyright, Designs and Patents Act in the United Kingdom vestsauthorship and initial ownership in “the person by whom the arrangementsnecessary for the making” are undertaken in the case of sound recordingsand films.302 The U.S. Copyright Act vests copyright in sound recordings, asit does for every other work, in the “author” of the sound recording;303 inmany cases, however, the sound recording will be “made for hire” underspecial provisions of the U.S. Copyright Act and the “author” will be a cor-porate employer.

Article 15(1) of the Paris Text of the Berne Convention establishes a gen-eral presumption of authorship, and consequently initial ownership, forpurposes of legal standing: “In order that the author of a literary or artisticwork protected by this Convention shall, in the absence of proof to the con-trary, be regarded as such, and consequently be entitled to institute infringe-ment proceedings in the countries of the Union, it shall be sufficient for hisname to appear on the work in the usual manner.”304 Although Article 15(1)explicitly aims its presumption of authorship at the infringement context,305

it will inevitably affect the conduct of transactions, since a licensee from some-one other than the presumptive author faces the risk that it will have to defendan infringement lawsuit brought against it by the presumptive author.

National law may enlarge Article 15(1)’s presumption respecting author-ship. The German Copyright Act, for example, provides that where the author’sname does not appear in the customary manner but the editor’s or publisher’sname does appear, the editor or publisher will be presumed to have stand-ing to assert the author’s rights.306 Under the French and British legislation,the author is presumed to be the person who is named as such on publishedcopies of the work.307 The U.S. Copyright Act connects its presumption of

301. Germany, Copyright Act, Art. 85(1).302. United Kingdom, Copyright, Designs & Patents Act 1988 §9(2) (a).303. U.S. 1976 Copyright Act §201(a).304. Berne Convention, 1971 Paris Text, Art. 15(1). By its terms, Article 15(1) will apply

even if the author’s name is a pseudonym, “where the pseudonym adopted by the author leavesno doubt as to his identity.” Berne Convention, 1971 Paris Text Art. 15(1). Article 15(3)covers the situation of anonymous and pseudonymous works where the author’s identity isunknown.

305. “The Convention does not define ‘author’ but establishes a presumption that it is hewho is entitled to bring action to assert the copyright in the work. It is enough for this pur-pose for his name to appear on the work in the usual manner. The courts are left to give pre-cise meaning to this general expression. If an alleged infringer wishes to show that the au-thor is not the copyright owner, he must prove it.” WIPO, Guide to the Berne Convention for theProtection of Literary and Artistic Works (Paris Act, 1971) 93 (1978).

306. Germany, Copyright Act Art. 10(2).307. France, Intellectual Property Code Art. L 113-1; United Kingdom, Copyright, Designs

& Patents Act 1988 §104(2).

authorship to information appearing not on copies of the work, but ratherin the work’s certificate of copyright registration as part of its rule that acertificate of registration secured before or within five years of a work’s pub-lication shall constitute presumptive evidence of the validity of the copyrightand the facts, including authorship, stated in the certificate.308

§5.2.1.2. Collaborative (Joint) Authorship

Where two or more authors have collaborated in creating a single work, leg-islation in most countries will treat them as co-authors and co-owners andwill measure the work’s term of protection from the death of the last surviv-ing co-author.309 A classic instance of a joint work would be a text writtenby two authors, each contributing ideas and expression, text, and editorialchanges to every page.

As a general rule, for a work to qualify as a joint or collaborative work andfor a contributor to qualify as a co-author, each contributor must have broughtcreative expression to the work. For example, an American court held that aclient who contributed ideas, directed changes, and exercised approval powerat each stage of an architect’s work was not a co-author of the resulting ar-chitectural plans.310 However, a contribution to a joint work need not bequantitatively or qualitatively equal to the other contributions, so long as itmeets the threshold of protectible expression. Professor Hugenholtz has re-ferred to the Dutch Supreme Court decision Kluwer v. Lamoth, in which thecourt ruled that a stylist who assisted a photographer by creatively arrang-ing needleworks for the photograph was a co-author with the photographerof the resulting photographs.311

A second requirement generally applied to joint works is that the con-tributions of the co-authors be inseparably connected. How inseparablemust the contributions to a joint work be? Some countries measure the co-alescence required of contributions to joint works in abstract terms. TheUnited Kingdom’s Copyright, Designs and Patents Act, for example, contem-plates a “work produced by the collaboration of two or more authors in whichthe contribution of each author is not distinct from that of the other authoror authors.”312 The 1976 U.S. Copyright Act defines a joint work as “a workprepared by two or more authors with the intention that their contributions

308. U.S. 1976 Copyright Act §410(c).309. See §5.3.3.1.A(ii), below.310. Aitken, Hazen, Hoffman, Miller, P.C. v. Empire Constr. Co., 542 F.Supp. 252, 259 (D. Neb.

1982).311. P. Bernt Hugenholtz, Dutch Copyright Law, 1990–1995, 169 R.I.D.A. 129, 173 (1996).312. United Kingdom, Copyright, Designs and Patents Act 1988 §10(1).



be merged into inseparable or interdependent parts of a unitary whole.”313

This formula mirrors the test first announced by an English court a centuryearlier: “To constitute joint authorship, there must be a common design.”314

The French Court of Cassation has stated the requirement as “concerted cre-ative effort undertaken jointly by several authors.”315

Other countries measure the required merger of elements in economicterms. The German Act, for example, requires not only that “several personshave created a work jointly,” but also that “their respective contributionscannot be separately exploited.”316 The contributions need not, however,have been made simultaneously.317 The Japanese legislation, modeled in thisrespect after the German statute, defines joint works as works that are “cre-ated by two or more persons in which the contribution of each person can-not be separately exploited.”318 Applied literally, the approach would, forexample, withhold joint work status from a musical drama, in which thesongs could be exploited separately from the libretto, and even from certainindividual songs in which the music might be exploited separately from thewords.

Legislation in most countries bars one co-author, or his successor in in-terest, from altering or exploiting the collaborative work without the con-sent of the work’s other co-authors, and in many of these countries the otherco-authors cannot withhold their consent to the proposed exploitation otherthan in good faith and for justifiable cause.319 The French Intellectual Prop-erty Code carves out an important exception to this rule for joint works, suchas musical dramas, in which individual contributions belong to distinctgenres, such as libretto and music; in these cases each contributor may,absent an agreement to the contrary, exploit his contribution without con-sent of his co-authors so long as these activities do not interfere with theexploitation of the joint work.320 In this respect, the French law approximatesthe effect of the German approach to defining joint works, which would char-acterize the contribution of individual genres as separate works rather thancontributions to a joint work. The operational difference between the two is

313. U.S. 1976 Copyright Act §101.314. Levy v. Rutley, 6 L.R.-C.P. 523, 529 (1871).315. Le Brun v. SA Braesheather, Cass. 1st Civ. Chamber, Oct. 18, 1994, 164 R.I.D.A. 304,

308 (1995).316. Germany, Copyright Act Art. 8(1). See also Japan, Copyright Act Art. 2(1)(xii).317. Buchhaltungsprogramm (“Accounting Program”), German Federal Supreme Court,

July 14, 1993 (Case No. I ZR 47/91), (1995), 26 I.I.C. 127.318. Japan, Copyright Act Art. 2(1) (xii).319. See, e.g., Japan Copyright Act Arts. 64-65; Germany, Copyright Act Art. 8(2). Cf.

France, Intellectual Property Code Art. L 113-3. (“In the event of failure to agree, the civilcourts should decide.”)

320. France, Intellectual Property Code Art. L 113-3.

that under the German approach each contribution enjoys its own copyrightterm, while under the French approach, each contribution enjoys the termthat attaches to the joint work as a whole.321

The United States is the most prominent exception to the rule requiringunanimous consent among co-owners as a condition to exploitation of a jointwork. Case law in the United States entitles each co-owner to exploit thecopyright in a work himself, or to license others to do so; each must accountto his co-owners for any profits earned.322 Because each co-owner can indi-vidually grant only a nonexclusive license, and because third parties willoften accept no less than an exclusive license—which can be granted onlyby all co-owners jointly—the principal effect of the American rule is to im-munize from liability the co-owner who exploits the work himself.

Co-authors can, at the time they create their work, anticipate and resolveby contract any later disagreements between themselves over the mannerand timing of the work’s exploitation. This means that in the great majorityof countries that require unanimous consent to a work’s exploitation, theco-authors can, even before they create the work, enter into an agreementon terms that will obviate the need for subsequent consent. Similarly, in theUnited States the co-authors can agree to require unanimous consent. Al-though collaborators may contract to alter these and other incidents of co-ownership, they cannot by contract make a collaborative work out of a workthat lacks the required inseparable expression or, for that matter, contrac-tually defeat the legal status of a true collaborative work. In this sense, jointworks are the product of status, not contract.

§5.2.1.3. Collective Works

A work by two or more authors that lacks the coalescence of elements re-quired for a joint work may in some countries qualify for treatment as a col-lective work. The German Copyright Act, for example, provides that authorswho contribute discrete elements to a common work will retain individualcopyright in these elements and that the copyright term of each contribu-tion will be measured from the death of its respective author. As with jointworks, however, each contributing author may require consent to alterationor exploitation from all authors who contributed to the work “if such con-sent may reasonably be demanded of them.”323 French legislation defines a

321. See §5.3.3.1A(ii), below.322. See, e.g., Richmond v. Weiner, 353 F.2d 41, 46. (9th Cir. 1965), cert. denied, 384 U.S.

928, reh’g denied, 384 U.S. 994 (1966). See generally Paul Goldstein, 1 Copyright §4.2.2 (2ded. 1996).

323. Germany, Copyright Act Art. 9.



collective work as a work “created at the initiative of a natural or legal per-son who edits it, publishes it and discloses it under his direction and nameand in which the personal contributions of the various authors who partici-pated in its production are merged together in the overall work for whichthey were conceived, without it being possible to attribute to each author aseparate right in the work as created.”324 Authorship and copyright in thecollective work vests in the editor and publisher of the work,325 one of onlytwo instances under French law in which ownership can vest initially in alegal person.

Under decisional law in the United Kingdom, contributors to a collectivework will obtain copyright for their individual contributions, and the editorresponsible for the selection and arrangement of the contributions will re-ceive a separate copyright for his efforts, so long as they meet the governingoriginality standard.326 The U.S. Copyright Act distinguishes between copy-right ownership of a collective work, which vests initially in the creator ofthe collective work, and copyright ownership of individual contributions tothe collective work, which vests initially in the author of the contribution.Absent an express transfer of copyright by the contributor, “the owner ofcopyright in the collective work is presumed to have acquired only the privi-lege of reproducing and distributing the contribution as part of that particu-lar collective work, any revision of that collective work, and any later col-lective work in the same series.”327

§5.2.1.4. Works Made for Hire

Employers regularly contract with their creative employees over the alloca-tion of rights in works created in the course of employment. Civil law coun-tries generally start from the premise that copyright in works created in thecourse of employment vests in the employee-author rather than in the em-ployer, so that a transfer from the employee will be required for the employerto obtain copyright. The French Intellectual Property Code, for example,provides that the existence of an employment relationship will not derogatefrom the fundamental principle that copyright vests in a work’s actualauthor.328 Nonetheless, civil law countries will often imply into the employ-ment agreement an assignment of copyright from the employed author tohis employer.329 Further, presumably recognizing the industrial aspect of com-

324. France, Intellectual Property Code Art. L 113-2.325. France, Intellectual Property Code, Art. L 113-2, 113-5.326. See E. P. Skone James et al., Copyright ¶4-7 (13th ed. 1991).327. U.S. 1976 Copyright Act §201(c).328. See, e.g., France, Intellectual Property Code. Art. L 111-1.329. See, e.g., Germany, Copyright Act Art. 43.

puter software, some civil law countries—France, Germany, and Japan arethree—have by statute provided that exclusive economic rights in computerprograms created in the course of employment vest initially in the employer.330

Common law countries generally reverse the presumption applied in civillaw countries and provide that, absent an express agreement to the contrary,copyright in works created in the course of employment initially vests in theemployer rather than the employee.331 The British legislation provides that“where a literary, dramatic, musical or artistic work is made by an employeein the course of his employment, his employer is the first owner of any copy-right in the work subject to any agreement to the contrary.”332 The Cana-dian legislation provides that where a work’s author “was in the employmentof some other person under a contract of service or apprenticeship and thework was made in the course of his employment by that person, the personby whom the author was employed shall, in the absence of agreement to thecontrary, be the first owner of the copyright.”333 The Canadian legislationcarves out a narrow privilege for contributions to newspapers, magazines,and similar periodicals where, absent agreement to the contrary, the authoris deemed to reserve a right to restrain the work’s publication other than aspart of a newspaper, magazine, or similar periodical.334

The 1976 U.S. Copyright Act provides that “[i]n the case of a work madefor hire, the employer or other person for whom the work was prepared isconsidered the author for purposes of this title, and, unless the parties haveexpressly agreed otherwise in a written instrument signed by them, ownsall of the rights comprised in the copyright.”335 The Act defines a “work madefor hire” as either (1) “a work prepared by an employee within the scope ofhis or her employment” or, (2) if the parties expressly agree in writing thatthe work is to be considered a work made for hire, “a work specially orderedor commissioned for use as a contribution to a collective work, as a part of amotion picture or other audiovisual work, as a translation, as a supplemen-tary work, as a compilation, as an instructional text, as a test, as answermaterial for a test, or as an atlas.”336

Under the first clause of the statutory definition, an employer’s express orimplied right to control a worker’s preparation of the work in issue is the mostimportant, albeit not the only, factor that courts weigh in determining whether

330. See, e.g., France, Intellectual Property Code Art. L 113-9; Germany, Copyright Act Art.69b; Japan, Copyright Act Art. 15(2). See also E.C. Software Directive, Article 2.

331. See, e.g., Canada Copyright Act §12(3); United Kingdom, Copyright, Designs and Pat-ents Act 1988 §11(2).

332. United Kingdom, Copyright, Designs & Patents Act 1988 §11(2).333. Canada, Copyright Act §13(3).334. Canada, Copyright Act §13(3).335. U.S. 1976 Copyright Act §201(b).336. U.S. 1976 Copyright Act §101.



the work was made for hire. The U.S. Supreme Court has ruled that severalfactors, none of them independently determinative, should guide inquiry into“the hiring party’s right to control the manner and means by which the prod-uct is accomplished”—among them “the skill required; the source of the in-strumentalities and tools; the location of the work; the duration of the rela-tionship between the parties; whether the hiring party has the right to assignadditional projects to the hired party; the extent of the hired party’s discretionover when and how long to work; the method of payment; the hired party’srole in hiring and paying assistants; whether the work is part of the regularbusiness of the hiring party; whether the hiring party is in business; the provi-sion of employee benefits; and the tax treatment of the hired party.”337

§5.2.1.5. Audiovisual Works (Including Cinematographic Works)

As collective projects that often implicate the contributions of several au-thors, motion pictures have presented a substantial challenge to the greatmajority of legal systems that are committed to traditional civil law conceptsof copyright ownership. In strictly legal terms, a motion picture will usuallybe a collaborative work, combining the contributions of its co-authors intoinseparable parts of a unitary whole. Measuring the term of copyright in afilm by the joint lives of its several contributors may prove cumbersome,however, and obtaining the unanimous consent required for a film’s exploi-tation may be both cumbersome and costly. Legislatures in both civil law andcommon law countries have dealt specially with motion pictures to meet theexigencies created by production on this scale.338 The Berne Convention,Paris Text, has contributed a complex formula for allocating ownership thataims to facilitate exploitation of motion picture rights.339

a. national law

Most countries treat motion pictures as joint works but differ on which con-tributors are to be treated as the work’s co-authors. All countries that takethis approach characterize the film’s director as at least a co-author. The E.C.Term Directive provides that “[t]he principal director of a cinematographicor audiovisual work shall be considered as its author or one of its authors,”and adds that “Member States shall be free to designate other co-authors.”340

337. Community for Creative Non-Violence v. Reid, 490 U.S., 730, 751–752 (1988).338. See §5.2.1.5.A, below.339. See §5.2.1.5.B, below.340. Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection

of copyright and certain related rights (“E.C. Term of Protection Directive”) Art. 2(1).

The author of the screenplay and the composer of the soundtrack are also regu-larly presumed to be co-authors. Less frequently characterized as co-authorsare the cinematographer, set designer, film editor, and costume designer.341

The French Intellectual Property Code establishes a presumption that theco-authors of a collaborative audiovisual work are the authors of the script,the adaptation, the dialogue, any musical composition specially composedfor the work, and the director.342 The German legislation, though not iden-tifying the presumptive co-authors of a motion picture, does measure theterm of copyright from the death of the last to die of those authors who con-tributed to the work, presumably including the film’s director, screenwriter,scriptwriter, and composer.343

Work for hire concepts often combine with joint work concepts in the ul-timate determination of motion picture ownership. A film’s co-authors willcommonly transfer their ownership rights to the film’s producer. If the con-tributors have not done so expressly, courts in many civil law countries willvariously imply a transfer to the producer of at least the principal economicrights. The French Intellectual Property Code, for example, implies into theauthor–producer relationship a transfer of all exploitation rights to the pro-ducer.344 The German legislation operates to similar effect.345 Most countriesallow the co-authors and the producer to alter these contractual presump-tions respecting assignment of rights. But however ownership interests mayultimately be allocated, the film itself remains a joint work. Its copyright termwill be measured by reference to the life of the designated co-authors, andthe scope of rights impliedly or expressly transferred will be traced to theconduct and status of each co-author.

Rules differ from one civil law country to another on the presumptions oftransfer that apply to different classes of co-authors and different types ofworks. Some countries apply the same presumptions of transfer across theboard to all co-authors.346 Others differentiate the presumption dependingon the class of work into which the co-author’s contribution falls—treatingmusic, say, differently from a scenario.347 Presumptions of transfer of moral

341. See generally Alberto Bercovitz, Ownership of the Intellectual Property Rights in Audio-visual Works: The Legislative Position, General Report II, ALAI 225, 230–234 (1995).

342. France, Intellectual Property Code Art. L 113-7. The provision adds that “[i]f an au-diovisual work is adapted from a preexisting work or script which is still protected, the au-thors of the original work shall be assimilated to the authors of the new work.”

343. Germany, Copyright Act Art. 65.344. See France, Intellectual Property Code Art. L 132-24. See also Japan, Copyright Act

Art. 15(1). See generally Alberto Bercovitz, Ownership of the Intellectual Property Rights inAudiovisual Works: The Legislative Position, General Report II, ALAI 225 (1995).

345. Germany, Copyright Act Art. 89(1).346. See, e.g., Italy, Copyright Act Art. 45; Spain, Copyright Act Art. 88(1).347. See, e.g., Netherlands, Copyright Act Art. 45d.



rights also differ among countries. Legislation in several countries providesthat moral rights may be exercised only in connection with the final work.France, which follows this view,348 defines a film’s final, definitive versionas the version “established by common accord between the director, or, pos-sibly, the joint authors, on the one hand, and the producer, on the other.”349

Other countries, including Germany, allow co-authors to exercise their moralrights at any time during both the production and subsequent exploitationof the work.350

Allocation of motion picture ownership interests to a single entity, typi-cally the production company, is generally more straightforward in commonlaw systems. The 1988 Copyright, Designs and Patents Act in the UnitedKingdom designates the party that undertakes the arrangements necessaryfor making the film as the film’s author and initial copyright owner.351 Thiswill typically be the film’s producer,352 although the E.C. Term Directive hassince required addition of the film’s director as an author and initial copy-right owner.353 The U.S. Copyright Act even more completely finesses ques-tions of transfer and ownership by designating the employer as a work’sauthor in the case of works made for hire.354 Motion pictures represent oneof the limited class of works that can be made a work for hire simply by rea-son of a written agreement signed by both parties stating that the work wasmade for hire.355

b. berne and rome conventions

National differences in the allocation of film rights between co-authors interse, and between co-authors and producers, introduce complications intoworldwide motion picture distribution that contracts cannot always resolve.The rare film that is produced and distributed exclusively within the UnitedStates, for example, poses no special problems, since the U.S. work for hiredoctrine will typically vest authorship as well as ownership in the film’s pro-ducer.356 But if authorship is determined under the law of the work’s pro-tecting country and not the law of the country of origin, the U.S. employer-production company may discover, when its film is distributed in France, thatit owns less than the full bundle of copyright interests there. Article 14bis

348. France, Intellectual Property Code Art. L 121-5.349. France, Intellectual Property Code Art. L 121-5.350. See, e.g., Germany, Copyright Act Art. 42.351. United Kingdom, Copyright, Designs & Patents Act 1988 §9(2) (a).352. See E. P. Skone James et al., Copyright ¶4-55 (13th ed. 1991).353. E.C. Term of Protection Directive Art. 2(1).354. U.S. 1976 Copyright Act §201(b).355. See §5.2.1.4, above.356. See §5.2.1.4, above.

of the Berne Convention and Article 19 of the Rome Convention attempt toharmonize the rules on ownership of film rights across countries.

(i) Berne Convention. Article 14bis of the Paris Text of the Berne Conven-tion, a provision that Professor Ricketson has called “the most obscure andleast useful in the whole Convention,”357 was added at the Stockholm Revi-sion Conference in 1967.358 The provision attempts to achieve transnationalharmony in the allocation of film rights by strengthening presumptions ofassignment in those countries where they are weak. Article 14bis does thisthrough a principle of legitimation, specifically providing that “[o]wnershipof copyright in a cinematographic work shall be a matter for legislation inthe country where protection is claimed,”359 but adding that “in the coun-tries of the Union which, by legislation, include among the owners of copy-right in cinematographic work authors who have brought contributions tothe making of the work, such authors, if they have undertaken to bring suchcontributions, may not, in the absence of any contrary or special stipulation,object to the reproduction, distribution, public performance, communicationto the public by wire, broadcasting or any other communication to the pub-lic, or to the subtitling or dubbing of texts, of the work.”360

National requirements differ on whether the author’s “undertaking” mustbe in writing, and Article 14bis(2) (c) provides that “whether or not the formof the undertaking referred to above should, for the application of the pre-ceding subparagraph (b), be in a written agreement or a written act of thesame effect shall be a matter for the legislation of the country where themaker of the cinematographic work has his headquarters or habitual resi-dence.” It adds, “[h]owever, it shall be a matter for the legislation of the coun-try of the Union where protection is claimed to provide that the said under-taking shall be in a written agreement or a written act of the same effect.”361


358. Berne Convention, 1971 Paris Text, Art. 14bis.359. Berne Convention, 1971 Paris Text, Art. 14bis(2) (a).“It is also emphasized that the presumption is governed by the fact that the author has

consented, which is why it is not called a presumption of assignment but simply one of legiti-mation, since it in no way interfered with the contractual relations between contributors andfilm-makers, but merely deems the latter to have acquired the permission necessary to ex-ploit the film.” WIPO, Guide to the Berne Convention for the Protection of Literary and ArtisticWorks (Paris Act, 1971) 86 (1978).

360. Berne Convention, 1971 Paris Text, Art. 14bis(2) (b). See WIPO, Guide to the BerneConvention for the Protection of Literary and Artistic Works (Paris Act 1971) 86 (1978).

361. Berne Convention, 1971 Paris Text, Art. 14bis(2) (c).The WIPO Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 87–88 (1978), provides an example: “[A] film-maker resident in the Fed-eral Republic of Germany (where a written consent is not required) may enjoy the benefit



Where Article 14bis(2) subjects a wide range of exploitation media to itspresumption of legitimation,362 Article 14bis(3) sharply limits the class of au-thors to which the presumption applies, so that unless the applicable nationallegislation provides to the contrary, “the provisions of paragraph (2) (b)above shall not be applicable to authors of scenarios, dialogues and musi-cal works created for the making of the cinematographic work, or to theprincipal director thereof.”363 Since, as Professor Ricketson notes, “thiscovers most of the principal persons who are regarded as authors of con-tributions under many national laws, only a residual category of authorswill be covered by the presumption—for instance, the actors, the design-ers, the cameramen—insofar as these persons are regarded as co-authorsby those laws.”364

(ii) Rome Convention. National law will generally not treat film actorsand other performers as authors; their contributions to a film may, how-ever, be protected under a theory of neighboring rights. Article 19 of theRome Convention provides that “once a performer has consented to theincorporation of his performance in a visual or audio-visual fixation,” Ar-ticle 7 of the Convention, prescribing the minimum protection to be givenperformers, “shall have no further application.”365 According to the WIPOGuide to the Rome Convention and the Phonograms Convention, Article 19implies that the performer “cannot prevent any use which is made of hisfixed performance whether the fixation was intended for cinema showingor on television. For example, an actor plays a role in a film or televisionstudio. His mere presence before the cameras means that he agrees to itsbeing filmed for showing in cinemas or on the television screen as the casemay be. The same is true of a musician who agrees to his playing beingrecorded for use on the film soundtrack. Once released, these performancescan be put to uses the performers did not contemplate (e.g., by the inser-

of this ‘presumption of legitimation’; if the film is exploited in Sweden (another country inwhich writing is not demanded) the presumption applies; but if it is exported to France, andif this country has made the notification to the Director General mentioned above, thepresumption has no effect unless there was a written contract in the Federal Republic ofGermany, even if not required under German law. This makes it necessary for the maker,in his dealings with the various contributors to a film, to be aware of the legal situation ineach country in which he hopes to exploit his film and, if necessary, to safeguard his posi-tion with a ‘written agreement or a written act of the same effect’” (citation omitted).


363. Berne Convention, 1971 Paris Text, Art. 14bis(3).364. Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:

1886–1986 583 (1987).365. Rome Convention Art. 19.

tion in other films or broadcasts; or the making of videograms to be sold incommerce); neither actor nor musician can invoke the Convention to en-sure payment for such uses.”366

§5.2.2. Ownership by Transfer

The belief that principles of natural right exclusively define authors’ rightsin the civil law countries, and that utilitarian principles exclusively definecopyright in common law countries, colors assumptions about copyrighttransfers as well: that paternalistic regulation pervades the transfer of rightsin civil law countries and that freedom of contract is the exclusive norm incommon law countries. In fact, neither assumption describes the rulesgoverning transfer of rights any more accurately than it describes the rightsthemselves. To be sure, civil law countries do impose constraints on au-thors’ contractual autonomy; but so do common law countries. And justas freedom of contract underpins copyright transactions in common lawcountries, it is no less fundamental to copyright transactions in civil lawcountries.

At least as many differences exist in treatment of authors’ contracts be-tween countries following the civil law or common law tradition as betweenthe two traditions themselves. Legislation in the United Kingdom makescopyright fully “transmissible by assignment, by testamentary dispositionor by operation of law, as personal or moveable property,”367 and the CanadianAct is similarly generous in allowing free assignment of copyright.368 Yet,English courts have overturned, as unreasonable restraints of trade, con-tracts in which it was evident that the publisher overreached on an eco-nomically weaker author,369 and the Canadian Act contains a provision,borrowed from a repealed British provision, entitling authors to terminatetheir publishing contracts after a prescribed period.370 Similarly, the U.S.Copyright Act provides as a central rule that “ownership of copyright maybe transferred in whole or in part by any means of conveyance, or by oper-ation of law,”371 but the Act nonetheless contains several rules that sub-ordinate freedom of contract to a paternalistic concern for author welfare.

366. WIPO, Guide to the Rome Convention and to the Phonograms Convention 65 (1981).367. United Kingdom, Copyright, Designs and Patents Act 1988 §90(1).368. Canada, Copyright Act §12(4).369. See, e.g., Schroeder v. Macaulay [1974] 3 All E.R. 616; Clifford Davis v. WEA Records

[1975] All E.R. 237; O’Sullivan v. Management Agency & Music [1985] Q.B.428. Cf. Elton Johnv. James [1991] 18 F.S.R. 397, 449 (stating that a contract can be set aside when one partyexerts a “dominating influence” that results in a “manifestly disadvantageous transaction”).

370. Canada, Copyright Act §12(5).371. U.S. 1976 Copyright Act §201(d) (1).



Some of these rules take the form of legal presumptions, for example therule that, absent an express transfer of copyright in an author’s contribu-tion to a collective work, the copyright owner of the collective work ac-quires only the privilege of reproducing and distributing the contributionas part of the collective work or any revision or later work in the same se-ries.372 The U.S. Act also imposes absolute prohibitions on alienability. Onesuch prohibition is its grant to authors of a nonwaivable power to termi-nate earlier transfers;373 another is the power to avoid involuntary trans-fers.374 American rules on contract formalities375 and in some circuits con-tract construction376 also tip the contractual scales in the author’s favor.

Freedom of contract, through the foundation of copyright transactions incivil law countries, may sometimes be obscured by the regulatory superstruc-ture. A 1991 study of national legislation on authors’ rights in civil law coun-tries revealed that “virtually all of them encompass the regulation of authors’contracts.”377 According to the study’s author, György Boytha, the moremodern statutes regulate the field both extensively and variously: “the Ital-ian Act of 1941, the French Act of 1957 contain more than 30 pertinentarticles each, the German law (the Act of 1965 together with the rules onpublishing contracts of 1901/1910 still maintained) about 60 such sections;the Portuguese Act of 1985 about 70, the Spanish Law of 1987 more than50 relevant sections.”378 Nonetheless, courts in many if not most civil lawcountries will seek to ascertain, and to honor, the intentions of the con-tracting parties at the time they entered into their agreement, following inone form or another the theory, formalized in German law, of ultimatepurpose (Zweckübertragungstheorie).379

The civil law tradition takes two approaches to alienability of authors’interests. The “dualist” approach, followed in France and a substantial num-ber of other civil law countries, treats author’s right in a work as consistingof two separate elements: a pecuniary element, or economic right, and a

372. U.S. 1976 Copyright Act §201(c).373. U.S. 1976 Copyright Act §203.374. U.S. 1976 Copyright Act §201(e).375. U.S. 1976 Copyright Act §204.376. See §5.2.2.1, below.377. György Boytha, National Legislation on Authors’ Contracts in Countries Following

Continental European Legal Traditions, 27 Copyright 198 (1991).378. Id. at 199. See also Denis De Freitas, Copyright Contracts: A Study of the Terms of Con-

tracts for the Use of Works Protected by Copyright Under the Legal System in Common LawCountries, 27 Copyright 222 (1991); Neil Netanel, Alienability Restrictions and the Enhance-ment of Author Autonomy in United States and Continental Copyright Law, 12 Cardozo Arts& Ent. L.J. 1 (1994).

379. See generally François Dessemontet, General Report, Proceedings of 1997 A.L.A.I.Conference 48, 52 (1998).

reputational element, or moral right.380 The economic right is freely trans-ferable by the author and lasts only for a limited term—presently in France,the author’s life plus seventy years.381 The moral right, by contrast, is inprinciple, inalienable subject to certain expedient qualifications; under theFrench text, moral right is perpetual.382

The “monist” approach to authors’ rights, followed in Germany and someother civil law countries, predicates that the author’s economic and moralrights are thoroughly intertwined and that the economic aspect of the rightinalienably adheres to the author no less than does the right’s reputationalaspect.383 While authors in dualist countries can exploit their economic in-terests in a work through the transfer of the economic rights, authors in mo-nist countries, barred from assigning any of their rights, can accomplish therough economic equivalent only through the grant of privileges to use the workthat approximate, but are not identical to, nonexclusive and exclusive licensesin common law practice—Verwertungsrecht (a nonexclusive privilege of exploi-tation)384 or Werknutzungsrecht (an exclusive privilege of exploitation).385

The strictest limits on alienability, in both common law and civil law coun-tries, are imposed on attempted transfers of the author’s moral right. Al-though common law countries generally take a hands-off attitude to copy-right transfers, those that have adopted a discrete moral rights provisiongenerally prohibit their assignment;386 some provision is made, however, forwaiver.387 The civil law countries constrain dispositions of moral right some-what more stringently. The French legislation makes moral right “perpetual,inalienable and imprescriptible.”388 Even on the Continent, however, the baron disposition is not absolute. As a practical matter, an author who contractsfor his work’s publication has effectively ceded to his publisher the importantmoral right of divulgation, or first publication. The German Act permits a li-censed adapter of a work to make good faith changes in the work and its title“which the author cannot reasonably refuse.”389 Special provisions govern-

380. See generally Görgy Boytha, National Legislation on Authors’ Contracts in CountriesFollowing Continental European Legal Traditions, 27 Copyright 198, 201–202 (1991); NeilNetanel, Alienability Restrictions and the Enhancement of Author Autonomy in United Statesand Continental Copyright Law 12 Cardozo Arts. & Ent. L.J. 1, 13–17 (1994).

381. See §5.3.1.1, below.382. See §5.4.2.5, below.383. See, e.g., Germany, Copyright Act Art. 29.384. Germany, Copyright Act Art. 31(2).385. Germany, Copyright Act Art. 31 (3).386. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §94.387. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §87(2).388. France, Intellectual Property Code Art. L 121-1 (“It [right to respect for name, au-

thorship and work] shall be perpetual, inalienable and imprescriptible.”)389. Germany, Copyright Act Art. 39(2).



ing rights in contributions to cinematographic works give producers elbowroom in altering, and timing the publication of, contributed material.390

§5.2.2.1. Limitations and Construction of Transfers

Analysis of copyright transfers requires, first, a determination of the law thatgoverns the particular aspect of the contract in issue. For example, formal re-quirements such as those imposed by the statute of frauds may be subject tothe law of one country, while construction of the grant may be subject to thelaw of another country.391 Next, the terms of the contract must be analyzedunder the applicable law. Several issues recur in the construction of copyrightcontracts: the scope of use permitted;392 the term, and possible termination,of the grant;393 remuneration to the author;394 rights granted respecting fu-ture works;395 and special considerations affecting moral rights.396 The for-malities required for copyright transfers, including recordation, also sometimesrequire analysis.397

Legislative provisions on copyright contracts variously govern the legiti-macy and construction of copyright transfers. Some legislation may entirelybar certain transfers. One example is Article 31(4) of the German CopyrightAct, which provides that the “grant of an exploitation right for as yet un-known types of use and any obligations in that respect shall have no legaleffect.”398 Another is the rule, at least nominally followed in most countrieswith moral right protection, that moral right is inalienable.399 Other provi-sions take the form of constructional presumptions and offer a default ruleto be applied in the absence of an express agreement to the contrary. Theseconstructional presumptions generally favor the author on the theory thathe is the weaker party to the transaction.400 Although it is commonly thoughtthat the civil law countries are sternly paternalistic in these matters while thecommon law countries widely endorse the opposing principle of freedom ofcontract, the substantive differences between the two traditions are, as apractical matter, small and sometimes nonexistent.

390. See §5.2.1.5, above.391. See §3.3.2.2, above.392. See §5.2.2.1.A, below.393. See §5.2.2.1.B, below.394. See §5.2.2.1.C, below.395. See §5.2.2.1.D, below.396. See §5.4.2.5, below.397. See §5.2.2.2, below.398. Germany, Copyright Act Art. 31(4).399. See §5.4.2.5, below.400. See György Boytha, National Legislation on Authors’ Contracts in Countries Follow-

ing Continental Legal Traditions, 27 Copyright 198, 202 (1991).

a. scope of grant

Civil law countries have been more aggressive than common law countries inestablishing presumptions and restrictions that limit the scope of use that acopyright contract entitles a copyright transferee to make. This tendency ismost evident in countries, like Germany, that follow the monist tradition underwhich the author is, by definition, disabled from parting with his rights andcan only parcel out privileges to use his work. Professor Eugen Ulmer’s obser-vation of some years ago remains accurate today: “The copyright, so to speak,tends to remain with the author as much as possible.”401 Where the grant of ause privilege does not expressly specify the particular use or uses intended,German courts will, under the “purpose of grant theory,” interpret the grantin light of the contract’s primary purpose and will place on the transferee theburden of proving that the proposed use comes within the intended purpose.402

Also, under Article 31(4) of the German Copyright Act, no license can encom-pass a use that depends on a technology unknown at the time of the grant. Inone case, for example, the German Federal Court of Justice ruled that, for pur-poses of Article 31(4), videocassette exploitation of motion pictures was un-known at the time the contract in issue was executed, so that the heirs of thefilm’s director retained the video rights in the work.403

Countries following the dualist tradition take a comparably sparing ap-proach to construing and enforcing transfers of rights. The French law, forexample, conditions the transfer of economic rights on the specific enumerationof the right or rights granted, their purpose, extent, territory, and term.404

Unlike the German Act, the French legislation permits the express grant of aright to exploit the work through media that did not exist at the time the con-tract was executed. However, the French law approximates the likely negoti-ated outcome under the German rule by validating such a clause only if itprovides for “participation correlated to the profits from exploitation” throughthe new medium.405

It is, in any event, important not to overstate the practical significance ofthe rules favoring authors in either monist or dualist countries. Reflecting

401. Eugen Ulmer, Some Thoughts on the Law of Copyright Contracts, 7 I.I.C. 202, 216(1976).

402. Germany, Copyright Act Art. 31(5).403. Videoweitauswertung (“Secondary Exploitation on Video”), German Federal Supreme

Court, Oct. 11, 1990 (Case No. I ZR 59/89), 22 I.I.C. 574 (1991). Professor Dietz has observed,“The significance of this decision also undoubtedly lies in the fact that it confirms—at least ret-rospectively—the only economically important right retained by the actual authors of the film;indeed, under Article 89 of the Copyright Law, the exclusive rights of use of the film in everyknown manner are deemed, in case of doubt, to have been granted to the producer.” Adolf Dietz,Copyright Law Developments in the Federal Republic of Germany, 157 R.I.D.A. 128, 218 (1993).

404. France, Intellectual Property Code Art. L 131-3.405. France, Intellectual Property Code Art. L 131-6.



on the bargaining power wielded by major firms in the copyright industries,and the widespread use of form agreements, Professor Nordemann has ob-served, “[a]lthough the purpose-of-grant theory is applied ever more firmlyin favor of a just compensation for the author, particularly by the courts ofthe European states, this does not change the fact that the theory is no longerthe norm, but has become the exception. For the daily routine of exploita-tion contracts, it has become completely irrelevant.”406

Most American courts will construe ambiguous language in a copyrightcontract to favor the author. For example, courts almost universally hold thatan author who transfers his initial term of copyright will effectively retainhis right to the renewal term in the absence of an express conveyance of theinterest to his transferee.407 American courts also employ presumptions infavor of authors and against drafters (typically publishers) in determiningwhether a grant of rights to exploit a work in one existing medium includesthe right to exploit it in another existing medium.408 However, courts havedrawn few bright lines to aid in determining whether a new medium of ex-ploitation not expressly mentioned in a copyright license falls within thescope of the grant. Courts have, for example, held that transfer of the rightto exhibit motion pictures in theaters includes the right to exhibit them overtelevision,409 even though television was unknown at the time of the grant,but that the right to exhibit over television does not include the right to dis-tribute videocassettes, similarly unknown at the time of the grant.410

The most striking exception to the constructional preference for authorsunder American jurisprudence is the rule that, in case of doubt respecting thenature of the interest conveyed, the copyright owner will be deemed to havetransferred the more extensive right. Thus if there is a question whether theparties contemplated an assignment of the entire copyright or only some lesserinterest, typically an exclusive license, courts will generally find an assign-ment.411 Similarly, when it is clear that a license was intended but it is uncer-tain whether the parties intended the license to be exclusive or nonexclusive,courts will generally resolve the doubt in favor of an exclusive license.412

406. Wilhelm Nordemann, Towards a Basic International Regime of Copyright Contracts,in Essays in Honour of Herman Cohen Jehoram, Jan Kabel & Gerard Mom, eds. 217, 219 (1998).

407. See generally Paul Goldstein, 1 Copyright §4.6.3.5 (2d ed. 1996).408. See Paul Goldstein, 1 Copyright §4.6.3.2a (2d ed. 1996).409. See, e.g., Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir.), cert. denied,

393 U.S. 826 (1968). See also Boosey & Hawkes Music Publishers, Ltd. v. The Walt Disney Co.,145 F.3d 481 (2d Cir. 1998).

410. See, e.g., Rey v. Lafferty, 990 F.2d 1379, 1390 (1st Cir. 1993).411. See, e.g., Houghton Mifflin Co. v. Stackpole Sons, Inc., 104 F.2d 306, 311 (2d Cir.), cert.

denied, 308 U.S. 597 (1939)).412. See, e.g., Hubbard Broadcasting, Inc. v. Southern Satellite Sys., Inc., 593 F. Supp. 808, 810–

811, (D Minn. 1984), aff’d, 777 F.2d 393, (8th Cir. 1985), cert. denied, 479 U.S. 1005 (1986).

b. term (and termination) of grant

Some copyright legislation in Europe empowers authors to terminate a trans-fer when the published work no longer reflects their views. Associated withdoctrines of moral right, this right of withdrawal is typically subject to theauthor’s obligation to indemnify his transferee for any harm suffered.413 En-tirely apart from moral right, the Italian act imposes a twenty-year ceiling onpublishing contracts.414 Other legislation makes the transfer of an interestcontingent on the transferee’s timely exploitation of the interest and gives theauthor the power to recapture the interest after a specified time. Under theGerman Act, for example, two years after granting an exploitation right, ordelivering the work, whichever is later, the author can revoke the grant if thegrantee’s nonexercise has seriously harmed the author’s lawful interests.415

Common law countries have adopted contract termination rules but, un-like the civil law countries, have not made them contingent on changedconditions or the grantee’s failure to exploit the work. A Canadian provision,modeled on the reversion provisions of the 1911 English Act, provides for anonwaivable reversion to the author’s estate, twenty-five years after theauthor’s death, of any copyrights transferred by the author in his lifetime.416

For the provision to apply, the author has to be the first owner of copyright,and the work cannot be a collective work or a contribution to a collectivework. The United Kingdom has long since dropped the 1911 Act’s reversion-ary provision, although the provision retains retrospective force for trans-fers made before 1957 of rights in works created before 1957.417

The 1976 Copyright Act introduced the termination of transfer conceptinto U.S. copyright law through parallel provisions governing transfers exe-

413. See §5.4.2.4, below.414. Italy, Copyright Act Art. 122.415. Germany, Copyright Act Art. 41.416. Canada, Copyright Act 14(1).417. See Hugh Laddie, Peter Prescott, & Mary Vitoria, The Modern Law of Copyright and De-

signs ¶13.28 (2d ed. 1995). The proviso to §5(2) of the 1911 Act creating the reversionary rightread:

where the author of a work is the first owner of the copyright therein, no assignment ofthe copyright, and no grant of any interest therein, made by him (otherwise than by will)after the passing of this Act, shall be operative to vest in the assignee or grantee any rightswith respect to the copyright in the work beyond the expiration of twenty-five years fromthe death of the author, and the reversionary interest in the copyright expectant on thetermination of that period shall, on the death of the author, notwithstanding any agree-ment to the contrary, devolve on his legal personal representatives as part of his estate,and any agreement entered into by him as to the disposition of such reversionary inter-est shall be null and void, but nothing in this proviso shall be construed as applying tothe assignment of the copyright in a collective work or a license to publish a work orpart of a work as part of a collective work.



cuted on or after January 1, 1978, and transfers executed before that date.For grants executed on or after January 1, 1978, section 203 of the 1976 Actgives authors and their statutory successors the right to terminate a grantat any time during a five-year period that begins to run thirty-five years af-ter the grant’s execution. For grants of renewal term interests executed be-fore January 1, 1978, section 304(c) gives authors and their statutory suc-cessors the right to terminate the grant at any time during a five-year periodthat begins on January 1, 1978, or fifty-six years after the date statutorycopyright was originally secured, whichever is later. Section 304(d), addedto the 1976 Act by copyright term extension amendments in 1998, providesthat, in the case of works still in their renewal term on the amendments’ effec-tive date, October 27, 1998, authors or successors who failed to terminatea transfer within the period prescribed by section 304(c) can capture thetwenty-year extension by exercising a new termination right at any timeduring a five-year period beginning at the end of seventy-five years from thedate copyright was originally secured.

The U.S. termination right does not apply to works made for hire. The rightis not transferable or waivable, but neither section 203 nor section 304(c)prevents the parties to a grant from agreeing that the author will have theright to terminate at an earlier time. The Act carves out a limited exceptionfor derivative works from the termination right, allowing a derivative workprepared under authority of the grant before its termination to “continue tobe utilized under the terms of the grant after its termination.”418 Because thetermination right is a rule of copyright—not contract—law, the terminationof a copyright transfer will have no effect on rights outside the United States.419

c. remuneration

An evident solicitude for improvident authors has spurred some civil law,but not common law, countries to regulate the remuneration clauses in copy-right contracts. The provisions are rudimentary. The French legislation, forexample, prohibits lump sum payments in all but a limited number of situa-tions and requires instead that the author participate proportionally, throughroyalties, in the work’s revenues.420 The French legislation does not, how-ever, seek to regulate the royalty rate itself. The German Act gives the au-thor the nonwaivable right to seek reformation of the copyright contract ifthe revenues produced by the work’s exploitation are grossly disproportion-ate to the agreed-upon remuneration.421

418. U.S. 1976 Copyright Act §§203(b) (1).419. See §3.1.2, above.420. France, Intellectual Property Code Art. L 131-4.421. Germany, Copyright Act Art. 36.

d. rights to future works

The civil law’s regard for the author’s intimate relationship with his workhas produced legislation that to varying degrees curtails the author’s powerto transfer rights in his future works. The Spanish Copyright Act generallyvoids all such transfers of future rights in publishing contracts.422 Belgianlegislation validates assignments of economic rights in future works, but onlyfor specified works and for a limited time.423 French law voids open-endedassignments of rights in future works424 but will permit more closely cabinedtransfers—for example, in book publishing, if the character, quantity or tim-ing of the work is specifically limited.425 The German Act allows a grant ofrights in future works of defined character but provides that the clause maybe terminated by either party five years after the contract’s execution.426

Common law countries such as the United States, the United Kingdom, andCanada generally place no bar on the transfer of rights in future works.

§5.2.2.2. Formalities and Priorities

a. formalities

Legislation in common law countries generally requires a written instru-ment, signed by the grantor, to effect a transfer of copyright or of an exclu-sive license under a copyright.427 As a rule, nonexclusive licenses do not haveto be in writing.428 Common law countries also regularly imply nonexclu-sive copyright licenses into circumstances revealing the copyright owner’sintention to permit a particular use.429 As a rule, however, they will not implya transfer of a copyright interest into a transfer of the copy, phonorecord, orother material support embodying the copyrighted work.430

In civil law countries, the formal requirements for transfer of authors’rights vary from country to country. Separate provisions of the French In-tellectual Property Code require written instruments for the transfer of spe-

422. Spain, Copyright Act Art. 43(3).423. Belgium, Copyright Act, Art. 3 §2.424. France, Intellectual Property Code Art. L 131-1.425. France, Intellectual Property Code Art. L 132-4.426. Germany, Copyright Act Art. 40(1).427. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §90(3); Canada,

Copyright Act §13(4); U.S. 1976 Copyright Act §204(a).428. See, e.g., Canada, Copyright Act §12(4). In the United States and the United Kingdom,

the absence of a writing requirement can be negatively inferred from the statutory languagerequiring a writing only for transfers of ownership interests.

429. See, e.g., Nelson v. Rye & Cocteau Records. Ltd. [1996] 2 All E.R. 186, 1 WLR 1378; Oddov. Ries, 743 F.2d 630, 634 (9th Cir. 1984).

430. See, e.g., U.S. 1976 Copyright Act §202.



cific rights such as publication and performance, or production or adapta-tion into an audiovisual work.431 The Belgian Copyright Act requires writ-ten proof of a copyright contract.432 The German Act requires a writing ifthe author is granting rights to future, as opposed to existing, works.433 The1901 German Publishing Act, relevant parts of which are still in force, will,in the absence of an express agreement between author and publisher, sup-ply the pivotal terms of a publishing agreement. As in the common law coun-tries, no inference of transfer of a copyright interest will as a rule be drawnfrom the transfer of the material support embodying the copyrighted work.434

Choice of law rules generally look to the law of the country in which thecontract was made to provide the applicable rules on statute of frauds andother copyright contracts formalities.435 This fact, and the fact that mostinternational copyright contracts with economic consequence will expresslydesignate the law that governs the contract, make the variety of nationalapproaches to formal contract questions less of an obstacle to internationaltransactions than would otherwise be the case.

b. priorities

Unlike contract formalities, the ordering of priorities between competingtransferees to the same copyright interest cannot be resolved by a contract’sgoverning law clause or by a copyright owner’s recordation of his interestin a single country.436 Priorities will inevitably be resolved on a country-by-country basis. From a transactional perspective, the problem with prioritiesarises not so much from the variety in national approaches as it does fromthe general absence of systematic methods for recording transfers and estab-lishing priorities between competing claimants to the same interest. Withinthe civil law world, the most sustained effort at establishing recording systemsfor transfer of copyright interests has been in the field of audiovisual works, asevidenced, for example, by the French Centre national de la cinemátographie andthe sparsely subscribed Treaty on the International Registration of Audiovi-sual Works.437

The principle of first in time, first in right generally governs the determi-nation of priorities between conflicting copyright transfers in common law

431. France, Intellectual Property Code Art. L 131-2.432. Belgium, Copyright Act Art. 3 §1.433. Germany, Copyright Act Art. 40(1).434. See, e.g., France, Intellectual Property Code Art. L 111-3.435. See §3.3.2.2, above.436. See Eugen Ulmer, Intellectual Property and the Conflict of Laws: A Study Carried Out for

the Commission of the European Communities, Directorate-General for Internal Market and Indus-trial Affairs 42 (1978).

437. Treaty on the International Registration of Audiovisual Works (Geneva, 1989).

countries. The United Kingdom follows the same common law priority thathas long been established for transfers of real property interests: the firsttransferee of an interest from a licensor will prevail over a second transfereeof the same interest, unless the second transferee is a bona fide purchaser forvalue, without actual or constructive notice of the prior transfer.438 TheCanadian Copyright Act follows the principle of British law, of first in time,first in right, subject to requirements of good faith, valuable consideration,and lack of notice, providing that “[a]ny assignment of copyright, or any li-cense granting an interest in a copyright, shall be adjudged void against anysubsequent assignee or licensee for valuable consideration without actualnotice, unless the prior assignment or license is registered in the mannerprescribed by this Act before the registering of the instrument under whichthe subsequent assignee or licensee claims.”439

The U.S. Copyright Act establishes different priority rules depending onwhether the dispute is between two or more conflicting transfers of copyrightownership, or between a transfer of ownership and a nonexclusive license.440

Section 205(d) of the 1976 Act provides that, where there are two conflict-ing transfers of copyright ownership, for the later transferee to prevail overthe first transferee it must show that the later transfer was obtained in goodfaith and without notice of the first transfer, that it was made for valuableconsideration or on the basis of a binding obligation to pay royalties, and thatit was recorded in the U.S. Copyright Office before the first transfer was re-corded. Further, the later transferee must show that the first transfer wasnot “recorded, in the manner required to give constructive notice . . . withinone month after its execution in the United States or within two monthsafter its execution outside the United States.”

Section 205(e) governs priorities between transfers of ownership and non-exclusive licenses. Section 205(e) provides that “[a] nonexclusive license,whether recorded or not, prevails over a conflicting transfer of copyrightownership if the license is evidenced by a written instrument signed by theowner of the rights licensed or such owner’s duly authorized agent, and if(1) the license was taken before execution of the transfer; or (2) the licensewas taken in good faith before recordation of the transfer and without noticeof it.” Section 205(e) differs in three important respects from section 205(d).First, a transfer of ownership that is recorded before the execution of a sub-sequent nonexclusive license will prevail over the license even though the

438. United Kingdom, Copyright, Designs & Patents Act 1988 §90(4).439. Canada, Copyright Act §57(3).440. The priority and recording rules prescribed by section 205 of the 1976 Copyright Act

govern only transfers made on or after January 1, 1978, the Act’s effective date. The priorityand recording rules of the 1909 Copyright Act govern transfers executed before January 1,1978, and differ in important respects from those of the 1976 Act.



instrument of transfer is not recorded in the manner required to give con-structive notice under section 205(c). Second, unlike an ownership trans-feree, a nonexclusive licensee does not have to record its interest to be pro-tected against either a prior or subsequent ownership transferee. Third,unlike a subsequent ownership transferee, a nonexclusive licensee does nothave to give valuable consideration or a binding promise to pay royaltiesto be protected.

§5.2.2.3. Collecting Organizations

Copyright collecting organizations exist in civil law as well as common lawcountries and in economically developing as well as developed economies.From the beginning, the impetus to the formation of collecting societies hasbeen the difficulty of enforcing copyright against such decentralized uses asnondramatic performances of musical compositions. As emerging technolo-gies have introduced newer forms of decentralized use, new collecting soci-eties have formed to enforce copyright against these uses.441 It is no exag-geration to say that, for each right they administer, these societies have,through their reciprocal relations with counterpart societies throughout theworld, created their own private law of copyright relations.

The history of collecting societies traces to the late eighteenth century withthe organization in France of a collecting agency for authors that ultimatelyevolved into SACD, the Société des Auteurs et Compositeurs Dramatique. Thenext major step came a half century later, again in France, with the orga-nization of SACEM, the Société des Auteurs, Compositeurs et Editeurs deMusique, to license, collect, and distribute revenues under the musical per-formance right. Today, 150 years later, SACEM remains “one of the stron-gest and most prosperous organizations in the world in the field of collectiveadministration of authors’ rights.”442 Although collecting societies havesince proliferated to administer a wide variety of rights under copyright and

441. For general background on rights collecting societies, see Salah Abada, CollectiveAdministration of Authors’ Rights in the Developing Countries, 21 Copyright 314 (1985);Mihály Ficsor, Development and Objectives of Collective Administration of Authors’ Rights,21 Copyright 341 (1985); Michael J. Freegard, Collective Administration: The RelationshipBetween Authors’ Organizations and Users of Works, 21 Copyright 443 (1985); Gunnar Karnell,The Relations Between Authors and Organizations Administering Their Rights, 22 Copyright45 (1986); David Sinacore-Guinn, Collective Administration of Copyrights and Neighboring Rights:International Practices, Procedures, and Organizations (1993).

442. Mihály Ficsor, Development and Objectives of Collective Administration of Author’sRights, 21 Copyright 341, 343 (1985). See generally David Sinacore-Guinn, Collective Adminis-tration of Copyrights and Neighboring Rights: International Practices, Procedures, and Or-ganizations 80–88 (1993).

author’s right, the musical performing rights societies have remained themost numerous and probably the most powerful in their impact on the for-mation of copyright policy, domestically and internationally.

In patterns that vary from one country to another, collecting societies havebeen formed to license exploitation not only of dramatic, literary, and musi-cal works, but also of visual art, choreography, and phonograms. Along withthe performance right, these licenses may encompass droit de suite, graphicreproduction, photocopying, public lending, and mechanical reproductionrights.443 In some cases, a rights collecting organization will confine itself toa single right, as does Finland’s KOPIOSTO, which administers the photo-copying right for literary works. In other cases, the organization will over-see a wide array of rights in several types of subject matter, as does Belgium’sSABAM, which administers performance, reproduction, cable transmissionrights, and droit de suite in literary, dramatic, plastic, photographic, andaudiovisual works. Some societies perform the full complement of services—licensing uses, pursuing unlicensed uses, collecting revenues, and distrib-uting royalties—while others offer only more restricted services.

At the international level, most collecting organizations are affiliated withone of four umbrella organizations. The largest is CISAC, the ConfédérationInternationale des Sociétés d’Auteurs et Compositeurs, which has ties with over140 collecting organizations representing a wide range of copyrighted works.BIEM, the Bureau International des Sociétés Gérant les Droits d’Enregistrementet de Reproduction Mécanique, is affiliated with organizations that admin-ister recording and mechanical reproduction rights. IFPI, the InternationalFederation of Phonogram and Videogram Producers, is the principal inter-national trade association of phonogram and videogram producers and alsohelps to coordinate the activities of collecting societies in the fields of neigh-boring rights in phonograms and videograms. IFFRO, the International Fed-eration of Reproduction Rights Organizations, coordinates the activities ofnational collecting organizations in administering reprographic rights.

Reciprocal representation agreements provide the economic link betweena collecting organization in one country and its counterparts in other coun-tries.444 Under these agreements, each society undertakes to represent in itsown country all the works in the library of the other. Professor GunnarKarnell has observed that a fundamental provision in most of these cross-

443. For an inventory of collecting rights societies, and their operation in the Europeancountries, see Appendix 1 to Michael J. Freegard, Collective Administration: The RelationshipBetween Authors’ Organizations and Users of Works, 21 Copyright 443 (1985).

444. This description of international collective administration organizations is drawn inpart from David Sinacore-Guinn, Collective Administration of Copyright and Neighboring Rights:International Practices, Procedures, and Organizations 657–660 (1993), as is the analysis ofreciprocal representation agreements in the text paragraph that follows, from pages 645–646.



national agreements is that in each country all holders of rights, regardlessof the organization to which they belong, are treated in exactly the same way.“Thus, the organizations apply the national treatment principle proclaimedby both the Berne Convention and the Universal Copyright Convention.”445

§5.3TERM

There is no universal copyright term, even among the countries of the BerneUnion, where the Convention’s prescription, “life of the author and fifty yearsafter his death,” is a floor, not a ceiling to duration of protection.446 Becausethe Convention’s minimum term has changed over the course of the twenti-eth century, ascertaining the term applicable to an older work sometimesrequires an archeological dig into the treaty relations between the work’scountry of origin and the country in which protection is sought.447 Evencontemporary works may present complications for determining the appli-cable term. The work may be one for which the Berne Convention accepts ashorter than standard term or one for which the protecting country providesa longer than standard term,448 and the rule of comparison of terms may re-quire application of the term prescribed in the country of origin rather thanthe term prescribed in the protecting country.449 Rules on retroactivity willsometimes fill in gaps in terms.450

Changes in national law, like changes in treaty minimum terms, can affectthe determination whether, and to what extent, a particular work is protectedby copyright. U.S. law provides an example. The 1909 U.S. Copyright Actprescribed a term of protection measured by twenty-eight years from the dateof the work’s publication, with an optional renewal term of twenty-eightyears.451 When the 1976 Copyright Act prospectively altered the generalterm of copyright to the Berne minimum of the author’s life and fifty years,it retrospectively extended the term of copyright in works still in their firstterm by enlarging the renewal term to forty-seven years; in the case of works

445. Gunnar Karnell, The Relations Between Authors and Organizations AdministeringTheir Rights, 22 Copyright 45, 49 (1986).

446. Berne Convention, 1971 Paris Text, Art. 7(1).447. On how complex the determination of term may become, see John N. Adams &

Michael Edenborough, The Duration of Copyright in the United Kingdom after the 1995 Regu-lations, 11 E.I.P.R. 590 (1996).

448. See §5.3.1.1, below.449. See §5.3.2, below.450. See §5.3.3, below.451. U.S. 1909 Copyright Act §24.

already in their renewal term, the Act effectively added nineteen years to therenewal term.452 Similarly, when the 1976 Act was amended in 1998 to addtwenty years to the basic copyright terms,453 any work that was not in thepublic domain on the amendments’ effective date obtained the benefit ofthe extension. So, for example, a copyright that was originally secured underthe 1909 Act and that had its term extended to seventy-five years by the 1976Act will (unless and until the copyright term is extended again) enjoy pro-tection for ninety-five years from its date of first publication.

§5.3.1. Term of Protection Under Treaties and National Law

§5.3.1.1. Copyright

a. traditional literary and artistic works

As a rule, treaty provisions on minimum copyright term do not differentiatebetween economic rights and moral rights in literary works. Article 6bis(2)of the Berne Convention, Paris Act, is an exception in its provision that therights of paternity and integrity secured by Article 6bis(1) shall, after theauthor’s death, “be maintained, at least until the expiry of the economicrights.”454 Legislation in common law countries and countries following theGerman, monist tradition similarly do not differentiate for purposes of termbetween economic rights and moral rights, making the two sets of rightscoterminous.455 By contrast, France, which follows the dualist tradition,measures economic rights by the author’s life and a fixed period of years andmakes moral rights perpetual.456 Moral rights in the United States receive afixed term of protection or potentially perpetual protection, depending onwhether they are being protected under the Copyright Act—through thederivative right, for example—or under trademark and unfair competitionlaw prohibitions against misrepresentation.457

(i) Individual Works. Legislation in most countries prescribes a term of pro-tection for individually authored works measured by the author’s life fol-

452. U.S. 1976 Copyright Act §304(a) (b).453. Pub. L. No. 105-298, 112 Stat. 2827 (1998).454. Article 6bis(2) further provides: “However, those countries whose legislation, at the

moment of their ratification of or accession to this Act, does not provide for the protectionafter the death of the author of all the rights set out in the preceding paragraphs may providethat some of these rights may, after his death, cease to be maintained.”

455. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §12; Germany,Copyright Act Arts. 64(1).

456. France, Intellectual Property Code Arts. 121-1, 123-1.457. See §5.4.2.2, below.

§5.3. Term 231


lowed by a fixed period.458 Since the 1908 Berlin Text, the minimum termprescribed for all members of the Berne Union has been “the life of theauthor and fifty years after his death.”459 The E.C. Term Directive requiresa term measured by the author’s life and seventy years after his death.460

Following the European example, the United States in 1998 extended thegeneral term of copyright from fifty years to seventy years following thedeath of the author.461 In the case of works that were unpublished on Janu-ary 1, 1978, the effective date of the 1976 Copyright Act, the term of copy-right will be the standard term of author’s life and seventy years.462 Toaccount for works by authors long since dead, the U.S. Act further providesthat “in no case, however, shall the term of copyright in such a work ex-pire before December 31, 2002; and if the work is published on or before De-cember 31, 2002, the term of copyright shall not expire before December 31,2047.”463

The Universal Copyright Convention follows continental practice by usingthe author’s life as the benchmark for measuring the duration of copyright,prescribing a minimum term of the author’s life and twenty-five years afterhis death.464 But the U.C.C. also provides an alternative aimed at accommo-dating U.S. practice before passage of the 1976 U.S. Copyright Act: “AnyContracting State which, upon the effective date of this Convention in thatState, does not compute the term of protection upon the basis of the life ofthe author, shall be entitled to compute the term of protection from the dateof the first publication of the work or from its registration prior to publica-tion, as the case may be, provided the term of protection shall not be less thantwenty-five years from the date of first publication or from its registrationprior to publication, as the case may be.”465

In situations where copyright initially vests in a corporate entity, theterm of protection will typically be measured by a benchmark other thanthe life of a natural person. Article 12 of the TRIPs Agreement providesthat “[w]henever the term of protection of a work, other than a photographicwork or a work of applied art, is calculated on a basis other than the life of anatural person, such term shall be no less than fifty years from the end ofthe calendar year of authorized publication, or, failing such authorized pub-

458. In some countries, such as France, only the author’s economic rights receive a fixedterm of protection; the author’s moral right, by contrast, is perpetual. France, IntellectualProperty Code Arts. L 121-1, 123-1.

459. Berne Convention, 1971 Paris Text, Art. 7(1).460. E.C. Term of Protection Directive Art. 1(1).461. U.S. 1976 Copyright Act §302(a).462. U.S. 1976 Copyright Act §303(a).463. U.S. 1976 Copyright Act §303(a).464. Universal Copyright Convention, 1971 Paris Text, Art. IV(2) (a).465. Universal Copyright Convention, 1971 Paris Text, Art. IV(2) (b).

lication within fifty years from the making of the work, fifty years from theend of the calendar year of making.”466

The French legislation, which allows copyright in a collective work to vestin a corporate entity,467 measures the term of economic rights in these worksas seventy years from the beginning of the year following the year of publi-cation.468 The United Kingdom legislation makes copyright in a computer-generated work expire after fifty years from the end of the calendar year inwhich the work was made.469 In the case of works made for hire under theU.S. Copyright Act, the term of protection is 95 years from the year of thework’s first publication, or 120 years from its creation, whichever expiresfirst.470 This term applies even if the employer is a natural, rather than acorporate, person.

(ii) Collective Works and Joint Works. Because collective works such asanthologies and encyclopedias consist of discrete copyrightable elements, thecontribution of each author will as a rule receive its own copyright term.Under Article 7 of the Berne Paris Text, the term of protection for each con-tribution will be measured by a minimum of its author’s life and fifty yearsfollowing his death. Similarly, the original expression represented by theeditor’s selection and organization of the individual contributions into acopyrightable collective work will receive a term of protection measured bya minimum of fifty years following the death of the editor. Most nationalcopyright legislation follows this approach, ascribing independent terms ofprotection to each copyrightable contribution, including the editorial con-tribution for selecting and arranging the elements of the collective work.

Under Article 1(4) of the E.C. Term Directive, when a member state “pro-vides for particular provisions on copyright in respect of collective works orfor a legal person to be designated as the rightholder,” the term of protec-tion is to be calculated as it is for anonymous and pseudonymous works,unless “the natural persons who have created the work as such are identi-fied as such in the versions of the work which are made available to the pub-lic.”471 Under Article 1(5), “[w]here a work is published in volumes, parts,installments, issues or episodes and the term of protection runs from the time

466. TRIPs Agreement Art. 12. The E.C. Term of Protection Directive Art. 1(6) provides:“In the case of works for which the term of protection is not calculated from the death of theauthor or authors and which have not been lawfully made available to the public within sev-enty years from their creation, the protection shall terminate.”

467. France, Intellectual Property Code Arts. L 113-2, 113-5.468. France, Intellectual Property Code Art. L 123-3.469. United Kingdom, Copyright, Designs and Patents Act 1988 §12(3). Section §163(3)

of the U.K. legislation prescribes the terms of protection for Crown copyright.470. U.S. 1976 Copyright Act §302(c).471. E.C. Term of Protection Directive Art. 1(4).

§5.3. Term 233


when the work was lawfully made available to the public, the term of pro-tection shall run for each such item separately.”472

In the case of joint works, Article 7bis of the Berne Paris Text requires thatterms measured under Article 7 “from the death of the author shall be cal-culated from the death of the last surviving author.”473 Several countrieshave made special provision for measuring the term of copyright in cinemato-graphic and other audiovisual works which characteristically represent joint,collaborative endeavors.474 Cinematographic works in the United States mayconstitute joint works but are more regularly structured as works made forhire. Consequently, they are in the usual case entitled to protection forninety-five years from the date of publication.475

(iii) Anonymous and Pseudonymous Works. Article 7(3) of the Berne ParisText states the general rule that “[i]n the case of anonymous or pseudony-mous works, the term of protection granted by this Convention shall expirefifty years after the work has been lawfully made available to the public.” Theprovision makes two exceptions, requiring application of Article 7(1)’s mini-mum life plus fifty term when either “the pseudonym adopted by the authorleaves no doubt as to his identity,” or “[i]f the author of an anonymous orpseudonymous work discloses his identity during the above-mentioned pe-riod.” Article 7(3) adds that “[t]he countries of the Union shall not be re-quired to protect anonymous or pseudonymous works in respect of which itis reasonable to presume that their author has been dead for fifty years.”476

The E.C. Term Directive prescribes a term of seventy years from publicationfor anonymous and pseudonymous works,477 and Article 1(6) of the Direc-tive terminates protection for these works seventy years from their creationif not published within this period.478

The U.S. Copyright Act provides that “[i]n the case of an anonymous work,a pseudonymous work, or a work made for hire, the copyright endures for aterm of 95 years from the year of its first publication, or a term of 120 yearsfrom the year of creation, whichever expires first.”479 If, before the expira-tion of the special term of protection for an anonymous or pseudonymouswork, Copyright Office records reveal the identity of one or more of the work’sauthors, copyright in the work will last for the standard term.480

472. E.C. Term of Protection Directive Art. 1(5).473. Berne Convention, 1971 Paris Text, Art. 7bis.474. See §5.3.1.1.B(i), below.475. U.S. 1976 Copyright Act §302(c).476. Berne Convention, 1971 Paris Text, Art. 7(3).477. E.C. Term of Protection Directive Art. 1(3).478. E.C. Term of Protection Directive Art. 1(6).479. U.S. 1976 Copyright Act §302(c).480. U.S. 1976 Copyright Act §302(c).

b. special classes of works

(i) Cinematographic Works. Under Article 7(2) of the Berne Convention,Paris Text, member countries may elect between two alternative formulasfor calculating the minimum term of protection for cinematographic works:they “may provide that the term of protection shall expire fifty years afterthe work has been made available to the public with the consent of the au-thor”—typically by theatrical or other public release—“or, failing such anevent within fifty years from the making of such a work, fifty years after themaking.”481

The E.C. Term Directive adopts a method for computing the term of copy-right in cinematographic or audiovisual works that follows the author’s righttradition by connecting term of protection to the lives of the work’s authors:“The term of protection of cinematographic or audiovisual works shall ex-pire 70 years after the death of the last of the following persons to survive,whether or not these persons are designated as co-authors: the principaldirector, the author of the screenplay, the author of the dialogue and thecomposer of music specifically created for use in the cinematographic oraudiovisual work.”482 The provision controls only the computation of termand does not affect the determination of authorship or ownership of rightsin these works. So, for example, if the composer of a film’s background scoreis the last of the designated contributors to die, the motion picture’s term ofcopyright would expire seventy years after his death even though, undernational law, the composer had no copyright interest in the work.

(ii) Photographs and Works of Applied Art. Photographic works receivewidely varying terms of protection around the world. At one end of the spec-trum, the Universal Copyright Convention provides for a minimum ten-yearterm “in those Contracting States which protect photographic works.”483

Article 7(4) of the Berne Convention, introduced by the 1967 StockholmRevision, establishes a minimum term of protection lasting “at least until theend of a period of twenty-five years from the making of such a work.”484 Atthe other end of the range, Article 9 of the WIPO Copyright Treaty effectivelyrequires that photographic works receive Berne’s minimum life-plus-fiftyterm by providing that “[i]n respect of photographic works, the ContractingParties shall not apply the provision of Article 7(4) of the Berne Conven-

481. Berne Convention, 1971 Paris Text, Art. 7(2).482. E.C. Term of Protection Directive Art. 2(2).483. Universal Copyright Convention, 1971 Paris Text, Art. IV(3). This provision also es-

tablishes a ten-year minimum term for “works of applied art in so far as they are protected asartistic works.”

484. Berne Convention, 1971 Paris Text, Art. 7(4). This provision also established the mini-mum term for “works of applied art in so far as they are protected as artistic works.”

§5.3. Term 235


tion.”485 Article 12 of the TRIPs Agreement expressly excludes photographicworks, along with works of applied art, from its provision that, whenever theterm of protection of a work is calculated on a basis other than the life of anatural person, the term shall be no less than fifty years from the year ofpublication.

As evidence that the Berne Convention has done little to introduce uni-formity into the national terms of copyright for photographs, ProfessorRicketson cites the wide range of approaches that member states have takento the question of term for this class of works, ranging from terms as short asfive years in countries bound only by Acts prior to the Stockholm Revision,to twenty-five to fifty years after the work’s making or after publication in amajority of countries bound by the Stockholm Text.486

The E.C. Term Directive has secured some substantial uniformity in theEuropean Union by extending the standard life-and-seventy-year term tophotographs “which are original in the sense that they are the author’s ownintellectual creation.”487 The same provision of the Term Directive allowsmember states to “provide for the protection of other photographs.”488 TheGerman Act, for example, protects an artless snapshot for a term of fifty yearsfrom its first publication or, if unpublished, from the year it was made.489 TheBritish legislation, by contrast, follows the common law tradition generallyand assigns the life-plus-seventy-year term to all forms of photographs,whether fine art or snapshot.

§5.3.1.2. Neighboring Rights

Article 14 of the Rome Convention for the Protection of Performers, Produc-ers of Phonograms and Broadcasting Organizations adopts a comprehensivetwenty-year minimum period of protection but provides different startingpoints for computing the term for different classes of subject matter. In thecase of phonograms and performances incorporated in phonograms, theminimum period is twenty years computed from the end of the year in whichthe fixation was made.490 For performances that are not fixed—that is, not

485. WIPO Copyright Treaty Art. 9.486. Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic

Works: 1886–1986 338 (1987).487. E.C. Term of Protection Directive Art. 6. Recital 17 of the Directive states that “a photo-

graphic work within the meaning of the Berne Convention is to be considered original if it isthe author’s own intellectual creation reflecting his personality, no other criteria such as meritor purpose being taken into account.”

488. E.C. Term of Protection Directive Art. 6.489. Germany, Copyright Act Art. 72.490. Rome Convention Art. 14(a).

incorporated in phonograms—the term runs from the end of the year inwhich the performance took place.491 For broadcasts, the term runs from theend of the year in which the broadcast occurred.492 Following the historicaltrend to longer terms, the TRIPs Agreement provides that the term of pro-tection for performers and producers of phonograms “shall last at least untilthe end of a period of fifty years computed from the end of the calendar yearin which the fixation was made or the performance took place.”493 However,the TRIPs Agreement retains the Rome Convention minimum of twentyyears for broadcasts.494

Article 4 of the Geneva Phonograms Convention leaves duration of pro-tection to the domestic law of each contracting state, subject to the impor-tant exception that “if the domestic law prescribes a specific duration for theprotection, that duration shall not be less than twenty years from the endeither of the year in which the sounds embodied in the phonogram were firstfixed or of the year in which the phonogram was first published.”495 Coun-tries that meet their obligations under the Phonograms Convention throughunfair competition law, which prescribes no fixed duration for the defendant’scivil wrong, will typically specify no fixed period of protection outside thestatute of limitations. According to the WIPO Guide to the Rome Conventionand to the Phonograms Convention, it was evidently assumed that parity be-tween national systems could best be maintained by the principle that pro-tection should not end before twenty years from the phonogram’s first fixa-tion or first publication.496

Under the E.C. Term Directive, performers’ rights expire fifty years afterthe date of the performance; “[h]owever, if a fixation of the performance islawfully published or lawfully communicated to the public within this pe-riod, the rights shall expire 50 years from the date of the first such publica-tion or the first such communication to the public, whichever is the ear-lier.”497 The rights of phonogram producers expire fifty years after the fixationis made. “However, if the phonogram is lawfully published or lawfully com-municated to the public during this period, the rights shall expire 50 yearsfrom the date of the first such publication or the first such communicationto the public, whichever is the earlier.”498 The E.C. Term Directive makesthe rights of film producers expire fifty years after the fixation is made;

491. Rome Convention Art. 14(b).492. Rome Convention Art. 14(c).493. TRIPs Agreement Art. 14(5). See also WIPO Performances and Phonograms Treaty

Art. 17.494. TRIPs Agreement, Art. 14(5).495. Geneva Phonograms Convention Art. 4.496. WIPO, Guide to the Rome Convention and to the Phonograms Convention 103 (1981).497. E.C. Term of Protection Directive Art. 3(1).498. E.C. Term of Protection Directive Art. 3(2).

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“[h]owever, if the film is lawfully published or lawfully communicated to thepublic during this period, the rights shall expire 50 years from the date ofthe first such publication or the first such communication to the public, which-ever is the earlier.”499 The rights of broadcasting organizations expire fiftyyears after the broadcast’s first transmission, whether the broadcast is trans-mitted by wire or over the air, including by cable or satellite.500

The E.C. Database Directive effectively divides databases into those elements,if any, that are protected by copyright and those elements that are subject onlyto the Directive’s sui generis right against unlawful extraction or reutilization.Original copyrighted aspects of databases receive the same term of protectionas copyrighted works generally. By contrast, nonoriginal databases that comewithin the sui generis right enjoy a term of protection that expires fifteen yearsfrom the first day of the year following the date of completion of the making ofthe database.501 As a practical matter, so long as the database is regularly re-freshed with new data, protection will be perpetual since, under Article 10(3),“[a]ny substantial change, evaluated qualitatively or quantitatively, to thecontents of a database, including any substantial change resulting from theaccumulation of successive additions, deletions or alterations, which wouldresult in the database being considered to be a substantial new investment,evaluated qualitatively or quantitatively, shall qualify the database resultingfrom that investment for its own term of protection.”502

In the United States, sound recordings and other fixed performances, suchas broadcasts, are protected under copyright rather than separate neighbor-ing rights legislation, and consequently they enjoy the same term of protec-tion as other forms of copyright subject matter. These works are frequentlycreated under conditions that make them works for hire, protected for 95 yearsfrom the date of publication or 120 years from the date of creation, which-ever expires first.503 Unfixed performances are protected under state commonlaw as well as state and federal antibootlegging legislation; the length ofprotection in these cases is at least potentially perpetual.504

§5.3.2. Comparison of Terms


The Berne Convention generally operates on the principle of national treat-ment, under which a foreign copyright claimant will receive in the protect-

499. E.C. Term of Protection Directive Art. 3(3).500. E.C. Term of Protection Directive Art. 3(4).501. E.C. Database Directive Art. 10(1).502. E.C. Database Directive Art. 10(3).503. U.S. 1976 Copyright Act §302(c).504. See generally Paul Goldstein, 3 Copyright §15.4 (2d ed. 1996). The federal antibootlegging

legislation appears at 17 U.S. Code Chap. 11 (1999).

ing country the same treatment the country gives to its own nationals.505

One important exception to national treatment is the rule of comparison ofterms—also called the rule of the shorter term—embodied in Article 7(8) ofthe 1971 Paris Text: “In any case, the term shall be governed by the legisla-tion of the country where protection is claimed; however, unless the legisla-tion of that country otherwise provides, the term shall not exceed the termfixed in the country of origin of the work.”506 The E.C. Term Directive obli-gates member countries to apply the rule of comparison of terms.507 TheUnited States and Canada, with limited exceptions,508 do not compare terms;the United Kingdom, before it passed amendments implementing the TermDirective, similarly refrained from comparison of terms.

a. scope

Article 7(8) presumably embraces all situations in which the term of protec-tion given to nationals in the protecting country exceeds the term prescribedin the country of origin. The provision not only covers situations where theprotecting country, such as Germany, gives a term of seventy years after theauthor’s death and the country of origin grants a term measured by the Berneminimum, but also encompasses more particularized differences, such aswhere one country protects works of applied art for twenty-five years fromtheir making, as is permitted under Article 7(4) of the Berne Paris Act, andthe other country grants them a full copyright term of fifty or seventy yearsafter the author’s death.509

The term fixed for protection in the country of origin will not always beself-evident. For example, under U.S. law, works created before January 1,1978, were subject to an initial term of copyright, measured by twenty-eightyears from the date of publication, and to a second term of copyright—origi-

505. See §3.2, above. See also Berne Convention, 1971 Paris Text, Art. 7(7):

Those countries of the Union bound by the Rome Act of this Convention which grant, intheir national legislation in force at the time of signature of the present Act, shorter termsof protection than those provided for in the preceding paragraphs shall have the rightto maintain such terms when ratifying or acceding to the present Act.”

According to the WIPO Guide to the Berne Convention for the Protection of Literary and ArtisticWorks (Paris Act, 1971), “[t]his is an exception for a few Union countries. It was inserted inthe Convention at the Stockholm Revision (1967), confirmed by the Paris Revision (1971), toallow them to accept the new text of Article 7.” WIPO, Guide to the Berne Convention for theProtection of Literary and Artistic Works (Paris Act, 1971) 50 (1978).

506. Berne Convention, 1971 Paris Text, Art. 7(8).507. See §5.3.2.3, below.508. Canada, Copyright Act §§5(1.02), 9(2).509. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 50 (1978).

§5.3. Term 239


nally twenty-eight years, and present sixty-seven years—upon compliancewith a renewal registration formality. (Amendments to the 1976 CopyrightAct lifted the renewal registration formality in 1992.) Is the American copy-right term in these works twenty-eight years, as measured by the initial copy-right term, or ninety-five years, as measured by the addition of the renewalterm? Article 7(8)’s provision on comparison of terms is not the only provi-sion of the Berne Convention that bears on the question; Article 18, mak-ing the Convention’s obligations apply to any work that has not fallen intothe public domain in its country of origin through expiry of the terms of pro-tection, is also pertinent.510

In an “informal view,” triggered by an inquiry from the United States,the Deputy Director General of the World Intellectual Property Organiza-tion opined on this and a corresponding question respecting works origi-nating in the United States that, because of noncompliance with publica-tion formalities, had immediately fallen into the public domain. In the caseof “those works which, due to the non-compliance with formalities (suchas the requirement of publication with notice), have never been protected,it is clear that they have not fallen into the public domain . . . through theexpiry of the term of protection since there has been no term of protectionapplicable for them.”511

The Deputy Director General further opined that where it was noncom-pliance with another formality—renewal registration—that placed thework in the public domain following its first term of protection, “the termaffixed in country of origin of the work should be considered that termwhich would be applicable provided that the formalities would have beenfulfilled (or would not have existed)”—ninety-five years from publication—“this is the term which should be taken into account by the other coun-tries party to the Berne Convention and/or Members of the WTO when theyapply the principle of ‘comparison of terms’ provided for in Article 7(8) ofthe Berne Convention.”512

510. On Article 18(1) and retroactivity, see §5.3.3, below.511. Letter of Shozo Uemura, Deputy Director General, World Intellectual Property Orga-

nization, reprinted in 47 J. Copr. Soc’y 91, 93 (1999).512. Id. at 96. But cf. Sam Ricketson, The Berne Convention for the Protection of Literary and

Artistic Works: 1886–1986 139 (1987): “As far as the latter ([the present Act] is concerned, itwould be difficult to regard any interpretation offered by the Director General on the provi-sions of the Convention as authentic, and therefore binding on all members of the Union, asultimately this must remain a matter for those countries themselves acting through either aconference of revision or the Assembly. Accordingly, while the Assembly could instruct theDirector General and his staff to prepare an interpretation, the latter would need to be con-firmed by the Assembly for it to be regarded as authentic.”

b. country of origin

A work’s country of origin for purposes of applying comparison of terms willnot necessarily be the same as the country that provides the point of attach-ment for purposes of obtaining protection within the Berne Union. A pos-sible point of attachment under the Berne Paris Text is the country of theauthor’s nationality. By contrast, it is the country in which the work wasfirst published, and not the country of which the author is a national, that isthe country of origin for published works under Article 7(8). To be sure, inmany if not most cases the country of the author’s nationality will also bethe country of the work’s first publication. However, if an author createsseveral works, each of which is first published in a different country, eachwork will have a different country of origin. One consequence of this differ-ence is that authors and publishers may strategically select the place of firstpublication with an eye to the country that will provide the longest term ofprotection under Article 7(8)’s comparison of terms.

Article 5(4) roughly divides its ascription of country of origin betweenworks that are published in a Berne Union country and works that are un-published or are first published outside the Union. In the case of works firstpublished in a country of the Union, the country of origin is considered to bethat country. In “the case of works published simultaneously in several coun-tries of the Union which grant different terms of protection,” the country oforigin is “the country whose legislation grants the shortest term of protec-tion.”513 In the case of works published simultaneously in a country outsidethe Union and in a country of the Union, the Union country is the country oforigin.514

In the case of unpublished works, or works first published in a countryoutside the Union without simultaneous publication in a country of the Union,the country of origin is as a general rule the country of the Union of whichthe author is a national.515 Article 5(4) (c) carves out two exceptions to thisrule: “(i) when these are cinematographic works the maker of which has hisheadquarters or his habitual residence in a country of the Union, the coun-try of origin shall be that country, and (ii) when these are works of archi-tecture erected in a country of the Union or other artistic works incorporatedin a building or other structure located in a country of the Union, the coun-try of origin shall be that country.”516

513. Berne Convention, 1971 Paris Text, Art. 5(4) (a). On the rules governing simultaneouspublication, see §4.1.1.1.B(ii), above. See also WIPO, Guide to the Berne Convention for the Pro-tection of Literary and Artistic Works (Paris Act, 1971) 36 (1978).

514. Berne Convention, 1971 Paris Text, Art. 5(4) (b).515. Berne Convention, 1971 Paris Text, Art. 5(4) (c).516. Berne Convention 1971, Paris Text, Art. 5(4) (c) (i), (ii).

§5.3. Term 241


§5.3.2.2. Universal Copyright Convention

The Universal Copyright Convention’s version of the rule of comparison ofterms, Article IV(4)–(6) of the 1971 Paris Text, divides between publishedand unpublished works: “No Contracting State shall be obliged to grant pro-tection to a work for a period longer than that fixed for the class of works towhich the work in question belongs, in the case of unpublished works by thelaw of the Contracting State of which the author is a national, and in the caseof published works by the law of the Contracting State in which the workhas been first published.”517

U.C.C. Article IV(5) provides that, for purposes of Article IV(4), “the workof a national of a Contracting State, first published in a non-Contracting State,shall be treated as though first published in the Contracting State of whichthe author is a national,”518 and Article IV(6) adds that “in case of simulta-neous publication in two or more Contracting States, the work shall be treatedas though first published in the State which affords the shortest term; anywork published in two or more Contracting States within thirty days of itsfirst publication shall be considered as having been published simultaneouslyin said Contracting States.”519

Comparison of terms under the U.C.C. and Berne differs in several signifi-cant respects. While Article 7(8) of the Berne Convention makes applicationof the rule obligatory unless national legislation provides to the contrary,520

the U.C.C. employs the equivocal phrase, “[n]o Contracting state shall beobliged,” raising the question of what state action, if any, is required to mani-fest a country’s intention on the point.521 As Dr. Bogsch has observed, “[o]necould argue that since the Convention does not provide that a country may‘cut back’ by its law or other enacted rule, a country may ‘cut back’ in anymanner it pleases, i.e., even by remaining silent.”522 But Dr. Bogsch adds,“[o]ne could also argue that, from a practical viewpoint, unless the will ofthe country is expressed in the form of a general rule, the owners of copy-right and the prospective users are left in such an uncertainty as to theirrights and obligations which would be repugnant to common sense. Conse-quently, this argument would conclude, countries wishing to make use ofthe permissive rule of Article IV, paragraph 4, must enact general rules tothis effect.”523

517. Universal Copyright Convention, 1971 Paris Text, Art. IV(4)(a).518. Universal Copyright Convention, 1971 Paris Text, Art. IV(5).519. Universal Copyright Convention, 1971 Paris Text, Art. IV(6).520. See §5.3.2.1, above.521. Universal Copyright Convention, 1971 Paris Text Art. IV(4) (a).522. Arpad Bogsch, The Law of Copyright Under the Universal Convention 53 (3d rev. ed. 1968).523. Arpad Bogsch, The Law of Copyright Under the Universal Convention 53 (3d rev. ed. 1968).

Unlike the Berne Convention, the U.C.C. provision on comparison of termsgrapples directly with the question of how to count consecutive terms ofcopyright, as under the since-abandoned U.S. system of two twenty-eight-year terms with the second term conditioned on compliance with a renewalformality. For purposes of U.C.C. Art. IV(4) (a), “if the law of any Contract-ing State grants two or more successive terms of protection, the period ofprotection of that State shall be considered to be the aggregate of those terms.However, if a specified work is not protected by such State during the sec-ond or any subsequent term for any reason, the other Contracting States shallnot be obliged to protect it during the second or any subsequent term.”524

Where comparison of terms under the Berne Convention centers on theterm for the particular work in issue, comparison under the U.C.C. focuseson the term fixed “for the class of works to which the work in question be-longs.”525 As a consequence, comparison of terms requires, first, a determi-nation of the term of protection the protecting country would give to the workin issue if the work had been created by one of the protecting country’s ownnationals; second, determination of the class to which the relevant contract-ing state—the country of first publication for published works, the countryof the author’s nationality for unpublished works—assigns the work; and,third, determination of the term that country assigns to that class of works.If this latter term is shorter than the term prescribed by national treatment,the protecting country can apply the shorter term to the work in issue.526

§5.3.2.3. E.C. Term Directive

The 1993 E.C. Term Directive, as implemented in member states, categori-cally obligates member countries to apply the rule of comparison of terms toforeign works.527 The Term Directive also requires comparison of terms forneighboring rights. If the foreign work qualifies for protection in the E.U.country, “the term of protection granted by Member States shall expire nolater than the date of expiry of the protection granted in the country of whichthe rightholder is a national.”528 At least arguably, the Directive exempts

524. Universal Copyright Convention, 1971 Paris Text, Art. IV(4) (b).525. Universal Copyright Convention, 1971 Paris Text, Art. IV(4) (a).526. See generally Arpad Bogsch, The Law of Copyright Under the Universal Convention 54

(3d rev. ed. 1968) (“Naturally, if the duration under (iii) is zero—i.e., when the class is notprotected by copyright in the work’s country of origin—the country in which protection issought is free to deny protection to the work even if, under this latter country’s law, works ofthe class to which the particular work belongs enjoy protection.”)

527. E.C. Term of Protection Directive Art. 7(1).528. E.C. Term of Protection Directive Art. 7(2).

§5.3. Term 243


earlier international agreements, such as the 1892 U.S.–German bilateraltreaty,529 from the effect of its mandatory comparison of terms.530

Extension of the standard American copyright term to the author’s life andseventy years will not necessarily immunize works made for hire from a com-parison of terms in European countries. Where the work for hire is a collec-tive work, such as an encyclopedia, comparison of terms may not be anissue, since the term for these works under the Directive will in many if notmost cases be 70 years from publication,531 while the American term forworks for hire is 95 years from publication or 120 years from creation,whichever expires first.532 Other works for hire, however, such as motionpictures originating in the United States, may have their term shortenedunder the Directive, since legislation adopted under the Term Directive treatsmotion pictures as joint works whose term expires seventy years after thedeath of the director, writer, or composer, whichever survives longest—aterm that may substantially exceed the American term for works made forhire.533

Works created after the effective date of the Term Directive’s implement-ing legislation will receive a uniform term of protection across the Euro-pean Union. Article 10(2) of the Directive also mandates retrospective har-monization measures for works created by E.U. nationals, or first publishedin an E.U. country, before the effective date of the Directive’s implement-ing legislation. Under Article 10(2), the terms of protection provided forin the Directive are to apply “to all works and subject matter which areprotected in at least one Member State” on July 1, 1995.”534 So for example,as of July 1, 1995, a German work whose author died in 1944 was still pro-tected in Germany, where the term of protection was life and seventy years,but was in the public domain in the United Kingdom, where the term waslife plus fifty years. Article 10(2) would revive the U.K. copyright—and,indeed, any other lapsed copyrights throughout the Union535—and have

529. On the effect of the U.S.–German Agreement on term of copyright in works of U.S.origin, see §4.1.1.4.B(ii), above.

530. See E.C. Term of Protection Directive Art. 7(3) (“Member States which, at the date ofadoption of this Directive, in particular pursuant to their international obligations, granted alonger term of protection than that which would result from the provisions referred to in para-graphs 1 and 2 may maintain this protection until the conclusion of international agreementson the term of protection by copyright or related rights.”)

531. E.C. Term of Protection Directive Art. 1(4).532. U.S. 1976 Copyright Act §302(c).533. See §5.3.1.1.A(iii), above.534. E.C. Term of Protection Directive Art. 10(2).535. See Herman Cohen Jehoram, The E.C. Copyright Directives, Economics and Authors’

Rights, 25 I.I.C. 821, 835 (1994). See also Gerald Dworkin & J.A.L. Sterling, Phil Collins andthe Term Directive, 16 E.I.P.R. 187, 189 (1994).

it last until 2014, seventy years after the author’s death. Because this pro-vision effectively revives lapsed copyrights, Article 10(3) accommodatesthe interests of third parties, such as translators, who invested in relianceon the copyright’s lapsed status.

§5.3.3. Retroactivity

Article 18 of the Berne Paris Text, incorporated by reference into the TRIPsAgreement,536 obligates member states retroactively to protect foreign worksalready in existence at the time the work’s country of origin first adhered tothe Convention.537 The rule traces to the very first text of the Convention,whose drafters understood that, without a requirement of retroactive pro-tection, only works that were created after the Convention’s entry into forcewould enjoy protection in other countries, with the result that a vast bodyof works would remain unprotected outside their country of origin. Neitherthe Universal Copyright Convention nor the Rome Convention contains acomparable provision on retroactivity.538 The TRIPs Agreement requiresretroactive protection of sound recordings through its requirement in Ar-ticle 14(6) that “the provisions of Article 18 of the Berne Convention (1971)shall also apply, mutatis mutandis, to the rights of performers and producersof phonograms in phonograms.”539

Berne Article 18(1) and (2) cover works in existence at the time the Con-vention came into force, presumably in any one of its Acts,540 and requiresretroactive protection if the work has not fallen into the public domainthrough “expiry of the term of protection” in the work’s country of origin orin the protecting country.541 The requirement applies to unpublished worksas well as to published works, and to works that may have fallen into thepublic domain in the country of origin, the protecting country, or both coun-tries for some reason other than expiration of term; noncompliance withformalities is the most common reason. Article 18(3) of the Berne Conven-tion gives member countries considerable leeway to meliorate any prejudicesuffered by users when a work they correctly believed was in the public do-main is restored to copyright.

536. TRIPs Agreement Art. 9(1).537. Berne Convention, 1971 Paris Text, Art. 18.538. See Rome Convention Art. 20(2).539. TRIPs Agreement Art. 14(6).540. On the analytical problems created by the phrase, “at the moment of its coming into

force,” particularly in the case of states that have adhered to an earlier but not a later act, seeSam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 672–673 (1987).

541. On the definition of country of origin, see §5.3.2.1, above.

§5.3. Term 245


Article 18(4) of the Paris Text makes paragraphs (1)–(3) apply not only “atthe moment of its [the Convention’s] coming into force,” but also “in the caseof new accessions to the Union.” The differences in approach to the questionof retroactivity in the United States following its adherence to the Paris Textin 1989 indicate the occasional complexity of the question. Was the UnitedStates obligated to protect Berne Union works that lost their copyright be-cause of the copyright owner’s failure to renew copyright for the secondtwenty-eight-year term? Under one view, the loss of copyright in this situa-tion arose from expiration of term—the original twenty-eight-year copyrightterm.542 Under another view, the loss arose from noncompliance with a for-mality—registration for renewal. The questions have since been resolved byamendments to the U.S. Copyright Act in 1994 restoring copyright in workscoming from Berne Union and World Trade Organization countries wherecopyright had been lost for noncompliance with formalities such as renewalregistration as well as for other reasons.543

§5.4RIGHTS

Rights, particularly economic rights, in literary and artistic works have ex-panded over the course of a century to bring new technological uses of liter-ary and artistic works within copyright control. In 1886, when the BerneConvention was promulgated, the reproduction right was evidently so wellestablished that it did not need to be stated as a minimum treaty standard.544

The 1886 Berne Text only required member countries to grant exclusive rightsto translate and to publicly perform translated works. Revisions between theBerne Text and the 1971 Paris Text subsequently added guarantees for newrights, such as broadcasting and mechanical reproductions of musical works,in response to the emergence of new distribution technologies. The repro-duction right was not added as a norm until 1967 at Stockholm. The 1994TRIPs Agreement introduced a limited rental right.545 In December 1996 theWIPO Copyright and Performances and Phonograms Treaties introduced

542. The latter position coincides in principle with the rationale behind the renewal termin U.S. copyright law, that it is a “separate estate” and independent of the original term ofcopyright.

See generally Arpad Bogsch, WIPO Views of Article 18, 43 J. Copyr. Soc’y 181 (1995); IrwinKarp, Final Report, Berne Article 18 Study on Retroactive United States Copyright Protectionfor Berne and Other Works, 20 Colum.-V.L.A. J.L. & Arts 157 (1996).

543. See §5.1.1.3.B(vi), above.544. See §5.4.1.1.A(i), below.545. TRIPs Agreement Art. 11.

minimum standards for an exclusive distribution right546 and for an encom-passing communication right, the first time either right was formulated asan international treaty norm.547 At the same time that exclusive rights haveexpanded, so have the permitted limitations on rights in the form of statu-tory licenses and exemptions from liability.548

The distribution and communication rights introduced by the WIPO Trea-ties have legal precedents in national copyright practice, but another inno-vation of the two treaties does not: the requirement that contracting partiesprovide “adequate legal protection and effective legal remedies against thecircumvention of effective technological measures that are used by authorsin connection with the exercise of their rights.”549 The treaty requirementfor anticircumvention measures, though clearly motivated by the concernthat digital technologies will erode copyright markets, should not be mis-taken for a minimum copyright standard. Other than its inclusion in the textof a copyright and a neighboring rights treaty, the anticircumvention re-quirement has no connection—indeed is antithetical—to the philosophy ofcopyright generally, that privately enforced rights mediate more efficientlyand equitably between authors and their audiences than do physical or tech-nological fences.550

§5.4.1. Economic Rights

Economic rights in creative products divide into those conferred by copyrightor author’s right and those conferred by neighboring rights. The lines of di-vision are not universal. One country may treat a recorded performance asa literary work entitled to copyright protection, while another country willexclude recordings from authorial “works” and protect them only under oneor more neighboring rights.551 Also, countries may take different approachesto the rights that attach to literary and artistic works. Most countries pro-

546. See §5.4.1.1.A(iii), below.547. See §5.4.1.1.B(iv), below.548. See §5.5, below.549. WIPO Copyright Treaty Art 11. The technologies encompassed by the provision in-

volve the “effective technological measures that are used by authors in connection with theexercise of their rights under this Treaty or the Berne Convention and that restrict acts, inrespect of their works, which are not authorized by the authors concerned or permitted bylaw.”

Article 18 of the WIPO Performances and Phonograms Treaty makes comparable provi-sion for technological measures used by performers or phonograms producers.

550. See §5.4.1.3, below. See generally Paul Goldstein, Copyright and Its Substitutes, 1997Wis. L. Rev. 865; Thomas C. Vinje, A Brave New World of Technical Protection Systems: WillThere Still Be Room for Copyright? 18 E.I.P.R. 431 (1996).

551. See §5.1.2.2, above.

§5.4. Rights 247


vide no right against library lending of literary works. Of the countries thatdo prescribe a public lending right, all but one treat it as a neighboring right;Germany, the exception, treats it as an author’s right.552 These differencesraise the vexing question whether treaty requirements of national treatmentobligate Country A, which for its own nationals treats a right as belongingto copyright, to extend the same treatment to nationals of Country B, eventhough Country B would characterize the right as a neighboring right forpurposes of its own nationals and nationals of Country A.553

Courts around the world apply virtually the same rules to determinewhether one work infringes rights in another. Apart from the common-place that literal identity between two works will almost invariably bespeakinfringement, courts in both civil law and common law jurisdictions applythe idea-expression distinction to determine whether a defendant has un-lawfully appropriated protected content from the copyrighted work. TheTRIPs Agreement enshrines the idea-expression distinction in Article 9(2):“Copyright protection shall extend to expressions and not to ideas, proce-dures, methods of operation or mathematical concepts as such.”554 Thisuniversal norm reflects an understanding that all cultures advance by draw-ing on the achievements of their predecessors, and that if literature and artare to thrive, the building blocks of expression must always be free forborrowing.

To prevail in an infringement action, a copyright owner must prove, first,that the defendant copied from its work either consciously or subcon-sciously,555 and, second, that the effect of the copying was to appropriateprotectible expression; copying of unprotectible ideas, however studied it maybe, does not constitute copyright infringement. Striking similarities betweentwo works—the same idiosyncratic phrase in two musical works, or com-mon errors such as false entries in competing directories—may support aninference of copying on the ground that two works would be unlikely to sharesuch similarities unless one had copied from the other.556 In some cases, simi-larities between two works will be sufficiently pervasive to support both aninference of copying and a finding of improper appropriation.

Differences in copyright subject matter may require differential applica-tion of the two tests of copyright infringement: copying and improper appro-priation. Because, for example, the vocabulary of rhythm, melody, and har-mony available for musical composition is more limited than the vocabulary

552. See §5.4.1.1.A(iii), below.553. See §3.2.3, above.554. TRIPs Agreement Art. 9(2). See also WIPO Copyright Treaty Art. 2.555. See, e.g., Sinanide v. La Maison Kosmeo, [1928] [K.B. Div.] 44 T.L.R. 371; ABKCO

Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 998 (2d Cir. 1983).556. See E. P. Skone James et al., Copyright ¶8–12 (13th ed. 1991); Paul Goldstein, 2 Copy-

right §7.2.1.2 (2d ed. 1996).

for literary or visual expression, courts will insist on stronger similarities toprove infringement in music infringement cases than they will in cases in-volving literary or artistic works.557 Similar constraints apply in cases involv-ing fact works, such as directories, and functional works, such as businessforms and computer programs.

§5.4.1.1. Copyright

a. exploitation in tangible form (reproduction,adaptation, distribution)

(i) Reproduction Right. Historically, the right to make copies of a copy-righted work is the seminal author’s right, the law’s response to the inven-tion of moveable type. Although the reproduction right was well embed-ded in the laws of all Berne signatories at the time the Berne Union wasformed, it took almost a century, with the 1967 Stockholm Revision, forthe right to be prescribed as a minimum Convention right. According toProfessor Ricketson, the reason the original Berne text omitted a reproduc-tion right was lack of agreement on the right’s scope and content.558 Theproblem, ultimately addressed in Stockholm, “was to find a formula wideenough to cover all reasonable exceptions but not so wide as to make theright illusory.”559

Article 9(1) of the 1971 Berne Paris Text provides: “Authors of literary andartistic works protected by this Convention shall have the exclusive right ofauthorizing the reproduction of these works, in any manner or form.”560

According to the WIPO Guide to the Berne Convention, “[t]he words ‘in anymanner or form’ are wide enough to cover all methods of reproduction: de-sign, engraving, lithography, offset and all other printing processes, typewrit-ing, photocopying, xerox, mechanical or magnetic recording (discs, cassettes,magnetic tape, films, microfilms, etc.), and all other processes known or yetto be discovered. It is simply a matter of fixing the work in some materialform.”561 To avoid any doubt about the scope of the reproduction right,

557. See Paul Goldstein, 2 Copyright §8.3 (2d ed. 1996).Courts regularly admit expert testimony in music infringement cases to determine whether

similarities, even striking similarities, are attributable to a common musical vocabulary. See,e.g., Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997).


559. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works(Paris Act, 1971) 54 (1978).

560. Berne Convention, 1971 Paris Text, Art. 9(1).561. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 54 (1978).

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Article 9(3) adds, “[a]ny sound or visual recording shall be considered as areproduction for the purposes of this Convention.”562

National legislation around the world generally formulates the reproduc-tion right in the same encompassing terms as the Berne Convention. Somecountries rely on a short, sweeping phrase. The German Copyright Act, forexample, defines the reproduction right as “the right to make copies of thework by whatever method and in whatever quantity.”563 Others, such asFrance, rely on equally broad language but add illustrative examples.564 TheBritish Act defines “copying” as “reproducing the work in any materialform.”565 The U.S. Copyright Act grants the exclusive right to reproduce acopyrighted work in “copies or phonorecords”566 and defines copies as “ma-terial objects, other than phonorecords, in which a work is fixed by anymethod now known or later developed, and from which the work can beperceived, reproduced or otherwise communicated, either directly or withthe aid of a machine or device.”567

Contemporary technologies for the transmission of copyrighted workshave presented a challenge to effective definition of the reproduction right:Should the right encompass the ephemeral copies that are unavoidably madeas a work courses through a digital network from vendor to ultimate user?An early proposal on the agenda that produced the WIPO Copyright Treaty

562. Berne Convention, 1971 Paris Text, Art. 9(3). “This addition was made because ofthe deletion of the old paragraph (1) of Article 13, which provided, for authors of musicalworks, the exclusive right to authorise the recording of such works ‘by instruments capableof reproducing them mechanically.’ When the recording right became swept up with the rightof reproduction generally and the latter found its place in Article 9, paragraph (1) of Article13 lost its raison d’etre.” WIPO, Guide to the Berne Convention for the Protection of Literary andArtistic Works (Paris Act, 1971) 57 (1978).

563. Germany, Copyright Act Art. 16(1).564. France, Intellectual Property Code Art. L 122–3:

Reproduction shall consist in the physical fixation of a work by any process permit-ting it to be communicated to the public in an indirect way.

It may be carried out, in particular, by printing, drawing, engraving, photography,casting and all processes of the graphical and plastic arts, mechanical, cinematographicor magnetic recording.

In the case of works of architecture, reproduction shall also consist in the repeatedexecution of a plan or of a standard project.

565. United Kingdom, Copyright, Designs and Patents Act 1988 §17.566. U.S. 1976 Copyright Act §106(1).567. U.S. 1976 Copyright Act §101. Section 101 defines “phonorecords” as “material ob-

jects in which sounds, other than those accompanying a motion picture or other audiovisualwork, are fixed by any method now known or later developed and from which the sounds canbe perceived, reproduced or otherwise communicated, either directly or with the aid of amachine or device.”

would have answered the question affirmatively.568 Ultimately, however, theDiplomatic Conference dropped the proposed provision from the treaty, evi-dently concluding that copyright control of ephemeral copies would contrib-ute little to copyright revenues but would significantly threaten fluent net-work operations.569

(ii) Translation and Adaptation. The variety of national languages amongthe original members of the Berne Union, and the fact that each languagerepresented a distinct market for a work’s exploitation, probably explainswhy the translation right was the first right to be expressly included as aminimum Berne requirement.570 Article 8’s broad formulation, ensuringauthors the right “of making and of authorizing the translation of theirworks,”571 may encompass not only translations from one written or spo-

568. Proposed Article 7 provided:

(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 includedirect 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 matterfor legislation in Contracting Parties to limit the right of reproduction in cases wherea temporary reproduction has the sole purpose of making the work perceptible orwhere the reproduction is of a transient or incidental nature, provided that suchreproduction takes place in the course of use of the work that is authorized by theauthor or permitted by law.

Diplomatic Conference on Certain Copyright and Neighboring Rights Questions, Basic Pro-posal for the Substantive Provisions of the Treaty on Certain Questions Concerning the Pro-tection of Literary and Artistic Works to Be Considered by the Conference, prepared by theChairman of the Committee of Experts on a Possible Protocol to the Berne Convention, Ar-ticle 7, WIPO Document CRNR/DC/4 (Aug. 30, 1996).

569. A statement from the Diplomatic Conference sidestepped the question of ephemeralcopies: “The reproduction right, as set out in Article 9 of the Berne Convention, and the ex-ceptions permitted thereunder, fully apply in the digital environment, in particular to the useof works in digital form. It is understood that the storage of a protected work in digital form inan electronic medium constitutes a reproduction within the meaning of Article 9 of the BerneConvention.” Diplomatic Conference on Certain Copyright and Neighboring Rights Questions,Agreed Statements Concerning the WIPO Copyright Treaty, WIPO Document CRNR DC/96,Concerning Article 1(4) (Dec. 23, 1996).

See generally Ysolde Gendreau, The Reproduction Right and the Internet 178 R.I.D.A. 2(1998); Thomas Vinje, The New WIPO Copyright Treaty: A Happy Result in Geneva, 19E.I.P.R. 230 (1997).

570. According to Professor Ricketson, this right “was probably the most important fac-tor which drew states into international copyright agreements in the late nineteenth century.”Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 384 (1987).

571. Berne Convention, 1971 Paris Text, Art. 8.

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ken language to another, but also translations from one computer languageto another. The E.C. Software Directive includes a right against the “trans-lation” as well as “adaptation, arrangement and any other alteration” of acomputer program.572

Article 12 of the Berne Convention, Paris Text provides as a minimum thatauthors of literary or artistic works “shall enjoy the exclusive right of autho-rizing adaptations, arrangements and other alterations of their works,”573

and Article 14(1) adds the exclusive right of authorizing “the cinemato-graphic adaptation and reproduction of these works.”574 “Adaptation” inArticle 12 probably means the recasting of a work from one format intoanother, as from a short story into a dramatic play or from a cartoon seriesinto a musical comedy, while “arrangement” probably means modificationwithin the same format, such as an orchestral arrangement of a popularsong.575 Together with the catch-all “other alterations,” these terms aredoubtless sufficiently wide to encompass the cinematographic adaptationcovered by Article 14(1).

Some countries, such as France, treat the adaptation right as an aspect ofthe reproduction right,576 while others, such as Japan577 and the UnitedKingdom,578 treat adaptation as a discrete economic right. The German stat-ute takes an intermediate approach and effectively assimilates unpublishedadaptations and other transformations of a work into the basic reproductionright;579 as a consequence, these initial unpublished versions will charac-teristically be exempted under the German Act’s special treatment of privatecopies.580 But section 23 of the German Act, which covers works once theyleave the private sphere, expressly bars an adaptation’s publication or ex-ploitation without the author’s consent.581

The U.S. Copyright Act grants a copyright owner the exclusive right “toprepare derivative works based upon the copyrighted work.”582 The Act de-fines “derivative work” expansively, as “a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization,

572. E.C. Software Directive, Art. 4(b). See also Canada, Copyright Act. §30.6(a).573. Berne Convention, 1971 Paris Text, Art. 12.574. Berne Convention, 1971 Paris Text, Art. 14(1) (i).575. See Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:

1886–1986 398–399 (1987).576. France, Intellectual Property Code Arts. L 122-1, 122-4.577. Japan, Copyright Act Art. 27.578. United Kingdom, Copyright, Designs and Patents Act 1988 §16(1) (e).579. Germany, Copyright Act Art. 16.580. Germany, Copyright Act Art. 53.581. Germany, Copyright Act Art. 23. See generally Paul Goldstein, Adaptation Rights and

Moral Rights in the United Kingdom, the United States and the Federal Republic of Germany,14 I.I.C. 43 (1983).

582. U.S. 1976 Copyright Act §106(2).

fictionalization, motion picture version, sound recording, art reproduction,abridgment, condensation, or any other form in which a work may be re-cast, transformed, or adapted.”583 American courts have held that deriva-tive rights encompass conversion of two-dimensional drawings into three-dimensional sculptures, dolls, and toys; the deletion of parts of a copyrightednews program in the course of its broadcast; and even the publication of amanual containing the answers to physics problems in plaintiff’s copyrightedtextbook.584

The economic right of adaptation will sometimes overlap the moral rightof integrity which similarly empowers authors to control changes in theirwork.585 The overlap can be consequential, particularly in cases where gapsexist in a country’s formulation of moral right. In one case, for example, anAmerican court ruled that defendant’s production of books it had assembledby cutting up, rearranging, and rebinding original articles clipped from copiesof plaintiff’s magazine infringed plaintiff’s adaptation right.586 In an evenmore extended decision, a court ruled that defendant infringed plaintiffs’copyright when it removed reproductions of artwork from books it had pur-chased and mounted the reproductions on ceramic tiles for retail sale. “Byborrowing and mounting the preexisting, copyrighted individual art imageswithout the consent of the copyright proprietors . . . appellant has prepareda derivative work and infringed the subject copyrights.”587

An English case, Holland v. Vivian Van Damm Productions, Ltd.,588 holdingthat defendant’s ballet, The Nightingale and the Rose, infringed the copyrightin Oscar Wilde’s popular short story of the same title, illustrates the extentto which the adaptation right can do double service as a right against dis-tortion of a traditional literary work. Wilde’s story was only thirteen pageslong, the tale was simple, many of its elements were old, and the ballet de-parted from it in many respects—hardly enough in the usual case to sup-port a claim of copyright infringement. Yet, “having regard to the differenceof medium,” the court concluded that “the ballet does substantially repro-duce the tale so far as it reproduces the combination or series of dramaticevents in the tale.”589 As a matter of strict copyright principle, Van Dammcould well have been decided against the copyright owner, for the expres-sions in the two works probably diverged too substantially to support a find-ing of infringement. Presumably the motive behind the result was the court’s

583. U.S. 1976 Copyright Act §101.584. See generally Paul Goldstein, 2 Copyright §5.3 (2d ed. 1996).585. On the right of integrity, see §5.4.2.2, below.586. National Geographic Soc’y v. Classified Geographic, Inc., 27 F.Supp. 655 (D. Mass. 1939).587. Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (9th Cir. 1988),

cert. denied, 489 U.S. 101 8 (1989). But see Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997).588. [Ch. 1936], in E. J. McGillivray, Copyright Cases 1936–45 69 (1949).589. [Ch. 1936] in E. J. McGillivray, Copyright Cases 1936–45 69, 76 (1949).

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solicitude not for copyright principle, but for Wilde’s reputational interests.Disregarding the significant structural and substantive dissimilarities be-tween the two works, the court focused instead on the defendant’s admis-sion in its advertising that the ballet was “based on,” “adapted from,” and“inspired by” the Wilde story, and on the fact that the ballet’s producer ad-mitted that “the name of Oscar Wilde was a valuable advertising feature.”Had defendant used neither Wilde’s name nor the title of the story, with theimplicit suggestion of Wilde’s approval, it is certainly plausible that the casewould have been decided differently.590

(iii) Distribution (Including Rental, Lending, and Resale Royalty). Unlikethe reproduction, translation, and adaptation rights, the right to distributecopies of literary and artistic works has historically received less than uni-versal endorsement, and few national legal systems have a comprehensivedistribution right.591 Germany is one, with its crisply stated provision that“[t]he right of distribution is the right to offer to the public or to put into cir-culation the original work or copies thereof.”592 The United Kingdom is an-other, with its right to issue copies to the public introduced in the 1988 Copy-right, Designs and Patents Act.593

Section 106(3) of the U.S. Copyright Act grants the exclusive right to dis-tribute “copies or phonorecords of the copyrighted work to the public by saleor other transfer of ownership, or by rental, lease, or lending.”594 Although

590. See also Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (9th Cir.1988). See generally Paul Goldstein, Adaptation Rights and Moral Rights in the United King-dom, the United States and the Federal Republic of Germany, 14 I.I.C. 43 (1983).

591. In France, Belgium and elsewhere, the distribution right is partially approximatedby the so-called “right of destination,” the author’s right of “reserving, for a very specific pur-pose, reproductions of his work that have been put on the market.” In fact, the right of desti-nation appears at its present stage of development to be more a theory than a doctrine, en-compassing only a limited class of cases. See Frank Gotzen, The Right of Destination in Europe,25 Copyright 218 (1989). See also Thierry Desurmont, The Author’s Right to Control the Des-tination of Copies Reproducing His Work, 134 R.I.D.A. 2, 64–66 (October 1987).

See generally Stig Strömholm, The “Right of Putting into Circulation” in Relation to Copy-right: A Study of Comparative Law, 3 Copyright 266 (1967); Dietrich Reimer, The Right ofDistribution with Special Reference to the Hiring and Lending of Books and Records, 9 Copy-right 56 (1973).

The only reference to a distribution right in the Berne Paris Text is in Article 14(1), whichassures authors of literary and artistic works the exclusive right to authorize “the cinemato-graphic adaptation and reproduction of these works, and the distribution of the works thusadapted or reproduced.”

592. Germany, Copyright Law Art. 17(1). See, e.g., “Wall Pictures,” German Federal Su-preme Court, Feb. 23, 1995 (Case No. I ZR 68/93), 28 I.I.C. 282 (1997) (defendant’s sale ofparts of Berlin Wall on which plaintiffs had painted graffiti art constituted infringement).

593. United Kingdom Copyright, Designs and Patents Act 1988 §18.594. U.S. 1976 Copyright Act §106(3).

section 106(3) covers only acts of distribution that occur within the UnitedStates, section 602(a) effectively gives the distribution right an extraterrito-rial reach by providing that the unauthorized importation into the UnitedStates of copies of phonorecords acquired outside the United States consti-tutes infringement of the right. Section 602(a) encompasses both piraticaland gray market goods, and section 602(b) authorizes the U.S. CustomsService to bar the importation of piratical goods but not of gray market goods.

At the end of the twentieth century, the clear international trend was toinclude a full-fledged distribution right in domestic copyright doctrine, stimu-lated in no small part by the WIPO Copyright Treaty, which introduced abroad distribution right for literary and artistic works.595 The “exhaustion”or “first sale” doctrine, freeing a copy or phonorecord from further copyrightcontrol following its first sale, creates a substantial, and internationally vexed,exception to the distribution right. Legislation in many countries has carvedout exceptions to the exhaustion and first sale doctrines that give copyrightowners continued control over the rental of specified classes of copies andphonorecords even after their first sale.

Sale or other transfer of ownership. Article 6 of the WIPO Copyright Treatyprovides: “Authors of literary and artistic works shall enjoy the exclusiveright of authorizing the making available to the public of the original andcopies of their works through sale or other transfer of ownership.”596 Accord-ing to an Agreed Statement of the Diplomatic Conference concerning Ar-ticles 6 and 7, “the expressions ‘copies’ and ‘original and copies,’ being sub-ject 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 tangibleobjects.”597

The Diplomatic Conference on the WIPO Copyright Treaty could not agreeon a formulation of the most significant exception to the distribution right—the doctrine of exhaustion, or first sale. Thus the treaty prescribes no ruleson the nature of the acts respecting copies that will exhaust the distributionright. Nor does the treaty prescribe whether exhaustion will have only do-mestic effect (in which case a copy’s lawful first sale would free it for resaleonly in the country in which the first sale occurred), or a broader, interna-tional effect (in which case the first lawful sale of a copy would free the copyfor unrestricted resale in any member state). Instead Article 6(2) of the treatyprovides, “[n]othing in this Treaty shall affect the freedom of Contracting Par-ties to determine the conditions, if any, under which the exhaustion of the right

595. WIPO Copyright Treaty Art. 6(1).596. WIPO Copyright Treaty Art. 6(1). See also WIPO Performances and Phonograms

Treaty Arts. 8, 12.597. Diplomatic Conference on Certain Copyright and Neighboring Rights Questions,

Agreed Statements Concerning the WIPO Copyright Treaty, WIPO Document CRNR/DC/96Concerning Articles 6 and 7 (Dec. 20, 1996).

§5.4. Rights 255


in paragraph (1) applies after the first sale or other transfer of ownership ofthe original or a copy of the work with the authorization of the author.”598

Rental rights. Advances in the reproduction technologies that facilitatecheap copies of motion pictures, phonograms, and computer software, andthe difficulty of enforcing the reproduction right against these unauthorizedprivate copies, have increased pressure from copyright owners for enactmentof rental rights. In the case of some copyrighted works, such as computersoftware for which an overnight rental of one copy can result in severalunauthorized copies, copyright owners will typically use the rental right toentirely bar rental of copies. In other situations, where illicit copying is lesslikely, copyright owners will use the rental right as a potential source of rev-enues, affirmatively exploiting the rental market as an outlet to consumerswho, not disposed to purchase a copy, would be willing to pay a smaller sumto use the work for a limited time.

Article 7(1) of the WIPO Copyright Treaty gives an “exclusive right ofauthorizing commercial rental to the public of the originals or copies of theirworks” to “Authors of (i) computer programs; (ii) cinematographic works;and (iii) works embodied in phonograms, as determined in the national lawof Contracting Parties.”599 This provision parallels Article 11 of the TRIPsAgreement, which requires member states to give authors of computer pro-grams and cinematographic works “the right to authorize or to prohibit thecommercial rental to the public of originals or copies of their copyrightworks.”600 The WIPO Copyright Treaty and the TRIPs Agreement diverge intheir treatment of rental rights in phonograms. Where the Copyright Treatygives the right to nationally defined authors of “works” embodied in phono-grams, TRIPs Article 14(4) refers instead to “producers of phonograms andany other right holders in phonograms as determined in domestic law.”601

The WIPO Copyright Treaty carves out specially tailored exceptions fromits rental right. In the case of computer programs, the rental right need notapply “where the program itself is not the essential object of the rental”;602

598. WIPO Copyright Treaty Art. 6(2).Cf. TRIPs Agreement Art. 6, which provides that, “[f]or the purposes of dispute settlement

under this Agreement,” and subject to the provisions on national treatment and most-favored-nation treatment, “nothing in this Agreement shall be used to address the issue of the exhaus-tion of intellectual property rights.” To the extent, however, that the Berne Convention im-plicitly adopts a principle of national exhaustion, as some have argued, a country’s adoptionof an international exhaustion rule may still be subject to attack before a WTO panel on theground that it violates a provision of Berne incorporated in TRIPs. See Daniel Gervais, The TRIPsAgreement: Drafting History and Analysis 60–62 (1998).

On the exhaustion doctrine generally, see §5.5.1.4, below.599. WIPO Copyright Treaty Art. 7(1).600. TRIPs Agreement Art. 11.601. TRIPs Agreement Art. 14(4).602. WIPO Copyright Treaty Art. 7(2) (i). See also TRIPs Agreement Art. 11.

for example, this provision will exclude the rental of automobiles, whichtoday commonly embody dozens of digitally programmed chips to controlvital functions. A second exception, aimed directly at use of the rental rightto stifle illicit copying, entitles member countries to withhold rental rightsfrom cinematographic works “unless such commercial rental has led to wide-spread copying of such works materially impairing the exclusive right ofreproduction.”603 Finally, Article 7(3) creates a safe harbor for preexistingnational provisions on record rental: “Notwithstanding the provisions ofparagraph (1), a Contracting Party that, on April 15, 1994, had and con-tinues to have in force a system of equitable remuneration of authors for therental of copies of their works embodied in phonograms may maintain thatsystem provided that the commercial rental of works embodied in phono-grams is not giving rise to the material impairment of the exclusive right ofreproduction of authors.”604

The rental right mandated by the 1992 E.C. Rental Right Directive605 at-taches to all forms of literary and artistic works other than buildings andworks of applied art.606 The Directive defines “rental” to mean “making avail-able for use, for a limited period of time and for direct or indirect economicor commercial advantage,”607 and it assigns the exclusive right to authorizeor prohibit rental to “the author in respect of the original and copies of hiswork, to the performer in respect of fixations of his performance, to the phono-gram producer in respect of his phonograms, and to the producer of the firstfixation of a film in respect of the original and copies of his film.”608

The U.S. Copyright Act effectively grants phonorecord609 and computerprogram610 rental rights as exceptions from its first sale doctrine. To comewithin the phonorecord rental prohibition, the disposition by the phono-record owner must be without the authority of the owners of copyright inthe sound recording and of any musical works embodied in the phono-record; it must be “for the purposes of direct or indirect commercial advan-

603. WIPO Copyright Treaty Art. 7(2) (ii). See also TRIPs Agreement Art. 11.604. WIPO Copyright Treaty Art. 7(3).605. Council Directive 92/100/EEC (“Rental Right Directive”), Nov. 19, 1992, OJ L 346.See generally Paul Edward Geller, The Proposed EC Rental Right: Avoiding Some Berne In-

compatibilities, 14 E.I.P.R. 4 (1992).606. E.C. Rental Right Directive Art. 2(3). Article 3 provides that the Directive “shall be

without prejudice” to the rental provision of the E.C. Software Directive, Art. 4(c).607. E.C. Rental Right Directive Art. 1(2). Art 1(4) of the Directive provides: “The rights

referred to in paragraph 1 shall not be exhausted by any sale or other act of distribution oforiginals and copies of copyright works and other subject matter as set out in Article 2(1).”

608. E.C. Rental Right Directive Art. 2(1). On the E.C. Rental Right Directive generally,see Jörg Reinbothe & Silke von Lewinski, The E.C. Directive on Rental and Lending Rights andon Piracy (1993).

609. U.S. 1976 Copyright Act §109(b) (1) (A).610. U.S. 1976 Copyright Act §109(b) (1) (A).

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tage”; and it must be “by rental, lease, or lending, or by any other act orpractice in the nature of rental, lease, or lending.”611 Because the phono-record rental provision covers only phonorecords, not copies, it does notencompass the music or other sounds accompanying a motion picture orother audiovisual work.

The U.S. Act’s bar on unauthorized rental of copies of computer programsfor purposes of direct or indirect commercial advantage contains threeexceptions. First, the bar does not apply to “a computer program which isembodied in a machine or product and which cannot be copied during theordinary operation or use of the machine or product.”612 Second, the pro-hibition against unauthorized rentals does not apply to “a computer pro-gram embodied in or used in conjunction with a limited purpose computerthat is designed for playing video games and may be designed for otherpurposes.”613 Third, the Act exempts “the lending of a computer programfor nonprofit purposes by a nonprofit library,” so long as “each copy of acomputer program which is lent by such library has affixed to the packag-ing containing the program a warning of copyright in accordance withrequirements that the Register of Copyrights shall prescribe by regula-tion.”614 The provision also excuses transfers by and within nonprofit edu-cational institutions.

Public lending right. Historically, once a publisher sells a book to a library,the first sale or exhaustion doctrine liberates the copy from further copyrightcontrol. Even though the repeated borrowing of the book from the librarywill almost certainly erode the publisher’s revenues and the author’s royal-ties from sales to the public, neither will as a rule be entitled to compensa-tion for these noncommercial lending transactions. A handful of countries,mainly in Europe, have adopted one or another form of public lending rightaimed at giving authors, and in some cases publishers, a right of remunera-tion for library borrowings even though no money changes hands at the li-brary counter. Two philosophies variously animate the public lending right:a natural rights rationale tied to the standard premises of author’s rightdoctrine, and a social welfare rationale that “society should support writersbecause writing is a culturally beneficial activity.”615

611. U.S. 1976 Copyright Act §109(b) (1) (A).612. U.S. 1976 Copyright Act §109(b) (1) (B) (i).613. U.S. 1976 Copyright Act §109(b) (1) (B) (ii).614. U.S. 1976 Copyright Act §109(b) (2) (A).615. Jennifer M. Schneck, Closing the Book on the Public Lending Right, 63 N.Y.U. L. Rev.

878, 886 (1988).See generally Silke von Lewinski, Public Lending Right: General and Comparative Survey

of the Existing Systems in Law and Practice, 154 R.I.D.A. 3 (1992); H. Cohen Jehoram, ed.,Public Lending Right (1983); Perry Morrison & Dennis Hyatt, eds., Public Lending Right, 29Library Trends 565 (1981).

The United Kingdom implemented a public lending right in 1982.616 Theright, given to writers, illustrators, translators, and editors, is freely alien-able and covers the lending of books by general public libraries. The fundsdistributed under the right come from the government and are distributed,employing sampling procedures, in proportion to the number of times a par-ticular book was borrowed. Although the term of the right is the term ofcopyright, the system is not part of the copyright law, residing instead in itsown statute. As a consequence, the United Kingdom evidently views the rightas unencumbered by the national treatment obligations of the Berne andUniversal Copyright Conventions and, although British libraries doubtlesslend a great many volumes published in other countries, the rules of thesystem restrict compensation to U.K. subjects and European Union nation-als meeting specified requirements.617

The German public lending right, in contrast to the U.K. system and othernational systems, is lodged in the Copyright Act.618 As a consequence, pub-lic lending right funds are, under the national treatment principle, allocatednot only to German nationals but to all individuals whose works qualifyunder Germany’s international copyright relations. As in the United King-dom, the funds come from the government and—through an agreementbetween the federal government, the state governments, and four Germancollecting societies—distributions to authors are to be made by one or an-other of the collecting societies.619

The November 19, 1992, E.C. Rental Right and Lending Right Directiveestablished a Union-wide right of public lending,620 which, like the rental

616. United Kingdom, Public Lending Right Scheme 1982.On the British system, see John Sumsion, Setting Up Public Lending Right: A Report to the

Advisory Committee (1984); Brigid Brophy, A Guide to Public Lending Right (1983); JonathanGriffiths, Copyright and Public Lending in the United Kingdom, 9 E.I.P.R. 499 (1997).

617. United Kingdom, Public Lending Right Scheme 1982 §5.618. Germany, Copyright Act Art. 27.619. See Daniel Y. Mayer, Literary Copyright and Public Lending Right, 18 Case W. Res. J.

Int’l. L. 483, 494 (1986): “VG Wort is the German literary collecting society. It is the largestcollecting society, and participation in it is limited to authors who derive at least fifty percentof their income from freelance writing. VG Wissenschaft is the scientific publishers’ and au-thors’ society; GEMA is the composers’ collecting society . . . VG Wort and VG Wissenschaftshare about ninety-one percent of the funds; and the other three collecting societies haveformed a common body, the Zentralstelle Bibliothekstantieme (ZBT) to distribute their ninepercent of the funds.” [footnotes omitted].

620. E.C. Rental Right Directive Art 1(1) provides: “1. In accordance with the provisionsof this Chapter, Member States shall provide, subject to Article 5, a right to authorize or pro-hibit the rental and lending of originals and copies of copyright works, and other subject matteras set out in Article 2(1).” Art. 1(3) provides: “For the purposes of this Directive, ‘lending’means making available for use, for a limited period of time and not for direct or indirect eco-nomic or commercial advantage, when it is made through establishments which are acces-sible to the public.”

§5.4. Rights 259


right, will not be exhausted by any form of distribution, including sale. How-ever, Article 5 carves out a substantial privilege for member states to dero-gate from the public lending right: “Member States may derogate from theexclusive right provided for in Article 1 in respect of public lending, providedthat at least authors obtain a remuneration for such lending. Member Statesshall be free to determine this remuneration taking account of their culturalpromotion objectives.”621

Droit de suite (resale royalty right). Many countries have enacted someform of droit de suite, an economic right entitling visual artists to share inthe proceeds each time their works are resold.622 The resale right has a doublepremise. One is that works of fine art, whose value typically lies in an origi-nal or in a limited edition, are underrewarded by copyright whose econom-ics are driven by the prospect of mass distribution. The other is that artistswho sell their works at starvation prices should be allowed to share in thework’s increased value on resale. As Professor David Vaver has observed, “Intruth, the droit de suite is exceptional in a scheme either of copyright orauthor’s right: it does not relate to the use of the work, but rather to the ob-taining of a share of the profits on resale. Nor is it a right to exclude or toreceive compensation on use.”623

France, the birthplace of droit de suite, grants “[a]uthors of graphic andthree-dimensional works” an inalienable right to share in the sales price oftheir works, whether sold at public auction or through private dealers.624

Under Article 2(1) of the Directive, “[t]he exclusive right to authorize or prohibit rental andlending shall belong: to the author in respect of the original and copies of his work, to theperformer in respect of fixations of his performance, to the phonogram producer in respectof his phonograms, and to the producer of the first fixation of a film in respect of the originaland copies of his film. For the purposes of this Directive, the term ‘film’ shall designate a cin-ematographic or audiovisual work or moving images, whether or not accompanied bysound.”

621. E.C. Rental Right Directive Art. 5(1).Article 5(2) of the Directive provides, “When Member States do not apply the exclusive lend-

ing right provided for in Article 1 as regards phonograms, films and computer programs, theyshall introduce, at least for authors, a remuneration,” and Article 5(3) provides, “MemberStates may exempt certain categories of establishments from the payment of the remunera-tion referred to in paragraphs 1 and 2.”

622. See generally Report of the Register of Copyrights, Droit de Suite: The Artist’s ResaleRoyalty (1992); Liliane de Pierredon-Fawcett, The Droit de Suite in Literary and Artistic Prop-erty: A Comparative Law Study (1991); Paul Katzenberger, “The ‘Droit de Suite’ in CopyrightLaw,” 4 I.I.C. 361, 378–379; (1973) Wilhelm Nordemann, The “Droit de Suite” in Article 14terof the Berne Convention and in the Copyright Law of the Federal Republic of Germany, 12Copyright 337, 340 (1977).

623. David Vaver, The National Treatment Requirements of the Berne and Universal Copy-right Conventions, 17 I.I.C. 715, 719 (1986).

624. France, Intellectual Property Code Art. L 122-8. See generally Report of the Registerof Copyrights, Droit de Suite: The Artist’s Resale Royalty 22–24 (1992).

Under the Intellectual Property Code, the artist’s share on resale is 3 per-cent of the sale proceeds above a prescribed level, even if the work has fallenrather than risen in value. The right lasts for the statutory term of copyrightand is descendible.625

The 1948 Brussels Text introduced the concept of droit de suite into the BerneConvention.626 Article 14ter(1) of the Paris Text provides: “The author, or afterhis death the persons or institutions authorized by national legislation, shall,with respect to original works of art and original manuscripts of writers andcomposers, enjoy the inalienable right to an interest in any sale of the worksubsequent to the first transfer by the author of the work.”627 Although thelanguage is categorical, Article 14ter(2) subjects the right to a condition ofmaterial reciprocity.628 Consequently, the right is an exception to Berne’s gen-eral principle of national treatment and “is optional in the sense that Unioncountries are free to decide whether or not to introduce it and it can only beclaimed if, and to the extent that, it forms part of the law where it is claimed.”629

The fact that the terms of compensation under droit de suite differ fromcountry to country, and that many countries have no resale royalty systemat all, creates an incentive for sellers to conduct their activities through artgalleries and auction houses in countries where resale royalties are low ornonexistent. In an important 1994 decision,630 the German Federal SupremeCourt ruled that, for the German Copyright Act’s droit de suite provision toapply, the resale in issue must have a sufficient connection to German terri-tory, and that the auction in England of three works by Joseph Beuys lackedthe necessary connection even though both the artist and the seller wereGerman citizens, the auction contract was negotiated in Germany, and theworks were delivered in Germany to the auction house’s subsidiary there.Relying on general principles of territoriality in copyright infringementcases,631 the court observed that “[t]he requirement deriving from the terri-

625. See generally Report of the Register of Copyrights, Droit de Suite: The Artist’s ResaleRoyalty 24–25 (1992).


627. Berne Convention, 1971 Paris Text, Art. 14ter(1).628. Article 14ter(3) provides: “The procedure for collection and the amounts shall be

matters for determination by national legislation.”629. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 91 (1978).See “Les Parallèles,” German Federal Court of Justice, June 23, 1978 (Case No. I ZR 112/

77), 10 I.I.C. 769 (1979) (Holding that when Berne country of origin provides droit de suite,the Convention requires national treatment under protecting country’s droit de suite eventhough terms of protection in country of origin differ substantially).

630. Folgerecht bei Auslandsbezug (“Droit de suite with Respect to Sales Abroad”) Ger-man Federal Supreme Court, June 16, 1994 (Case No. I ZR 24/92), 26 I.I.C. 573 (1995).

631. See §3.1.2, above.

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toriality principle that for German law to apply to acts of exploitation theremust be a connection to Germany also applies to resales. That the latter istreated in the same way is supported by the legal nature of droit de suite de-riving from the act of resale.”

b. exploitation in intangible form (performance,display, recitation, broadcasting, communicationto the public)

Some national legislation comprehensively defines the right to exploit copy-righted works through intangible means as a general right to communicate awork publicly,632 while other legislation employs specific terms, such as rightsof public performance, recitation, and broadcasting.633 The Universal Copy-right Convention inclines toward the first approach in prescribing the exclu-sive right to authorize “public performance and broadcasting,”634 while theBerne Convention tends toward the second approach in itemizing discreterights to perform,635 recite,636 and broadcast.637 The U.S. Copyright Act takesan intermediate approach, assimilating broadcasts and recitation to its publicperformance right638 but prescribing a discrete public display right.639 Theright to communicate a work to the public, introduced by the WIPO CopyrightTreaty, both overlaps Berne’s guarantees and extends their reach.640 Neitherthe Berne Convention nor the U.C.C. requires a discrete display right for worksof visual art, and only a few countries give this right to visual artists.641

One requirement underpins all formulations of the right to exploit worksthrough intangible means: the exploitation must be public. Although varia-tions in the term appear from country to country, most appear to excludefrom the definition of “public” those uses that take place within the confinesof a circle of family and friends.642 Emerging communication technologies

632. See, e.g., Germany, Copyright Act Art. 15(2); France, Intellectual Property Code Art.L 122-2.

633. See, e.g., Canada, Copyright Act §3(1); Japan, Copyright Act Arts. 22–26; United King-dom, Copyright, Designs and Patents Act 1988 §16.

634. Universal Copyright Convention, 1971 Paris Text, Art. IVbis(1).635. Berne Convention, 1971 Paris Text, Art. 11.636. Berne Convention, 1971 Paris Text, Art. 11ter.637. Berne Convention, 1971 Paris Text, Art. 11bis.638. U.S. 1976 Copyright Act §106(4).639. U.S. 1976 Copyright Act §106(5).640. WIPO Copyright Treaty Art. 8.641. One exception is Germany, Copyright Act Arts. 18, 19. See generally Cristina Vincent

Lòpez, New Aspects of the Exhibition Right: Comparative Analysis, 179 R.I.D.A. 78 (1999);Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986, 453–455 (1987).

642. See, e.g., France, Intellectual Property Code Art. L 122–5; Germany, Copyright ActArt. 15(3); U.S. 1976 Copyright Act §101 (definition of “publicly”).

that enable individuals to receive performances of works on command in theprivacy of their homes have raised new and difficult questions about themeaning of “public” in this context. If it is a public performance, or a com-munication to the public, to broadcast a musical composition to thousandsof home radios, is it also a public performance or communication when anInternet webcaster makes musical works available, one at a time, on indi-vidual demand, to millions of listeners, each at their own computer? A prin-cipal aim of Article 8 of the WIPO Copyright Treaty is to bring such perfor-mances within copyright control.

An extensive case law has developed around the question of what is “pub-lic” for purposes of the communication, performance, recitation, broadcast,and display rights. Although this body of doctrine is indecisive at its edges,the doctrinal variations are not connected to the biases of one copyright tra-dition or another. French courts, for example, have divided on whether thetransmission of radio and television programming to hotel guest rooms con-stitutes a communication to the public,643 and the Italian Court of Cassationhas interpreted Article 15 of the Copyright Act to exempt the transmissionof television programs to bedrooms of a medical clinic.644 The German Fed-eral Court of Justice has ruled that retransmitting a broadcast to hospitalrooms infringes copyright.645

Although the U.S. Copyright Act does not define the pivotal term “public,”it does provide that to perform or display a work “publicly” means, in part,“to perform or display it at a place open to the public or at any place where asubstantial number of persons outside of a normal circle of a family and itssocial acquaintances is gathered.”646 Under this definition, a place is “opento the public” if members of the public are free to enter without restrictions,other than restrictions such as an admission fee, that are imposed on thepublic at large. Performances in semipublic places, such as clubs, lodges,factories, summer camps, and schools, with more personalized conditionson entry, may also constitute public performances. One decision in theUnited States647 held that it infringed the public performance right for in-dividuals to play videocassettes in private booths they had rented from theowner of a videocassette rental store, while another648 held that, since ahotel room is a private rather than a public place, it did not constitute public

643. André Françon, News from France, 165 R.I.D.A. 94, 124 (1995).644. Mario Fabiani, News from Italy, 161 R.I.D.A. 160, 182 (1994).645. G.E.M.A. v. Hospital L in A., German Federal Supreme Court of Justice, June 9, 1994,

165 R.I.D.A. 302 (1995).646. U.S. 1976 Copyright Act §101.647. Columbia Pictures Industries, Inc. v. Aveco, Inc., 800 F.2d 59 (3d Cir. 1986).648. Columbia Pictures Industries, Inc. v. Professional Real Estate Investors, Inc., 866 F.2d

278 (9th Cir. 1989). But cf. On Command Video Corp. v. Columbia Pictures Indus., 777 F. Supp.787 (N.D. Cal. 1991).

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performance for a hotel to rent videodiscs to guests for performance onconsoles in their rooms.

(i) Public Performance. Article 11(1) of the 1971 Berne Paris Text ensuresauthors of “dramatic, dramatico-musical and musical works” the exclusiveright to authorize “(i) the public performance of their works, including suchpublic performance by any means or process”; and “(ii) any communica-tion to the public of the performance of their works.”649 Article 11(2) addsthat authors of dramatic or dramatico-musical works “shall enjoy, duringthe full term of their rights in the original works, the same rights with re-spect to translations thereof.”650

As a rule, performing a work means representing it by sight or sound orboth. The representation may be by live actors or singers, and by any meansor process. The second part of the right, covering a communication of theperformance to the public, encompasses any technology by which a perfor-mance can be transmitted other than broadcasting. Wired transmission isone example.651

Berne’s prescription in Article 14(1) (ii) of minimum performance rights foruse in cinematographic works encompasses all forms of literary and artisticworks, not just dramatico-musical and dramatic musical works, and the treatyguarantees authors the exclusive right to authorize the “public performanceand communication to the public by wire” of their works as adapted or repro-duced in a cinematographic production.652 Article 14bis(1) adds that “[t]heowner of copyright in a cinematographic work shall enjoy the same rights asthe author of an original work,” including, among others, the rights of publicperformance and communication described in Article 14.653

Article 15 of the German Copyright Act divides economic rights betweenthose involving exploitation in material form (reproduction, distribution,exhibition) and those involving the right to communicate a work to the publicin nonmaterial form. Article 15(2) encompasses several categories of con-duct within the broad right of communication to the public: the right of reci-tation, performance, and presentation; the right of broadcasting; the rightof communication by means of video or audio recordings; and the right ofcommunication of broadcasts.

The U.S. Copyright Act, which gives copyright owners of all classes ofworks other than sound recordings and pictorial, graphic, and sculpturalworks the exclusive right to perform and to authorize others to perform their

649. Berne Convention, 1971 Paris Text, Art. 11(1).650. Berne Convention, 1971 Paris Text, Art. 11(2).651. See WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic

Works (Paris Act, 1971) 65 (1978).652. Berne Convention, 1971 Paris Text, Art. 14(1) (ii).653. Berne Convention, 1971 Paris Text, Art. 14bis(1).

works publicly, categorizes the conduct encompassed under the single con-cept of “performance.”654 The Act defines “perform” in the most encompass-ing terms. To perform a work means “to recite, render, play, dance, or act it,either directly or by means of any device or process or, in the case of a mo-tion picture or other audiovisual work, to show its images in any sequenceor to make the sounds accompanying it audible.”655 The legislative historyof the Act suggests the definition’s broad sweep: “a singer is performing whenhe or she sings a song; a broadcasting network is performing when it trans-mits his or her performance (whether simultaneously or from records); a localbroadcaster is performing when it transmits the network broadcast; a cabletelevision system is performing when it retransmits the broadcast to itssubscribers; and any individual is performing whenever he or she plays aphonorecord embodying the performance or communicates the performanceby turning on a receiving set.”656

(ii) Recitation. Some national laws assimilate the public recitation of liter-ary works such as poems and stories into a general public performance right,while others distinguish between literary works, on the one hand, and dra-matic, musical or dramatico-musical works on the other, granting a rightof recitation to one and a performance right to the other. Little consequenceturns on the distinction, since both approaches satisfy Article 11ter of theBerne Paris Text, which ensures authors of literary works “the exclusive rightof authorizing: (i) the public recitation of their works, including such pub-lic recitation by any means of process”; and “(ii) any communication to thepublic of the recitation of their works.”657 As in the case of the performanceright, the Berne Paris Text adds that “[a]uthors of literary works shall enjoy,during the full term of their rights in the original works, the same rights withrespect to translations thereof.”658

(iii) Broadcasting. The performance right—and, where applicable, the reci-tation right—historically presupposed that the audience would be at the sitewhere the performance or recitation took place. Article 11bis of the BerneParis Text deals with more distant audiences, from those reached throughrelatively rudimentary devices such as amplifiers and loudspeakers659 to

654. U.S. 1976 Copyright Act §106(4). Though excluded from the general public perfor-mance right, sound recordings have, under amendments passed in 1995, received a limitedpublic performance right in the context of digital audio transmissions. U.S. 1976 CopyrightAct §106(6).

655. U.S. 1976 Copyright Act §101.656. U.S. House Report, 63.657. Berne Convention, 1971 Paris Text, Art. 11ter(1).658. Berne Convention, 1971 Paris Text, Art. 11ter(2).659. Berne Convention, 1971 Paris Text, Art. 11bis(1) (iii).

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broadcast audiences,660 to audiences for rebroadcasts and wire transmis-sions.661 Article 11bis(1) (i) requires member countries to grant authors ofliterary and artistic works the exclusive right to authorize “the broadcast-ing of their works or the communication thereof to the public by any othermeans of wireless diffusion of signs, sounds or images.”662 It is central to thisright, as to the other aspects of the broadcasting right, that some form ofreceiver mediate between the performer and the audience.663 But, for con-duct to fall within the right, it is necessary only that signals be emitted; “it isimmaterial whether or not they are in fact received.”664 Thus, even if nosingle member of the public views or hears the signal, it will nonethelessconstitute a broadcast to the public.

Berne Article 11bis(1) (ii) covers retransmission of broadcast signals andguarantees the exclusive right to authorize “any communication to the pub-lic by wire or by rebroadcasting of the broadcast of the work, when thiscommunication is made by an organization other than the original one.”665

Communication “by wire” and “rebroadcasting” encompass cable and com-munity antenna television systems along with other retransmission media.By lodging this right under a separate broadcast right, rather than under ageneralized performance right, the Berne Convention sidesteps the histori-cally difficult question whether cable and community antenna carriage ismore closely akin to performance or to reception, while at the same timesubjecting retransmission to definitive liability, subject to local conditionssuch as equitable remuneration on exercise of the right.666

Article 11bis (1)(iii) covers the right to authorize “the public communica-tion by loudspeaker or any other analogous instrument transmitting, bysigns, sounds or images, the broadcast of the work.”667 This clause wouldencompass a radio playing background music in a store or a television show-ing a sports event in a bar.668 Although the author of the broadcast workpresumably obtained economic consideration for licensing the broadcast,commonly applied rules of copyright contract interpretation will treat himas having withheld all rights not expressly conveyed to his transferee and,

660. Berne Convention, 1971 Paris Text, Art. 11bis(1) (i).661. Berne Convention, 1971 Paris Text, Art. 11bis(1) (ii).662. Berne Convention, 1971 Paris Text, Art. 11bis(1) (i). See generally Robert Dittrich, On

the Interpretation of Article 11bis(1) and (2) of the Berne Convention, 19 Copyright 294 (1982).663. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 67 (1978).664. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 66 (1978).665. Berne Convention, 1971 Paris Text, Art. 11bis(1) (ii).666. Berne Convention, 1971 Paris Text, Art. 11bis(2).667. Berne Convention, 1971 Paris Text, Art. 11bis(1) (iii).668. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 68 (1978).

consequently, as retaining control of this market himself unless he otherwiseexpressly indicated in his instrument of transfer.669

Although legislation in most countries encompasses the full range ofbroadcasting activities contemplated by the Berne Paris Act, differencesexist from country to country on how the rights are divided, particularly asbetween wireless and wired transmission. The French Intellectual PropertyCode makes performance consist of “the communication of the work to thepublic by any process whatsoever,” including “teledifussion,” which it de-fines as “distribution by any telecommunication process of sounds, images,data and messages of any kind.”670 The Code’s formulation of the term “per-formances” is sufficiently wide to include cablecasting and digital transmis-sion over the Internet, so long as they are “to the public.”671 The general rightof communication to the public under the German Copyright Act672 encom-passes not only recitation, performance, and presentation,673 but also wire-less or wired transmissions674 and retransmissions.675 The British legislationmakes it a restricted act to broadcast a work or include the work in a cableprogramme service in the case of a literary, dramatic, musical, or artisticwork, a sound recording or film, or a broadcast or cable program.676

The second branch of the U.S. Copyright Act’s definition of “public” per-formance or display encompasses the transmission or other communicationof a performance or display of a work to a public place “or to the public, bymeans of any device or process, whether the members of the public capableof receiving the performance or display receive it in the same place or in sepa-rate places and at the same time or at different times.”677 The reference tomembers of the public “capable of receiving” the performance in “separateplaces” leaves no doubt that a performance made available through trans-mission to the public at large is “public” even though the recipients “are notgathered in a single place, and even if there is no proof that any of the poten-tial recipients was operating his receiving apparatus at the time of the trans-mission.”678

According to the WIPO Guide to the Berne Convention, “a difference of opin-ion exists on whether transmission of a signal to a communications satellite

669. See §5.2.2.1.a, above.670. France, Intellectual Property Code Art. 122-2.671. See Thierry Desurmont, Legal Classification of Digital Transmission, 170 R.I.D.A. 55

(1996).672. Germany, Copyright Act Art. 15(2).673. Germany, Copyright Act Art. 19.674. Germany, Copyright Act Art. 20.675. Germany, Copyright Act Art. 22.676. United Kingdom, Copyright, Designs and Patents Act 1988 §20. Section 7 of the Act

defines “cable programme” and “cable programme service.”677. U.S. 1976 Copyright Act §101.678. U.S. House Report, 64–65.

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for purposes of public distribution through an earth station constitutes broad-casting within the meaning of this Article.”679 The 1993 E.C. Satellite andCable Directive680 requires, in general, that member states provide “an ex-clusive right for the author to authorize the communication to the public bysatellite of copyrighted works,” subject to prescribed conditions.681 The Di-rective provides that the “communication to the public by satellite” occursnot where the signal is received but, rather, “solely in the Member Statewhere, under the control and responsibility of the broadcasting organization,the programme-carrying signals are introduced into an uninterrupted chainof communication leading to the satellite and down towards the earth.”682

The Directive also requires member states to extend copyright control overcable retransmission made into their territory from other member states.683

Unlike other copyright systems that impose compulsory licensing on cableretransmission, such as the United States, the Directive generally requiresprivate licensing for cable retransmissions under the auspices of the relevantcollecting societies.684

(iv) Communication to the Public. Articles 11, 11bis, and 11ter of the BerneParis Text have provided an adequate structure for balancing author and con-sumer interests within the context of most twentieth-century technologies. Butthese provisions, and the national legislation of a great many countries, havefallen short of resolving the question of whether newer technologies enablinginteractive, on-demand transmissions, most notably on the Internet, comewithin copyright control. The issue under Berne is not whether such uses con-stitute performance, but whether they are public. Although the Internet maybe accessible to publics as large as those reached by broadcast radio and tele-vision, access to the Internet or other interactive facility will often entail trans-mission of a selected work to an individual user on command, so that it is re-ceived only by that single user, typically in the privacy of his or her home.


680. Council Directive 93/83/EEC (“Satellite and Cable Directive”) September 27, 1993,OJ L 248, Art. 2.

681. E.C. Satellite and Cable Directive Art. 2. Article 1(1) of the Directive defines “satel-lite” as “any satellite operating on frequency bands which, under telecommunications law,are reserved for the broadcast of signals for reception by the public or which are reserved forclosed, point-to-point communication. In the latter case, however, the circumstances in whichindividual reception of the signals takes place must be comparable to those which apply inthe first case.” Chapter III of the Directive covers cable retransmission.

682. E.C. Satellite and Cable Directive Art. 1(2) (b). According to Recital 14 to the Direc-tive, “such a definition is necessary to avoid the cumulative application of several nationallaws to one single act of broadcasting.”

683. E.C. Satellite and Cable Directive Art. 8(1).684. E.C. Satellite and Cable Directive Art. 9.

Article 8 of the 1996 WIPO Copyright Treaty provides that “authors of liter-ary and artistic works shall enjoy the exclusive right of authorizing any com-munication to the public of their works, by wire or wireless means, includingthe making available to the public of their works in such a way that membersof the public may access these works from a place and at a time individuallychosen by them.”685 The first part of this formulation effectively restates theexisting coverage of the Berne Paris Text and of most national legislation. It isthe second part of the provision, called by a trio of commentators one of thetreaty’s “main achievements,”686 that charts new territory by securing theright to control individualized, interactive uses of copyrighted works.

In the United States, transmission to individual members of the public isencompassed by the second branch of the definition of “publicly” perform:“whether the members of the public capable of receiving the performance ordisplay receive it in the same place or in separate places and at the same timeor at different times.”687 The legislative history behind the Act appears to havecontemplated then untapped storage and delivery technologies in its observa-tion that a performance will be public when the transmission is capable ofreaching different recipients at different times, as in the case of sounds or imagesstored in an information system and capable of being performed or displayedat the initiative of individual members of the public.688 Relying on this legisla-tive history, one court held that it constituted public performance to transmitsignals over a wired system that connected hotel guest rooms to a centrallylocated console that contained motion picture videocassettes and enabledguests to view the motion pictures when they chose.689

(v) Exhibition (Display) to the Public. A discrete right to exhibit or displayliterary or artistic works to the public has been only partially established innational copyright legislation.690 The German Copyright Act defines rightof exhibition as “the right to place on public view the original or copies of anunpublished work of fine art or of an unpublished photographic work.”691

685. WIPO Copyright Treaty Art. 8. Article 8 is, by its terms, “[w]ithout prejudice to theprovision of Articles 11(1) (ii), 11bis(1) (i) and (ii), 11ter (1) (ii), 14 (i) (ii) and 14bis (1) ofthe Berne Convention.”

686. Jörg Reinbothe, Maria Martin-Prat, & Silke von Lewinski, The New WIPO Treaties:A First Resume, 19 E.I.P.R. 171, 173 (1997).

687. U.S. 1976 Copyright Act §101.688. House Report No. 83, 90th Cong., 1st Sess. 29 (1967).689. On Command Video Corp. v. Columbia Pictures Industries, 777 F.Supp. 787 (N.D. Cal.

1991).690. For an exhaustive analysis of the exhibition right, see Vladimir Duchemin, Thoughts

on the Exhibition Right, 156 R.I.D.A. 14 (1993).691. Germany, Copyright Act Art. 18. Article 19(4) of the Act prescribes a right of presenta-

tion to make specified visual works “perceivable to the public by means of technical devices,”but not including “the right to make the broadcast of such rights perceivable to the public.”

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In France, an argument has been made that the legislative history behindthe Law of July 3, 1985, supports the position that French copyright laweffectively assimilates an exhibition right into the performance right.692

Canada’s Copyright Act expressly prescribes an exhibition right, grantingan exclusive right to present an artistic work, other than a map, chart, orplan, at a public exhibition for a purpose other than sale or hire.693 In somecountries, artists may also receive compensation for exhibition of their worksthrough noncopyright arrangements instituted by national or local govern-ments comparable to the public lending right for authors.694

The U.S. Copyright Act grants an exclusive right to display, and to autho-rize others to display, publicly any “literary, musical, dramatic, and choreo-graphic works, pantomimes, and pictorial, graphic, or sculptural works, in-cluding the individual images of a motion picture or other audiovisualwork.”695 The Act defines the “display” of a work as meaning “to show a copyof it, either directly or by means of a film, slide, television image, or any otherdevice or process or, in the case of a motion picture or other audiovisual work,to show individual images nonsequentially.”696 The display right encompassesshowings both of an original work (either directly, as by exhibition in a mu-seum, or indirectly, as by a showing on television) and of reproductions of thework, such as by transmitting stored text from a database to a computer screenor by projecting individual images on a screen. The right is of limited value tofine artists, however, since the owner of a particular copy of a work, or any-one authorized by the owner, is privileged to display the copy publicly.697

c. secondary (contributory and vicarious) liability

Copyright principles in most countries will, under prescribed conditions, im-pose secondary liability on those who, though not directly infringing copyright,have materially contributed to the infringement. One practical aspect of sec-ondary liability is that, in countries whose legislation does not confer an ex-clusive distribution or importation right, secondary liability can bring theactivities of distributors, importers, and retailers within copyright control.Similarly, if the direct infringer is outside the court’s jurisdiction or is withoutthe resources to answer a judgment, an action against a related party may bethe copyright owner’s most effective avenue for relief. As widely dispersed usesof copyrighted works such as library photocopying, home videotaping, and

692. Vladimir Duchemin, Thoughts on the Exhibition Right, 156 R.I.D.A. 14, 44 (1993).693. Canada, Copyright Act §3(1)(g).694. Vladimir Duchemin, Thoughts on the Exhibition Right, 156 R.I.D.A. 14, 48–52 (1993).695. U.S. 1976 Copyright Act §106(5).696. U.S. 1976 Copyright Act §101.697. U.S. 1976 Copyright Act §109(c).

Internet copying become more common, and as the cost and inconvenienceof negotiating with individual direct infringers grow too high, copyright own-ers may find that their only hope for relief lies in an action against the relatedparty—library, videocassette recorder manufacturer, Internet service pro-vider—whose services or products contributed to the direct infringement.

The British Copyright, Designs and Patents Act makes it an act of primary,direct infringement for one without license from the copyright owner notonly to do an act restricted by copyright, but also to authorize another to doany restricted act.698 In addition, a defendant may be held secondarily liableunder the Act for importing, possessing, or dealing with an infringing copy;699

providing means for making infringing copies;700 permitting use of premisesfor an infringing performance;701 and providing the apparatus for an infring-ing performance.702 As a rule in the case of secondary liability, the copyrightowner, in order to prevail, must show that the defendant knew or had rea-son to know of the underlying infringement.

In the United States, unlike the United Kingdom, the authorization rightis the source of secondary liability and encompasses two distinct but over-lapping theories: contributory infringement and vicarious liability. Contribu-tory infringement occurs when “one who, with knowledge of the infringingactivity, induces, causes or materially contributes to the infringing conductof another.”703 Vicarious liability arises when a defendant’s “right and abil-ity to supervise” the infringing activity “coalesce with an obvious and directfinancial interest in the exploitation of copyrighted materials—even in theabsence of actual knowledge that the copyright monopoly is being im-paired.”704 For a defendant to be held contributorily or vicariously liable, adirect infringement must have occurred.705 As an important limitation oncontributory infringement liability for the sale of equipment used in copy-right infringement, the U.S. Supreme Court has ruled in a case involvingvideocassette recorders that “the sale of copying equipment, like the sale ofother articles of commerce, does not constitute contributory infringement ifthe product is widely used for legitimate unobjectionable purposes. Indeed,it need be merely capable of substantial noninfringing uses.”706

698. United Kingdom, Copyright, Designs and Patents Act 1988 §16(2).699. United Kingdom, Copyright, Designs and Patents Act 1988 §§22, 23.700. United Kingdom, Copyright, Designs and Patents Act 1988 §24.701. United Kingdom, Copyright, Designs and Patents Act 1988 §25.702. United Kingdom, Copyright, Designs and Patents Act 1988 §26.703. Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162

(2d Cir. 1971).704. Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963).705. See, e.g., Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 434–442

(1984). See generally Paul Goldstein, 2 Copyright §6.0 (2d ed. 1996).706. Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984).

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Professor Cornish provides several examples of situations in which sec-ondary liability has and has not been imposed in common law countries.“[P]eople who organise public entertainments by hiring musicians as inde-pendent contractors are likely to be authorising or permitting infringementif they simply leave the choice of music to the musicians. Accordingly theyought to procure an appropriate license from the Performing Right Societythemselves or require the musicians to do so. Where the defendant is not theorganiser of the entertainment, but only, for instance, the owner of the hall,he is unlikely to be held culpable if he is simply ‘indifferent’ to the choice ofmusic. In other fields, authorising may also occur by implication. A personwho transfers the serial rights in a book authorises their publication in thatform, since the specific intent is apparent. An Australian university was heldto have authorised infringement by allowing library readers to use its copy-ing machine, without giving precise information about the limits to copy-ing within the copyright legislation and without attempting any supervisionto prevent infringement: the degree of indifference was too blatant to escapeliability. On the other hand, those who provide the copying machinery orthe material for home taping will rarely be found to have the necessary con-trol over what is then done, to be ‘authorised.’ The manufacturer of a twin-deck cassette recorder did not authorise infringement of particular copy-rights, even though he advertised the capabilities of his product, since he alsodrew attention to copyright obligations.”707

The civil law tradition of secondary liability is somewhat less defined thansecondary liability in the common law tradition, but no less encompassing.Contributory and vicarious liability under German law stems from provisionsof the German Civil Code imposing joint and vicarious liability on tortfeasors.708

Secondary liability has been imposed under German law on such activities aspromoting a concert at which copyrighted works are performed without au-thority, operating a restaurant or dance hall where music is performed by livebands or jukebox, and manufacturing or selling copying equipment, at least ifthe equipment lacks any substantial noninfringing use.709

Digital technologies for the storage, retrieval, and transmission of copy-righted works have intensified the conflict between copyright owners, con-cerned over their inability to police infringing activities in this new market-place, and service providers, such as telephone companies and search services,that provide the infrastructure for this marketplace but are unable to moni-tor and control infringing activities of their subscribers. Amendments to the

707. William Cornish, Intellectual Property 369 (3d ed. 1996) (footnotes omitted).708. German Civil Code §§830, 831 (Simon L. Goren trans. 1994). See generally B. S.

Markesinis, The German Law of Torts, chap. 3 (3d ed. 1994).709. Alexander Liegl, Andreas Leupold, & Peter Bräutigan, Germany, in Susan Cotter, ed.,

Copyright Infringement 119, 162–164 (1997). See also Imprimatur, Liability for On-Line In-termediaries 14–15 (1997).

U.S. Copyright Act in 1998 aim to reconcile the competing interests of copy-right owners and service providers by carving out several safe harbors tobalance the need of copyright owners to obtain effective relief against theneed of service providers to pursue their largely noninfringing activitiesunencumbered by costly monitoring burdens.710 The legislation immunizesthe qualifying activities of defined “service providers” from otherwise avail-able monetary relief and limits the availability of injunctive relief in pre-scribed circumstances. The provision extends this protection to five catego-ries of online activity: transitory digital network communications, systemcaching, storage of information at the direction of users, use of informationlocation tools, and specified activities of nonprofit educational institutions.

In the European Union, Articles 12–14 of the Electronic Commerce Direc-tive711 limit the liability of intermediary service providers for three classes of“information society service.”712 Unlike the U.S. legislation, the Directiveapplies to a wide range of potential liability, not just copyright liability. Thethree classes of service covered by the Directive generally correspond to theU.S. legislation’s safe harbors for transitory network communication, sys-tem caching, and storage of information at the direction of users: “mere con-duit service,” for which the service provider does not select the recipient ofthe transmission or select or modify the information contained in the trans-mission;713 caching,” that is, the automatic, intermediate, and temporarystorage of information for its more efficient onward transmission to otherrecipients;714 and “hosting”—“the storage of information provided by a re-cipient of the service.”715 Unlike the U.S. legislation, the Directive makes nospecific provision for information location tools or for activities of nonprofiteducational institutions. The Directive qualifies each of its three limitationson service provider liability by providing that they “shall not affect the pos-sibility for a court or administrative authority, in accordance with MemberStates’ legal systems, of requiring the service provider to terminate or pre-

710. The Online Copyright Infringement Liability Limitation Act, enacted as Title II of theDigital Millennium Copyright Act, Pub. Law 105-304, 112 Stat. 2860, 2877 (Oct. 28, 1998),is codified as section 512 of the 1976 Copyright Act.

711. Directive on certain legal aspects of Information Society services, in particular elec-tronic commerce, in the Internal Market, 2000/31/EC. See generally, Rosa Julià-Barceló, On-line Intermediary Liability Issues: Comparing E.U. and U.S. Frameworks, 22 E.I.P.R. 105(2000).

712. Article 2 of the Directive defines “information society services” by reference to thedefinition of “services” in Article 1(2) of Directive 98/34EC, as amended by Directive 98/48/EC: “any Information Society service, that is to say, any service normally provided for remu-neration, at a distance, by electronic means and at the individual request of a recipient of ser-vices.”

713. Electronic Commerce Directive Art. 12(1).714. Electronic Commerce Directive Art. 13(1).715. Electronic Commerce Directive Art. 14(1).

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vent an infringement.”716 Article 15 bars member states from imposing ageneral obligation on service providers, when providing conduit, caching orhosting services, “to monitor the information which they transmit or store,”or “actively to seek facts or circumstances indicating illegal activity.”717

§5.4.1.2 Neighboring Rights

The United States and, to a somewhat lesser extent, the United Kingdom718

assimilate the rights granted to performers, phonogram producers, andbroadcasters to the rights they grant to authors of literary and artistic works,while Germany and France protect these rights under the separate rubric ofneighboring rights (Leistungsschutzrechte in German, droits voisin in French).The substantive rights are, however, closely comparable across countries.One reason is that legislation in common law countries sometimes imposeslimitations on these rights that it does not impose on traditional literary andartistic works. The U.S. Copyright Act, for example, withholds the publicperformance right from sound recordings except for rights in specified digi-tal performances.719 At the same time, the civil law countries, particularlyas spurred by E.C. Directives, have increased the protection they grant toneighboring rights to a point at which these rights often approach copyrightin rigor and effect.

The principal treaties that govern one or more of the neighboring rightsin performances, phonograms, and broadcasts are the International Conven-tion for the Protection of Performers, Producers of Phonograms and Broad-casting Organisations, commonly called the Rome Convention,720 Article 14of the TRIPs Agreement,721 and the WIPO Performances and PhonogramsTreaty.722 As a rule, the limitations permitted by these treaties track the limi-tations permitted by the Berne Convention. For example, Article 15(1) of the

716. Electronic Commerce Directive Arts. 12(3), 13(3), 14(3). In the case of the hostinglimitation, Article 14(3) adds the further qualification that the limitation does not “affect thepossibility for Member States of establishing procedures governing the removal or dissablingof access to information.”

717. Electronic Commerce Directive Art. 15(1).718. Part I of the 1956 U.K. Copyright Act protected traditional literary and artistic works;

Part II, essentially a counterpart to continental neighboring rights, protected sound record-ings, broadcasts and typographical formats. The 1988 Copyright, Designs and Patents Actsubstantially, but by no means completely, assimilated neighboring rights subject matter tocopyright.

719. U.S. 1976 Copyright Act §106(4), (6).720. On the scope of subject matter protected by this treaty, see §2.2.1, above.721. On the scope of subject matter protected by this treaty provision, see §2.3.2, above.722. On the scope of subject matter protected by this treaty, see §2.2.3, above. On the cov-

erage of the Geneva Phonograms Convention, see §2.2.2, above.

Rome Convention permits exceptions for four categories of uses commonlyexempted or subjected to statutory license in Berne countries: “(a) privateuse; (b) use of short excerpts in connexion with the reporting of currentevents; (c) ephemeral fixation by a broadcasting organisation by means ofits own facilities and for its own broadcasts; (d) use solely for the purposesof teaching or scientific research.”723 Further, Article 15(2) of the RomeConvention allows any member country to “provide for the same kinds oflimitations with regard to the protection of performers, producers of phono-grams and broadcasting organisations, as it provides for, in its domestic lawsand regulations, in connexion with the protection of copyright in literary andartistic works.”724

Article 16 of the WIPO Performances and Phonograms Treaty adopts theformula of Rome Article 15(2), with the added restriction that “ContractingParties shall confine any limitations of or exceptions to rights provided for inthis Treaty to certain special cases which do not conflict with a normal exploi-tation of the performance or phonogram and do not unreasonably prejudicethe legitimate interests of the performer or of the producer of phonograms.”725

Article 14(6) of the TRIPs Agreement incorporates the Rome formula for limi-tations by providing that “[a]ny member may, in relation to the rights con-ferred under paragraphs 1–3 above [protecting performers, phonogram pro-ducers and broadcasting organizations, respectively], provide for conditions,limitations, exceptions and reservations to the extent permitted by the RomeConvention. However, the provisions of Article 18 of the Berne Convention(1971) [dealing with retroactivity] shall also apply mutatis mutandis, to therights of performers and producers of phonograms in phonograms.”726

a. rights of performers

National legislation on performers’ rights stems from such various legalsources as rules on unfair competition and unjust enrichment, criminal sanc-tions, and—in the common law countries—copyright.727 The governingtreaties—the Rome Convention, the TRIPs Agreement, and the WIPO Per-formances and Phonograms Treaty—accommodate this variety by formu-lating the scope of guaranteed rights in the most general terms.

At the heart of the Rome Convention’s promise to performers is that theywill have the right to extract revenues from their work’s first exploitation

723. Rome Convention Art. 15(1).724. Rome Convention Art. 15(2). The provision adds, “However, compulsory licenses may

be provided for only to the extent to which they are compatible with this Convention.”725. WIPO Performances and Phonograms Treaty Art. 16(2).726. TRIPs Agreement Art. 14(6).727. WIPO, Guide to the Rome Convention and to the Phonograms Convention 34 (1981).

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in any technological medium. Specifically, Article 7(1) obligates signatorycountries to grant performers the “possibility of preventing” three discretetechnological means of exploitation: “(a) the broadcasting and the com-munication to the public, without their consent, of their performance,except where the performance used in the broadcasting or the public com-munication is itself already a broadcast performance or is made from afixation”; “(b) the fixation, without their consent, of their unfixed per-formance”; and “(c) the reproduction, without their consent, of a fixationof their performance: (i) if the original fixation itself was made withouttheir consent; (ii) if the reproduction is made for purposes different fromthose for which the performers gave their consent; (iii) if the original fixa-tion was made in accordance with the provisions of Article 15, and the re-production is made for purposes different from those referred to in thoseprovisions.”

Like the Rome Convention, the 1996 WIPO Performances and Phono-grams Treaty obligates member countries to protect performers against theunauthorized fixation, broadcast, or communication of their performances.However, the WIPO Performances and Phonograms Treaty extends the Romeformula to encompass new technological means of exploitation by addingnew definitions of “broadcasting,”728 “communication,”729 and “fixation.”730

Political rather than technological factors doubtless explain the decision toconfine performers’ fixation rights to audio fixation, leaving the question ofaudiovisual fixation to another day.

Article 6 of the Performances and Phonograms Treaty ensures perform-ers two exclusive rights in their unfixed performances: “(i) the broadcast-ing and communication to the public of their unfixed performances exceptwhere the performance is already a broadcast performance; and (ii) the fixa-tion of their unfixed performances.”731 Once a performance is fixed in a pho-nogram, performers are to have the exclusive right to authorize its “direct

728. Article 2(f) of the WIPO Performances and Phonograms Treaty defines “broadcast-ing” as “the transmission by wireless means for public reception of sounds or of images andsounds or of the representations thereof; such transmission by satellite is also ‘broadcasting’;transmission of encrypted signals is ‘broadcasting’ where the means for decrypting are pro-vided to the public by the broadcasting organization or with its consent.”

729. Article 2(g) of the WIPO Performances and Phonograms Treaty defines “communi-cation to the public” of a performance or phonogram as “the transmission to the public byany medium, otherwise than by broadcasting, of sounds of a performance or the sounds ofthe representations of sounds fixed in a phonogram. For the purposes of Article 15, ‘commu-nication to the public’ includes making the sounds or representations of sounds fixed in aphonogram audible to the public.”

730. Article 2(c) of the WIPO Performances and Phonograms Treaty defines “fixation” as“the embodiment of sounds, or of the representations thereof, from which they can be per-ceived, reproduced or communicated through a device.”

731. WIPO Performances and Phonograms Treaty Art. 6.

or indirect” reproduction “in any manner or form”;732 “the making avail-able to the public of the original and copies” through “sale or other transferof ownership”;733 “the commercial rental to the public of the original andcopies of their performances fixed in phonograms as determined in the na-tional law of Contracting Parties, even after distribution of them by, or pur-suant to, authorization by the performer”;734 and “the exclusive right ofauthorizing the making available to public of their performances fixed inphonograms, by wire or wireless means, in such a way that members of thepublic may access them from a place and at a time individually chosen bythem.”735

Before the Performances and Phonograms Treaty some, but far from all,countries granted moral rights to performers. The French Intellectual Prop-erty Code, for example, provided that “[a] performer shall have the right torespect for his name, his capacity and his performance.”736 The German Copy-right Act provided, “A performer shall have the right to prohibit any distor-tion or other alteration of his performance of such nature as to jeopardize hisstanding or reputation as a performer.”737 The Performances and PhonogramsTreaty now makes moral rights protection mandatory on adherents.738

Within the European Union, the 1992 Directive on Rental Right and LendingRight and on Certain Rights Related to Copyright in the Field of IntellectualProperty739 obligates Member States to grant performers the exclusive rightto authorize or prohibit rental or lending of fixations of their performances.740

This right may be freely transferred by the performer,741 but the Directive pro-vides that, where the performer has transferred the rental right to a phono-gram or film producer, the performer retains, and cannot waive, the right toobtain an equitable remuneration for the rental.742 The Directive also requires

732. WIPO Performances and Phonograms Treaty Art. 7.According to the Agreed Statement of the Diplomatic Conference on this Treaty, “The re-

production right, as set out in Articles 7 and 11, and the exceptions permitted thereunderthrough Article 16, fully apply in the digital environment, in particular to the use of perfor-mances and phonograms in digital form. It is understood that the storage of a protected per-formance or phonogram in digital form in an electronic medium constitutes a reproductionwithin the meaning of these Articles.” Diplomatic Conference on Neighboring Rights Ques-tions, Agreed Statements Concerning the WIPO Performances and Phonograms Treaty, WIPODocument CRNR/DC/97, concerning Articles 7, 11 and 16 (Dec. 23, 1996).

733. WIPO Performances and Phonograms Treaty Art. 8(1).734. WIPO Performances and Phonograms Treaty Art. 9(1).735. WIPO Performances and Phonograms Treaty Art. 10.736. France, Intellectual Property Code Art. L 212-2.737. Germany, Copyright Act Art. 83.738. WIPO, Performances and Phonograms Treaty Art. 5.739. Council Directive 92/100/EEC (“Rental Right Directive”) Nov. 19, 1992, O.J. L 346.740. E.C. Rental Right Directive Art. 2(1).741. E.C. Rental Right Directive Art. 2(4).742. E.C. Rental Right Directive Art. 4(1), (2).

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performers to receive the exclusive rights to authorize or prohibit the fixationof their performances,743 to authorize or prohibit the direct or indirect repro-duction or fixation of their performances,744 to authorize or prohibit broad-cast and communication of their performances to the public “except where theperformance is itself already a broadcast performance or is made from afixation,”745 and to distribute fixations of their performances to the public.746

b. rights of phonogram producers

Both the Rome Convention and the Geneva Phonograms Convention protectrecord producers against the unauthorized reproduction of their phono-grams—“direct or indirect reproduction” in the case of the Rome Conven-tion,747 and “making of duplicates” in the case of the Phonograms Conven-tion.748 Unlike the Rome Convention, the Phonograms Convention providesfor a public distribution right.749 Unlike the Phonograms Convention, theRome Convention provides for a performance right: “If a phonogram pub-lished for commercial purposes, or a reproduction of such phonogram, is useddirectly for broadcasting or for any communication to the public, a singleequitable remuneration shall be paid by the user to the performers, or to theproducers of the phonograms, or to both.”750

The WIPO Performances and Phonograms Treaty extends the rights of pho-nogram producers to new technological uses, much as it does with the rightsof performers. Like the Rome Convention and the TRIPs Agreement, the Per-formances and Phonograms Treaty provides that phonogram producers “shallenjoy the exclusive right of authorizing the direct or indirect reproduction oftheir phonograms, in any manner or form.”751 Like the Phonograms Con-vention, the Performances and Phonograms Treaty establishes a commer-

743. E.C. Rental Right Directive Art. 6(1).744. E.C. Rental Right Directive Art. 7(1).745. E.C. Rental Right Directive Art. 8(1).746. E.C. Rental Right Directive Art. 9(1).747. Rome Convention Art. 10. See also TRIPs Agreement Art. 14(2).“As a minimum, the Rome Convention gives producers of phonograms the right to authorize

or prohibit the reproduction of their phonograms, whether this is done by direct or indirectmeans. It was understood in Rome that this means a reproduction by use of the matrix (direct),or by use of a record pressed therefrom, or by recording a radio or TV program which containsa phonogram (indirect).” WIPO, Guide to the Rome Convention and to the Phonograms Convention43 (1981).

748. Geneva Phonograms Convention Art. 2.749. Geneva Phonograms Convention Art. 2. Cf. TRIPs Agreement Art. 14(4).750. Rome Convention Art. 12. Article 12 further provides, “Domestic law may, in the ab-

sence of agreement between these parties, lay down the conditions as to the sharing of thisremuneration.”

751. WIPO Performances and Phonograms Treaty Art. 11.

cial rental right752 and, though in less cumbered terms, a public distributionright.753 Finally, as with performers, the Performances and PhonogramsTreaty promises phonogram producers “the exclusive right of authorizing themaking available to the public of their phonograms, by wire or wireless means,in such a way that members of the public may access them from a place and ata time individually chosen by them.”754 The 1992 E.C. Directive on RentalRights and Related Rights requires member states to give phonogram produc-ers an exclusive rental and lending right with respect to their phonograms,755

as well as an exclusive right to reproduce their phonograms, directly or indi-rectly,756 and to distribute their phonograms to the public.757

c. rights of broadcasting organizations

Article 13 of the Rome Convention and Article 14(3) of the TRIPs Agreementprescribe, in roughly comparable terms, the minimum rights that membercountries must give to broadcasting organizations in connection with theirbroadcasts. The TRIPs Agreement states the pivotal requirements in broaderterms than does the Rome Convention, giving broadcasters “the right to pro-hibit the following acts when undertaken without their authorization: thefixation, the reproduction of fixations, and the rebroadcasting by wirelessmeans of broadcasts, as well as the communication to the public of televi-sion broadcasts of the same.”758 The 1992 E.C. Rental and Related RightsDirective requires member states to grant broadcasting organizations theexclusive right to fix their broadcasts, “whether these broadcasts are trans-mitted by wire or over the air, including by cable or satellite,”759 as well asto reproduce these fixations, directly or indirectly.760 The Directive also re-quires the grant of public rebroadcast and communication rights761 andpublic distribution rights762 to broadcasters.

d. other neighboring rights

Outside the neighboring rights of performers, phonogram producers, andbroadcasters is a potpourri of rights that neighbor on copyright and author’s

752. WIPO Performances and Phonograms Treaty Art. 13.753. WIPO Performances and Phonograms Treaty Art. 12.754. WIPO Performances and Phonograms Treaty Art. 14.755. E.C. Rental Right Directive Art. 2(1).756. E.C. Rental Right Directive Art. 7(1).757. E.C. Rental Right Directive Art. 9(1).758. TRIPs Agreement Art. 14(3).759. E.C. Rental Right Directive Art. 6(2).760. E.C. Rental Right Directive Art. 7(1).761. E.C. Rental Right Directive Art. 8(3).762. E.C. Rental Right Directive Art. 9(1).

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right. The European continent offers the greatest profusion of such rights,in part because the European Union’s harmonizing efforts have generallybrought protection to the highest level reached in one or more states ratherthan to the lowest common denominator. For example, drawing in part onearlier French and German practice, the E.C. Rental and Related Rights Di-rective grants film producers the exclusive rights to rent and lend copies oftheir films,763 to reproduce the films directly or indirectly,764 and to distrib-ute copies of the film to the public.765 Article 4 of the E.C. Term Directiveprovides that anyone who, following the expiration of copyright in unpub-lished works such as private letters, publishes “or lawfully communicates[them] to the public” for the first time shall enjoy protection equivalent toauthor’s economic rights, subject however to a shortened term, twenty-fiveyears from publication.766 British law grants publishers copyright in the typo-graphical arrangement of published editions principally as a means for pro-tecting their investment in producing editions of public domain works.767 TheGerman Act grants rights comparable to copyright to authors who producematerially new editions of public domain works768 and to publishers who pub-lish previously unpublished works in which the copyright has expired.769

Economically, probably the most significant of the nonconventional neigh-boring rights is the one the E.C. Database Directive gives to a database maker“to prevent extraction and/or re-utilization of the whole or of a substantialpart, evaluated qualitatively and/or quantitatively, of the contents of thatdatabase.”770 This right, though sui generis, draws on traditional author’sright concepts. For example, echoing Article 9(2) of the Berne Convention,

763. E.C. Rental Right Directive Art. 2(1).764. E.C. Rental Right Directive Art. 7(1).765. E.C. Rental Right Directive Art. 9(1).766. E.C. Term of Protection Directive Art. 4.Article 5 of the Term of Protection Directive provides: “Member States may protect critical

and scientific publications of works which have come into the public domain. The maximumterm of protection of such rights shall be 30 years from the time when the publication wasfirst lawfully published.”

767. United Kingdom, Copyright, Designs and Patents Act 1988 §1(1)(c). See E. P. SkoneJames et al., Copyright ¶¶2–36 through 2–37 (13th ed. 1991).

768. Germany, Copyright Act Art. 70.769. Germany, Copyright Act Art. 71.770. E.C. Database Directive Art. 7(1).Article 7(2) (a) of the Database Directive defines “extraction” to mean “the permanent or

temporary transfer of all or a substantial part of the contents of a database to another me-dium by any means or in any form,” and Article 7(2) (b) defines “re-utilization” to mean “anyform of making available to the public all or a substantial part of the contents of a database bythe distribution of copies, by renting, by on-line or other forms of transmission. The first saleof a copy of a database within the Community by the rightholder or with his consent shallexhaust the right to control resale of that copy within the Community; Public lending is notan act of extraction or re-utilization.”

Article 7(5) of the E.C. Database Directive provides: “The repeated and sys-tematic extraction and/or re-utilization of insubstantial parts of the contentsof the database implying acts which conflict with a normal exploitation ofthat database or which unreasonably prejudice the legitimate interests of themaker of the database shall not be permitted.”771

§5.4.1.3. Auxiliary Rights: Copyright Protection Systems

Digital media make it possible to use copyrighted works quickly and cheaplywithout authority. Copyright owners, fearing that these unauthorized useswill undermine revenues from traditional distribution channels, have em-ployed technical encryption measures to block unauthorized access to theirworks. Yet encryption alone may not suffice to secure works from unautho-rized use, for digital technologies can also reduce the time and expense it takesto disencrypt encrypted content. In 1996 copyright owners succeeded insecuring a provision in the WIPO Copyright Treaty requiring the contract-ing parties to “provide adequate legal protection and effective legal remediesagainst the circumvention of effective technological measures that are usedby authors in connection with the exercise of their rights under this Treatyor the Berne Convention and that restrict acts, in respect of their works,which are not authorized by the authors concerned or permitted by law.”772

Article 18 of the WIPO Performances and Phonograms Treaty makes com-parable provision respecting the circumvention of technological measuresemployed by performers or producers of phonograms.773

In 1998 the U.S. Congress implemented the WIPO Treaty provisions respect-ing anti-circumvention measures by adding a new Chapter 12 to Title 17 ofthe U.S. Code alongside—but not a part of—the U.S. Copyright Act.774 Sec-tion 1201 provides separately for (a) technological measures that blockunauthorized access to copyrighted works and (b) technological measures

771. E.C. Database Directive Art. 7(5). See also E.C. Database Directive, Article 9, carvingout exemptions comparable to those under author’s right and copyright for fair dealing andprivate use.

772. WIPO Copyright Treaty Art. 11.773. The WIPO Copyright Treaty also obligates contracting parties to ensure the integ-

rity of “rights management information,” defined as “information which identifies the work,the author of the work, the owner of any right in the work, or information about the termsand conditions of use of the work, and any numbers or codes that represent such informationwhen any of these items of information is attached to a copy of a work or appear in connec-tion with the communication of a work to the public.” WIPO Copyright Treaty Art. 12. Seealso WIPO Performances and Phonograms Treaty Art. 19.

774. The legislation appears in Title I of the Digital Millennium Copyright Act, Pub. Law105-304, 112 Stat. 2860 (Oct. 28, 1998).

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that block the unauthorized exercise of one or more of the rights secured bycopyright. Sections 1203 and 1204 provide respectively for civil remedies andcriminal penalties for violation of sections 1201.775 By design, section 1201has no effect on “rights, remedies, limitations, or defenses to copyright in-fringement, including fair use,”776 and the provision does not “enlarge ordiminish vicarious or contributory liability for copyright infringement inconnection with any technology, product, service, device, component, or partthereof.”777

Section 1201(a), dealing with circumvention of access controls, encom-passes both circumvention by conduct and circumvention by device. Spe-cifically, section 1201(a) (1) provides that “[n]o person shall circumvent atechnological measure that effectively controls access to a work protectedunder this title,” and further provides for rulemaking by the U.S. Librarianof Congress to prescribe appropriate exemptions for individuals whose abil-ity to make noninfringing uses of particular classes of works would other-wise be impaired. Section 1201(a)(2) prohibits the manufacture or traffic inany technology product, service, or device that: is primarily designed or pro-duced for the purpose of circumventing a technological access control; has“only limited commercially significant purpose or use” other than such cir-cumvention; or is marketed for use in circumventing such a technologicalmeasure.

Where section 1201(a) deals with circumvention of technological measuresprotecting access to a work, section 1201(b) deals with circumvention of tech-nological measures protecting “a right of a copyright owner.” Section 1201(b)prohibits only the manufacture or sale of circumvention devices, not individualconduct aimed at circumvention. Like section 1201(a)(2), section 1201(b)seeks to avoid ensnaring products that have legitimate uses, and prohibitsthe manufacture or distribution only of a technology, product, or service that:is primarily designed for the purpose of circumventing a technological mea-sure that “effectively protects a right of a copyright owner”; has only a lim-ited commercially significant use other than such circumvention; or is mar-keted for use in such circumvention.

Section 1201 carves out several exemptions from liability. Section 1201(f)exempts circumvention of both section 1201(a) access controls and sec-tion 1201(b) copy controls if the circumvention involves reverse engineer-ing undertaken for the purpose of achieving interoperability between an in-

775. Section 1202 implements Article 12 of the WIPO Copyright Treaty and Article 19 ofthe WIPO Performances and Phonograms Treaty by prohibiting the falsification, removal, oralteration of copyright management information, including information about the work’s title,author, and copyright owner.

776. 17 U.S.C. §1201(c) (1).777. 17 U.S.C. §1201(c) (2).

dependently created computer program and other programs. Section 1201(g)and (j) respectively exempt prescribed acts of encryption research and secu-rity testing from liability for circumventing—or producing devices to circum-vent—access controls; and section 1201(e) completely exempts specified lawenforcement activities. Section 1201(d) creates an exemption from the pro-hibition against circumvention of access controls for a “nonprofit library,archives or educational institution which gives access to a commerciallyexploited copyrighted work solely in order to make a good faith determina-tion of whether to acquire a copy of that work.”

§5.4.2. Moral Rights

Moral rights secure the bond between an author and his work through sev-eral legal ties.778 Two of these rights, required of all Berne Union memberssince the 1928 Rome Act, are the author’s right to claim paternity, or au-thorship, of his work779 and his right to the work’s integrity, to object to anydistortion of the work, both secured by Article 6bis of the 1976 Paris Act.780

Many countries also recognize a moral right of divulgation, or disclosure,781

and some recognize a right to withdraw the work from circulation if it nolonger represents the author’s views.782 Although moral right has tradition-ally been associated with protection of authors in connection with theirworks, the WIPO Performances and Phonograms Treaty requires the grantto performers of paternity and integrity rights in their “live aural perfor-mances or performances fixed in phonograms.”783

Civil law systems, with their ostensible deference to authors’ natural rights,are commonly thought to provide more rigorous moral rights protection than

778. There is an abundant literature on moral right in English. See, e.g., Adolf Dietz, LegalPrinciples of Moral Rights in Civil Law Countries, 11 Copyright Reporter 1 (1993 No. 3); GeraldDworkin, Moral Rights and the Common Law Countries, 5 Australian Intellectual Property J. 5(1994); Gerald Dworkin, The Moral Right and English Copyright Law, 12 I.I.C. 476 (1981);Martin A. Roeder, The Doctrine of Moral Right: A Study in the Law of Artists, Authors andCreators, 53 Harv. L. Rev. 554 (1940); Raymond Sarraute, Current Theory on the Moral Rightof Authors and Artists under French Law, 16 Am J. Comp L. 465 (1968); Russell J. DaSilva,Droit Moral and the Amoral Copyright: A Comparison of Artists’ Rights in France and theUnited States, 28 Bull. Copr. Soc’y 1 (1980); William Strauss, The Moral Right of the Author,4 Am. J. Comp L. 506 (1955); Stig Strömholm, Droit Moral—The International and Compara-tive Scene from a Scandinavian Viewpoint, 14 I.I.C. 1 (1983); David Vaver, Authors’ MoralRights in Canada, 14 I.I.C. 329 (1983).

779. See §5.4.2.1, below.780. See §5.4.2.2, below.781. See §5.4.2.3, below.782. See §5.4.2.4, below.783. WIPO, Performances and Phonograms Treaty Art. 5(1).

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common law systems, with their reputed utilitarian bent. Nonetheless, mostif not all common law countries, with their own historic regard for authors’natural rights, have established an effective body of doctrine protecting au-thors’ reputational interests. In 1931 Canada enacted moral rights legislationclosely patterned after Berne Article 6bis, and the current Copyright Act pre-scribes fully elaborated protections for the rights of integrity and paternity.784

The 1988 Copyright, Designs and Patents Act in the United Kingdom providesdiscrete rights of integrity and paternity and against false attribution.785

The United States, which has steadfastly resisted the literal incorporationinto national law of the rights secured by Article 6bis of the 1971 Paris Act,786

has approximated rights of paternity and integrity through two avenues: a mixof federal and state laws, including derivative rights, unfair competition, defa-mation, and privacy; and a provision of the Copyright Act, added in 1990,granting rights of attribution and integrity to “works of visual art.”787 Therights granted by the 1990 amendments to works of visual art are at first glanceas robust as the moral rights given under any other legal systems in the world.But the reach of these rights is in fact sharply restricted, for the Act effectivelyequates works of visual art with works of fine art and defines that class to in-clude works that exist in only a single copy or that are published in signed andnumbered editions of no more than 200 copies;788 further, the Act subjects therights to sweeping limitations, exempting from liability virtually all significantcommercial uses of artistic works, including their reproduction in books, maga-zines, newspapers, motion pictures, and works made for hire.789

Just as the common law countries have admitted strains of natural rightinto their protection of author’s reputational interest, so civil law countrieson the European continent have bowed to utilitarian principle in creatingexpedient exceptions from moral right. In a landmark General Report to the1993 Congress of the ALAI, Adolf Dietz, a leading student of moral right,

784. Canada, Copyright Act §§14.1, 28.1.785. United Kingdom, Copyright, Designs and Patents Act 1988 §§77-89, 94–95, 103.786. The United States succeeded in limiting the TRIPs Agreement’s incorporation of the

minimum rights guaranteed by the Berne Convention to economic rights only. See DanielGervais, The TRIPs Agreement: Drafting History and Analysis 72 (1998).

787. U.S. 1976 Copyright Act §106A.788. U.S. 1976 Copyright Act §101.789. U.S. 1976 Copyright Act §106A(c) (3).Section 106A(d) limits the duration of the rights of attribution and integrity to the life of

the author, a departure from Berne Article 6bis(2), which requires the rights of integrity andattribution to remain in force after the author’s death “at least until the expiry of the eco-nomic rights.” In the United States, in the usual case, this means seventy years after theauthor’s death. While Article 6bis(2) allows a country, which at the time it adhered to theParis Act of the Convention protected neither the right of integrity nor the right of attributionafter the author’s death, to terminate one of these rights on the author’s death, section 106Aprovides for termination of both rights on the author’s death.

demonstrated that criteria comparable to the balancing factors employed inAmerican fair use doctrine have been employed in determining appropriatelimitations on moral right, in particular the right of integrity: the “natureand intensity of modifications of or other interference with the work, as wellas its reversible or irreversible character; the number of people or the size ofthe public addressed by the use of the infringing work; the fact whether theauthor created the work in an employment relationship or as a self-employedauthor or else whether a commissioning party had or had not decisive influ-ence onto the final result of the creation; also the possible consequences forthe professional life of the author, and, of course, for his honor and reputa-tion have to be taken into consideration.”790

Moral rights, concerned with an author’s reputation, frequently overlapthe economic rights, which are concerned with a work’s exploitation.791

Nonetheless, moral rights have distinct jurisprudential roots. For example,while national legislatures universally condition their protection of economicrights in published foreign works on the presence of a treaty point of attach-ment, they may choose not to insist on this quid pro quo in the case of moralrights. The German Author’s Rights Act, for example, will protect the integ-rity, paternity, and disclosure rights of foreign authors even though the workin issue has no point of attachment under any applicable treaty.792 Frenchlaw similarly treats moral right as universal in nature.793

§5.4.2.1. Right of Paternity

Article 6bis(1) of the Berne Paris Text requires member states to give authors“the right to claim authorship of the work.”794 The WIPO Guide to the BerneConvention calls this the “first and foremost” of the moral rights and under-scores that the right “may be exercised by the author as he wishes; it caneven be used in a negative way i.e., by publishing his work under a pseud-onym or by keeping it anonymous, and he can, at any time, change his mindand reject his pseudonym or abandon his anonymity.”795 Even functional,

790. Adolf Dietz, Legal Principles of Moral Rights (Civil Law) in A.L.A.I., The Moral Right ofthe Author, Congress of Antwerp (19–24 September 1993) 54, 78 (1994).

791. For example, the economic right to control the creation of derivative works can tosome degree serve as a surrogate for the right of integrity. See generally Paul Goldstein, De-rivative Rights and Derivative Works in Copyright, 30 J. Copr. Soc’y 209 (1983).

792. See, e.g., Germany, Copyright Act Art. 121(6).793. See F. Pollaud-Dulian, Moral Rights in France Through Recent Case Law, 145 R.I.D.A.

126, 154 (1990).794. Berne Convention, 1971 Paris Text Art. 6bis(1).795. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 41 (1978).

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architectural works command the right, and one German decision has heldthat an architect could require his name to be included on a large publicbuilding he had designed.796

The French Intellectual Property Code speaks of the author’s “right to re-spect for his name, his authorship and his work,”797 and the German Actspeaks of the author’s “right of recognition of his authorship of the work.”798

The U.K. Copyright, Designs and Patents Act employs a far more detailed pre-scription,799 subjects the right to several exceptions,800 and conditions theright on the author’s assertion of it in the prescribed manner.801 In civil lawcountries, where the paternity right is nonwaivable, at least in advance, aco-author or ghostwriter who has contractually foregone his right to benamed as an author may subsequently revoke the waiver and assert the at-tribution right.802

The U.S. Copyright Act gives the author of a work of visual art a right of attri-bution—“to claim authorship of that work”—and a right against misattri-bution—“to prevent the use of his or her name as the author of any work ofvisual art which he or she did not create.”803 The Act also gives the visual art-ist a right against the association of his name with a work that he did in factcreate “in the event of a distortion, mutilation, or other modification of thework which would be prejudicial to his or her honor or reputation.”804

Outside the limited scope of protection the U.S. Copyright Act gives tocreators of works of visual art, artists’ paternity interests in the UnitedStates are most completely protected under contract and unfair competi-tion law. Courts will enforce contract provisions obligating a licensee toattribute a work to its author; however, absent an express duty of attri-bution, courts will not as a rule imply such a duty.805 A provision of theU.S. Trademark Act, prohibiting misrepresentations in the sale of goods orservices, offers the greatest potential for relief against a third party’s fail-ure to attribute authorship.806 Courts have, for example, held that dis-tributing a work without attributing authorship violates the Act because

796. Namensnennungsrecht des Architekten (“Architect’s Right to Be Named”), German Fed-eral Supreme Court, June 16, 1994 (Case No. I ZR 3/92), 27 I.I.C. 130 (1996).

797. France, Intellectual Property Code Art. L 121-1.798. Germany, Copyright Act Art. 13 (“He may decide whether the work is to bear an

author’s designation and what designation is to be used.”).799. United Kingdom, Copyright, Designs and Patents Act 1988 §77.800. United Kingdom, Copyright, Designs and Patents Act 1988 §79.801. United Kingdom, Copyright, Designs and Patents Act 1988 §78.802. See F. Pollaud-Dulian, Moral Rights in France, 145 R.I.D.A. 126, 174–176 (1990).803. U.S. 1976 Copyright Act §106A(a) (1).804. U.S. 1976 Copyright Act §106A(a) (2).805. See, e.g., Vargas v. Esquire, Inc., 164 F.2d 522, 526 (7th Cir. 1947).806. 15 U.S. Code §1125(a) (1994).

it implies that the publisher rather than the actual author created thework.807

§5.4.2.2. Right of Integrity

Article 6bis(1) of the Berne Paris Text obligates member countries to secureto authors, with respect to their works, the right “to object to any distortion,mutilation or other modification of, or other derogatory action in relationto, the said work, which would be prejudicial to his honor or reputation.”808

In a parallel provision, Article 5 of the WIPO Performances and PhonogramsTreaty requires, at a minimum, protection of a performer’s right “to objectto any distortion, mutilation or other modification of his performances thatwould be prejudicial to his reputation.”809

Countries vary in the rigor with which they formulate and apply the rightof integrity. The French right, which Adolf Dietz characterizes, “at least intheory,” as “the most absolute and unconditional one,”810 speaks simply of“the author’s ‘right to respect for his name, his authorship and his work.’”811

Other civil law countries phrase the right broadly but limit it by the condi-tion, expressly permitted by Berne, that the distortion be prejudicial to theauthor’s honor or reputation.812 As a rule, courts in these countries employan objective, rather than subjective, measure of prejudice in order to discour-age lawsuits by overly sensitive authors or by authors seeking to use moralright as a lever to extract some unrelated personal or economic advantage.Germany, which follows this approach, applies it to licensees as well as tothird parties. Section 39(2) of the German Copyright Act provides that al-terations to a work and its title “which the author cannot reasonably refuseshall be permissible.”

The right of integrity, like moral right generally, has a less secure footholdin common law than in civil law countries. The U.K. 1988 Copyright, De-signs and Patents Act vests its right against “derogatory treatment” in au-thors of copyrighted literary, dramatic, musical, and artistic works and di-

807. See, e.g., Lamothe v. Atlantic Recording Corp., 847 F.2d 1403 (9th Cir. 1988); Smith v.Montoro, 648 F.2d 602, 605 (9th Cir. 1981) (“‘Implied’ reverse passing off occurs when thewrongdoer simply removes or otherwise obliterates the name of the manufacturer or sourceand sells the product in an unbranded state.”).

808. Berne Convention, 1971 Paris Text, Art. 6bis(1).809. WIPO Performances and Phonograms Treaty Art. 5(1).810. Adolf Dietz, Legal Principles of Moral Rights in Civil Law Countries, 11 Copyright Re-

porter 1, 13 (1993 No. 3).811. France, Intellectual Property Code Art. L 121-1.812. See, e.g., Spain, Copyright Act Art. 14(iv).

§5.4. Rights 287


rectors of copyrighted films, and it differentiates among several classes ofworks.813 The Act defines “treatment” to exclude translation of literary ordramatic works and modest alteration of musical works, and equates “de-rogatory” with an act that constitutes “distortion or mutilation of the workor is otherwise prejudicial to the honour or reputation of the author or di-rector.”814 The Canadian Copyright Act follows the Berne formulation andrequires that, to prevail in a distortion claim, the author must demonstrateprejudice to his honor or reputation,815 However, in the case of paintings,sculpture, and engravings, the Canadian Act creates a presumption of preju-dice arising out of distortion, mutilation, or other modification.816

Taken together, several provisions of the U.S. Copyright Act approximatethe moral right of integrity. In the case of qualifying works of visual art, theAct creates a right against “intentional distortion, mutilation, or othermodification” that would be prejudicial to the honor or reputation of the art-ist.817 Another provision carves out a limited right against the distortion ofnondramatic musical works by denying a mechanical license to make anddistribute phonorecords if the compulsory licensee’s arrangement of thecopyrighted work will “change the basic melody or fundamental characterof the work.”818 The Act’s grant of an exclusive right to prepare derivativeworks819 encompasses unauthorized distortions of the work along with gar-den variety translations, abridgements, and adaptations; paradoxically, themore extreme the distortion is, the less it can be said to be based on the origi-nal and thus to infringe the derivative right in the original.

Federal and state unfair competition law may also protect an author’sinterest in the integrity of his work. In Gilliam v. American Broadcasting Com-panies, Inc.,820 a leading case under federal unfair competition law, the courtpartially rested its decision for plaintiff on the ground that the defendant’sseverely edited version of television programs based on plaintiff’s MontyPython scripts “impaired the integrity” of the work “and represented to thepublic as the product of appellants what was actually a mere caricature oftheir talents.” The court concluded that “a representation of a product, al-though technically true,” will violate the Trademark Act if it “creates a falseimpression of the product’s origin,” and that the provision applies to “thesituation in which a television network broadcasts a program properly des-

813. United Kingdom, Copyright Designs and Patents Act 1988 §§80-82.814. United Kingdom, Copyright, Designs and Patents Act 1988 §80.815. Canada, Copyright Act §28.2(1).816. Canada, Copyright Act §28.2(2).817. U.S. 1976 Copyright Act §106A(a) (3) (A).818. U.S. 1976 Copyright Act §115(a) (2).819. U.S. 1976 Copyright Act §106(2).820. 538 F.2d 14 (2d Cir. 1976).

ignated as having been written and performed by a group, but which has beenedited, without the writer’s consent, into a form that departs substantiallyfrom the original work.”821

§5.4.2.3. Right of Divulgation

Implicit in the economic rights of reproduction, public performance, anddistribution is a right of divulgation through which authors can controlthe terms under which their works are first disclosed to the public. Severalcountries, predominantly in the civil law world, add a moral right of divul-gation to the economic right of first publication.822 The moral right of divul-gation augments the economic right in two ways. First, it insulates theunpublished work from exemptions and other limitations that might be per-mitted under the economic right.823 Second, in countries, such as Franceand Germany, that extend moral right to all authors regardless of a treatypoint of attachment, the divulgation right can serve as an important groundfor protection where treaty-based protection is unavailable. At least underFrench practice, the disclosure right has an affirmative as well as a prohibi-tory aspect, and the legislative prescription that “the author alone shallhave the right to divulge his work”824 has been interpreted to give creatorsof commissioned works not only the right to decline to complete the com-mission, but also the right to complete the work under the auspices of thecommissioning party.825

As a rule, common law countries do not extend a discrete moral right ofdisclosure. At one time common law copyright, a doctrine deeply rooted innatural rights philosophy, anchored the right of first publication but, sinceits virtually complete preemption in the common law world, the right hasoccupied the interstices of the statutory economic rights. The U.S. CopyrightAct’s exclusive right to distribute copies of a work to the public826 effectivelygives an author the right to control the first publication of his work and thusclosely approximates the right of disclosure under continental moral right

821. 538 F.2d at 24 (2d Cir. 1976).822. See, e.g., France, Intellectual Property Code Art. L 121-2; Germany, Copyright Act Art.

12(2).823. The Berne Paris Text, though not including the right of divulgation among the mini-

mum moral rights of Article 6bis, partially secures the right in provisions like Articles 10 and10bis, which effectively limit their exemptions to published works.

824. France, Intellectual Property Code Art. L 121-2.825. See F. Pollaud-Dulian, Moral Rights in France Through Recent Case Law, 145 R.I.D.A.

126, 162–170 (1990).826. U.S. 1976 Copyright Act §106(3).

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doctrine. This right may enjoy a preferred place in the Act’s hierarchy ofrights, for the U.S. Supreme Court has held that unpublished works enjoyspecial protection against section 107’s fair use defense.827 Section 202 ofthe U.S. Copyright Act, providing that transfer of ownership of a materialobject, such as a manuscript or painting, does not of itself convey rights inthe copyrighted work embodied in the material object, further secures theauthor’s control of the right of first publication.828

§5.4.2.4. Right of Withdrawal

Only a small number of countries—according to one survey, France, Ger-many, Italy, and Spain and perhaps Belgium—all in the civil law world, grantauthors an explicit moral right to withdraw their work from circulation,typically in situations when the work no longer accurately reflects theirviews.829 Where granted, the right may be conditioned on indemnificationof the work’s publisher for losses suffered as a consequence of withdrawal.For example, the French provision on droit de repentir provides:

Notwithstanding assignment of his right of exploitation, the author shallenjoy a right to reconsider or of withdrawal, even after publication of hiswork, with respect to the assignee. However, he may only exercise that righton the condition that he indemnify the assignee beforehand for any preju-dice the reconsideration or withdrawal may cause him. If the author decidesto have his work published after having exercised his right to reconsider orof withdrawal, he shall be required to offer his rights of exploitation in thefirst instance to the assignee he originally chose and under the conditionsoriginally determined.830

At least as measured by the case law, the right of withdrawal is rarely as-serted. The U.S. Copyright Act’s termination of transfer provisions roughlyapproximate the civil law right of recall by giving authors and their statu-tory successors a nonwaivable right to terminate copyright transfers after aspecified period, although authors will typically use the termination powerto renegotiate the terms of publication rather that to withdraw the work fromthe marketplace.831

827. Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985). The last sen-tence of section 107 provides, “The fact that a work is unpublished shall not itself bar a find-ing of fair use if such finding is made upon consideration of all the above factors.”

828. U.S. 1976 Copyright Act §202.829. See generally Adolf Dietz, Legal Principles of Moral Rights in Civil Law Countries, 11

Copyright Reporter 1, 4 (1993).830. France, Intellectual Property Code Art. L 121-4.831. U.S. 1976 Copyright Act §§203, 304(c).

§5.4.2.5. Limitation and Waiver of Moral Rights

In most countries an author’s moral rights are doctrinally separate from hiseconomic rights, a fact reflected in the opening phrase of Berne Article 6bis(1)guaranteeing the rights of attribution and integrity “[i]ndependently of theauthor’s economic rights, and even after the transfer of said rights.”832 Al-though there is a popular tendency to view moral rights as absolute, legisla-tion in only a few countries even approaches this extreme. The most frequentlycited example is France, where, by statute, the right is described as “perpetual,inalienable and imprescriptible.”833 In fact, moral right in most countries lastsno longer than the author’s economic rights834 and, even if not generally alien-able, may be subject to waiver.835 Waiver aside, moral rights are also regu-larly subjected to exemptions that, though not as numerous or broad as thosefor economic rights, nonetheless accommodate the exigencies of commerce.836

a. waiver

National legislation divides on the author’s power to waive his moral rights.At one extreme are some of the civil law countries, led by France, that im-pose a virtually absolute bar on transfer.837 In the intermediate category arecivil law countries that permit waiver in circumstances where it would beunjust not to do so. Germany, for example, “allows waiver within certainlimits, determined partly by proper usage, partly by a balancing of trans-fer.”838 At the other end of the spectrum, common law countries freely allowwaiver of moral rights.839 As a practical matter, waiver of moral right willbe an all but inevitable element of the relationship between an author andhis publisher, since the production of a book, sound recording, or motionpicture will necessarily alter the author’s original work to some degree, andpublication of the work is the ultimate object of the author–publisher rela-tionship. This fact suggests that, by entering into such a relationship, theauthor effectively waives the rights of integrity and disclosure, at least to theextent reasonably dictated by the terms of the relationship. Article 39(2) of

832. Berne Convention, 1971 Paris Text, Art. 6bis(1).833. France, Intellectual Property Code Art. L 121-1.834. Under Article 6bis(2) of the Berne Convention, 1971 Paris Text, the rights of pater-

nity and integrity secured by Article 6bis(1) are to be maintained after the author’s death, “atleast until the expiry of the economic rights.”

835. See §5.4.2.5.A, below.836. See §5.4.2.5.B, below.837. France, Intellectual Property Code Art. L 121-1; Spain, Copyright Act Art. 14.838. Adolf Dietz, Legal Principles of Moral Rights in Civil Law Countries, 11 Copyright Re-

porter 1, 12 (1993 No. 3).839. See generally Gerald Dworkin, Moral Rights and the Common Law Countries, 5 Aus-

tralian Intellectual Property J. 5, 18 (1994).

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the German Copyright Act posits, as a rule of law, a proposition that else-where is doubtless implied in fact: that the publisher or other licensee is pre-sumed to enjoy the privilege of altering the work within reasonable bounds.

b. limitations

Moral rights are not nearly as monolithic as is commonly thought, and actionsagainst third parties are tempered in civil law as well as common law countriesby a balancing of interests akin to the balance struck for economic rights bydoctrines such as fair dealing and fair use.840 Reviewing legislative exceptionsto moral right in the civil law countries, Adolf Dietz has concluded that they“only exemplify the concept that moral rights questions have always to bejudged in their individual context and that correspondingly different solutionshave to be found for different categories of works and manners of work uses.”841

Motion pictures provide a prominent example of how civil law countriesextensively accommodate moral rights to the exigencies of the marketplace.842

These countries have carved out similarly broad exemptions for works, suchas computer programs and architecture, that occupy the borderland betweenliterary or artistic property and industrial property.843 Parody, which mightbe considered a direct assault on an artist’s interest in the integrity of hiswork, has been widely accepted in civil law jurisprudence as an accepted andimportant literary genre that will not infringe moral right so long as it remainstrue to its central, critical purpose.844 In general, however, these accommo-dations are not as extensive as those made in common law countries.845

§5.5EXEMPTIONS, STATUTORY LICENSES, AND

OTHER LIMITATIONS ON EXCLUSIVE RIGHTS

As a rule, national legislation employs broad strokes to define exclusive rightsin literary and artistic works. The right to reproduce a copyrighted work will

840. This comparison, advanced by Dr. Adolf Dietz, is elaborated in his essay, Legal Prin-ciples of Moral Rights in Civil Law Countries, 11 Copyright Reporter 1, 15 (1993 No. 3).

841. Adolf Dietz, Legal Principles of Moral Rights in Civil Law Countries, 11 Copyright Re-porter 1, 14–15 (No. 3 1993).

842. See, e.g., France, Intellectual Property Code Art. L 121–6; Germany, Copyright ActArt. 93.

843. France, Intellectual Property Code Art. L 121-7; Italy, Copyright Act Art. 20.844. See André Françon, The Copyright Aspects of Parodies and Similar Works, 24 Copy-

right 283, 286 (1988).845. See generally Gerald Dworkin, Moral Rights and the Common Law Countries, 5 Aus-

tralian Intellectual Property J. 5 (1994).

literally encompass not only the making of 100,000 videocassettes from asingle film, but also a single copy of a single frame from the same film. Thefunction of exemptions and statutory licenses is to modify exclusive rightsin a manner that balances the economic interests of copyright owners andthe interests, economic and otherwise, of copyright users.

No less than copyright itself, properly calibrated limitations on copyrightserve copyright law’s basic goal to put copyrighted works to their most benefi-cial use by enabling new generations of authors to build on the works ofauthors who preceded them. In many if not most cases, these limitationsexcuse uses that would have been licensed but for insurmountable transac-tion costs. For example, a researcher may wish to excerpt a paragraph or twofrom a treatise in a scientific paper he is publishing. Although the researchermight be willing to pay the copyright owner a modest sum, the delay andother costs of locating and negotiating with the copyright owner are likelyto exceed any benefit enjoyed. To enforce the exclusive reproduction rightwould in this circumstance result in the use not being made and in moneynot being paid to the copyright owner. To excuse the use, as would mostnational copyright laws,846 while still producing no revenues for the copy-right owner, would at least enable the socially beneficial use.

The fair use doctrine in the United States, a statutory codification of ahundred years of judicial decisions, supplements more particularized statu-tory exemptions by excusing expedient and salutary uses. Section 107 of the1976 Act provides that uses for such purposes as criticism, comment, newsreporting, teaching, scholarship, and research are fair and noninfringingdepending on a calculus of four factors: the purpose and character of the use;the nature of the copyrighted work; the amount appropriated from the copy-righted work; and “the effect of the use upon the potential market for or valueof the copyrighted work.” In other common law countries, the considerablynarrower fair dealing defense for research or private study847 and for criti-cism, review, and news reporting848 encompasses some of the specific objectsof American fair use doctrine but does not give courts the same open-endedauthority to resolve cases outside these specific categories. Nonetheless ju-dicial opinions in common law countries occasionally suggest a generalized“public interest” defense comparable in some respects to fair use.849

There is no specific provision for fair dealing in civil law practice, but copy-right legislation in most civil law countries contains exemptions comparableto those provided under the fair dealing defense. The French legislation, for

846. See generally Paul Goldstein, 2 Copyright chap. 10 (2d ed. 1996).847. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §29.848. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §30.849. See E. P. Skone James et al., Copyright ¶11-30 (13th ed. 1991). But see Hugh Laddie,

Peter Prescott & Mary Vitoria, The Modern Law of Copyright and Designs ¶¶2.150–2.153 (2d ed.1995).

§5.5. Exemptions, Statutory Licenses, and Other Limitations 293


example, provides narrow exemptions in the case of published works forprivate copies and, so long as the source and author’s name are clearly stated,for press reviews and analyses as well as short quotations for critical, educa-tional, polemic, or scientific purpose.850 The German Copyright Act providesa long list of limited exceptions to copyright in addition to those for quota-tion and private use.851

The Berne Convention, Paris Act itemizes the specific uses that are accept-able as exemptions to the minimum rights guaranteed and also, in Ar-ticle 9(2), imposes a more generalized limitation on exemptions from thereproduction right. Article 9(2), added in Stockholm in 1976, provides: “Itshall be a matter for legislation in the countries of the Union to permit thereproduction of such [protected literary and artistic] works in certain spe-cial cases, provided that such reproduction does not conflict with a normalexploitation of the work and does not unreasonably prejudice the legitimateinterests of the author.” According to the WIPO Guide to the Berne Conven-tion, the permitted exceptions encompass the privilege to use the work in itstranslated, as well as its original form, subject in all cases to respect for moralright.852

Article 13 of the TRIPs Agreement applies Berne Article 9(2)’s three-stepformula for exceptions to the reproduction right to all exclusive rights in lit-erary and artistic works, not just the reproduction right.853 Article 10 of theWIPO Copyright Treaty and Article 16 of the WIPO Performances and Phono-grams Treaty similarly apply the Berne formula to the minimum rights es-tablished by their texts. Although the TRIPs and WIPO Treaty counterpartsto Article 9(2) apply to all the rights encompassed by their respective texts,they do not provide a general charter for imposing such limitations on rightsother than the reproduction right. Because Article 20 of the Berne Paris Actreserves the right of Union countries to enter into special agreements amongthemselves, only “in so far as such agreements grant to authors more exten-sive rights than those granted by the Convention, or contain other provisionsnot contrary to this Convention,” neither TRIPs nor the WIPO treaties canbe used by a Berne Union member to justify derogation of any minimum rightestablished by Berne. However, new minimum treaty rights not guaranteedby Berne, such as the rental right, may be subjected to these more extensivelimitations. Interpretations applied to Berne Article 9(2) can usefully beapplied to the TRIPs and WIPO treaty provisions as well.

850. France, Intellectual Property Code Art. L 122-5.851. Germany, Copyright Act Section VI.852. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 53 (1978).853. TRIPs Agreement Article 13 provides that “Members shall confine limitations or excep-

tions to exclusive rights to certain special cases which do not conflict with a normal exploita-tion of the work and do not unreasonably prejudice the legitimate interests of the right holder.”

Since, unlike some of the Berne Convention’s narrower, self-containedexceptions, Article 9(2) is not confined to published works, it would appearto govern rights in unpublished works as well. Nonetheless, traditional re-spect for authorial privacy and autonomy has influenced jurisprudence andlegislation on the subject, with the result that unpublished works regularlyenjoy greater protection from unauthorized use than do published works. Inone case, the U.S. Supreme Court endorsed special protection for unpublishedworks, holding that it was not a fair use for the defendant to copy approxi-mately 300 words from plaintiff’s copyrighted but unpublished memoirs. “Itis true,” the Court ruled, “that common-law copyright was often enlisted inthe service of personal privacy. In its commercial guise, however, an author’sright to choose when he will publish is no less deserving of protection. Theperiod encompassing the work’s initiation, its preparation, and its groom-ing for public dissemination is a crucial one for any literary endeavor. . . .The obvious benefit to author and public alike of assuring authors the lei-sure to develop their ideas free from fear of expropriation outweighs anyshort-term ‘news value’ to be gained from premature publication of theauthor’s expression.”854

Article 9(2)’s first requirement, that the use in question qualify as one of“certain special cases,” implies that exceptions to exclusive rights must becarefully delimited by applicable economic and technological, as well as cul-tural and political, constraints. Professor Ricketson has interpreted the term“special” to mean that the purpose “is justified by some clear reason of publicpolicy or some other exceptional circumstance.”855 At least arguably, the pur-poses cited in the introductory sentence of the U.S. fair use provision wouldqualify as special cases: “criticism, comment, news reporting, teaching (includ-ing multiple copies for classroom use), scholarship, or research.”856 Similarly,Articles 5(2) and 6(1) of the E.C. Software Directive, which respectively per-mit backup copies and decompilation to achieve computer interoperability,meet Article 9(2)’s objects because they accommodate the copyright owner’slegitimate interests with the interests of computer users and competitors.

Article 9(2)’s second requirement, that the reproduction “not conflict witha normal exploitation of the work,” aims to fortify authors’ interests in theiraccustomed markets against local legislative inroads. An obvious circular-ity underlies the requirement. At least historically, an author will normallyexploit a work only in those markets where he is assured of legal rights; bydefinition, markets for exempted uses fall outside the range of normal exploi-tation. Consequently, it might be thought that to expand an exemption is to

854. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 554–555 (1985).855. Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic

Works: 1886–1986 482 (1987).856. 1976 U.S. Copyright Act §107.



shrink the “normal market,” while to expand the definition of “normal mar-ket” is to shrink the permitted exemption. Common sense offers the surestguide out of this logical paradox. As the WIPO Guide to the Berne Conventionnotes, “[n]ovels, schoolbooks, etc., are normally exploited by being printedand sold to the public,” and these activities are consequently immunized fromany national exemption.857 Similarly, exploitation of audiovisual works ondigital compact discs would appear to be immune from exemption, even at atime when no market for licensing this use has yet formed.

Article 9(2)’s third requirement, that the reproduction “not unreasonablyprejudice the legitimate interests of the author,” permits economic fine-tuning of the “normal exploitation” measure. Under the generally acceptedview, this requirement allows payment of equitable remuneration undercompulsory licenses to overcome an otherwise unreasonable injury to theauthor’s legitimate interests.858 For example, while Article 9(2) allows coun-tries to excuse entirely the making of small numbers of private copies, it willalso tolerate more widespread, systematic copying so long as equitable re-muneration is paid to the copyright owner and the use does not interfere withthe work’s normal exploitation. The Report of Main Committee I of the 1967Stockholm Conference referred to photocopying for various purposes to dem-onstrate the relationship between Article (2)’s second and third steps: “If it[the photocopying] consists of producing a very large number of copies, itmay not be permitted, as it conflicts with a normal exploitation of the work.If it implies a rather large number of copies for use in industrial undertak-ings, it may not unreasonably prejudice the legitimate interests of the au-thor, providing that, according to national legislation, an equitable remu-neration is paid. If a small number of copies is made, photocopying may bepermitted without payment, particularly for individual or scientific use.”859

§5.5.1. Reproduction and Adaptation Rights

Legislation and case law in most Berne Union countries generally followthe Convention’s exemptions from the reproduction and adaptation rights.Exemptions and defenses roughly divide between those that excuse certainprivate uses and those excusing uses that, though public, threaten onlyinsubstantial inroads on copyright markets and at the same time serve


858. See, e.g., Sam Ricketson, The Berne Convention for the Protection of Literary and ArtisticWorks: 1886–1986 483–486 (1987); WIPO, Guide to the Berne Convention for the Protection ofLiterary and Artistic Works (Paris Act, 1971) 55–56 (1978).

859. Reports of the Five Main Committees of the Intellectual Property Conference ofStockholm 7, 26–27 (1967).

valuable societal ends. Article 9(2) of the Berne Paris Text provides the con-ventional basis for exemptions for private uses and uses that are subject toequitable remuneration. Article 9(2) also provides a possible safety net forsituations falling on the margins of the public use exceptions specificallyallowed elsewhere in the Convention.

§5.5.1.1. Private Uses

a. scholarship and private study

Legislation in most countries expressly exempts from copyright liabilitysmall numbers of copies made for purposes of research. The U.K. Act excuses“[f]air dealing with a literary, dramatic, musical or artistic work for the pur-poses of research or private study.”860 The Japanese Act makes copyingwithin a family or similarly limited circle permissible, so long as it does notemploy publicly available automatic copiers.861 The German Act exemptssingle copies for a variety of private or personal uses.862 The Italian legis-lation allows copying for a reader’s personal use “when made by hand orby a means of reproduction unsuitable for circulating or diffusing the workin public.”863

U.S. copyright law provides no categorical exemption for copies made forpurposes of scholarship. The principal source of such a privilege lies in thefair use doctrine. “Scholarship” is one of the six exemplary purposes citedby the 1976 Copyright Act864 as worthy of fair use. Private scholarly use alsofigures prominently among the examples given in the Act’s legislative his-tory of uses that would presumably qualify as fair under the statute: “quota-tion of excerpts in a review or criticism for purposes of illustration or comment;quotation of short passages in a scholarly or technical work, for illustrationor clarification of the author’s observations; use in a parody of some of thecontent of the work parodied; summary of an address or article, with briefquotations, in a news report; reproduction by a library of a portion of a workto replace part of a damaged copy; reproduction by a teacher or student of asmall part of a work to illustrate a lesson; reproduction of a work in legisla-tive or judicial proceedings or reports; incidental and fortuitous reproduc-tion, in a newsreel or broadcast, or a work located in the scene of an eventbeing reported.”865

860. United Kingdom, Copyright, Designs and Patents Act 1988 §29(1).861. Japan, Copyright Act Art. 30.862. Germany, Copyright Act Art. 53.863. Italy, Copyright Act Art. 68(1).864. The other purposes cited are “criticism, comment, news reporting, teaching (includ-

ing multiple copies for classroom use) . . . or research.” U.S. 1976 Copyright Act §107.865. U.S. House Report, 65.



b. research (including reverse engineering)

Most modest research uses of copyrighted materials are assimilated into theexemption for private scholarship. One research use that is treated separatelyfrom scholarship is reverse engineering, a process by which a software de-signer who wishes to make his program interoperate with a competitor’scomputer or computer program, reproduces the competitor’s program as anintermediate step to discovering the program’s unprotected interface specifi-cations. Copyright owners typically disseminate their programs in the formof unreadable object code rather than readable source code, so that, to dis-cern a program’s unprotected interface specifications, the software designermust analyze the object code version of the program either by “black boxanalysis” or, in some circumstances, by “disassembling” or “decompiling”the object code into human-readable form. This process invariably requiresthe software designer to copy the copyrighted program—either by loading,running, and storing the program in the course of black box analysis, or byconverting object code into human-readable form through decompilation.

Articles 5(3) and 6 of the 1991 E.C. Software Directive respectively carveout exemptions for black box analysis and decompilation.866 Article 5(3)defines the ideas susceptible to free use broadly, as it does the research pro-cesses aimed at discovering them. The provision entitles a person who hasthe right to use a copy of a computer program to observe, study, or test thefunctioning of the program in order to determine the ideas and principles thatunderlie any element of the program, if he does so “while performing any ofthe acts of loading, displaying, running, transmitting or storing the programwhich he is entitled to do.”

In contrast to Article 5(3), Article 6(1)’s decompilation exception defines thecompass of freely discoverable ideas more narrowly, but extensively privilegesthe conduct, including reproduction and decompilation, aimed at discoveringthem. Where Article 5(3) excuses observation, study, or testing to determinethe ideas and principles that underlie “any element of the program,” Article6(1) excuses the discovery only of “parts of the original program which arenecessary to achieve interoperability.” But as a counterweight, Article 6 privi-leges the competitor’s reproduction of code, “and translation of its form,” when

866. Software vendors will sometimes attempt to curtail reverse engineering through li-cense prohibitions. While Article 9(1) of the Software Directive provides that the Directive“shall be without prejudice to any other legal provisions” of Member States, such as patent,unfair competition, trade secret, and contract law, Article 9(1) specifically excepts from thisgeneral immunity, and makes “null and void,” any “contractual provisions contrary to Ar-ticle 6 or to the exceptions provided for in Article 5(2) and (3)”—the provisions representingdecompilation, backup copies, and black box analysis.

On the E.C. Software Directive generally, see Michael Lehmann & Colin Tapper, eds., AHandbook of European Software Law (1995); Bridget Czarnota & Robert Hart, Legal Protec-tion of Computer Programs in Europe: A Guide to the E.C. Directive (1991).

“indispensable to obtain the information necessary to achieve interoperabilityof an independently created computer program with other programs.” Ar-ticle 6 adds the caveat that information obtained under the first paragraph shallnot be used for developing, producing, or marketing “a computer programsubstantially similar in its expression, or for any other act which infringescopyright.” Further, Article 6 privileges decompilation to produce “compet-ing” as well as “attaching” computer programs.867

Unlike the European legislation, the U.S. Copyright Act contains no expressexemption for reverse engineering but provides the basis for excusing theresearch activity in its fair use provision. American courts have excusedcopying for purposes of uncovering unprotected interface specifications,under the same general conditions as the E.C. Software Directive. In the firstauthoritative decision on the question, the Ninth Circuit Court of Appealsruled in favor of a defendant that had copied and then disassembled the ob-ject code version of plaintiff’s videogame in order to determine the functionalspecifications that would enable its own games to operate on plaintiff’s con-sole. The court ruled that “where disassembly is the only way to gain accessto the ideas and functional elements embodied in a copyrighted computerprogram and where there is a legitimate reason for seeking such access, dis-assembly is a fair use of the copyrighted work as a matter of law.”868

Legislatures and courts sometimes excuse research uses on the ground thatthey do not impair the customary markets for a copyrighted work. In oneleading American case,869 the court held that it was fair use for the defen-dant to photocopy articles from plaintiff’s medical journals for distributionto medical researchers because the copyright owner had not shown that itwas, or would be, substantially harmed by the practice.870 Where, however,technical or institutional measures, such as collecting societies, have reducedthe transaction costs of obtaining photocopy permission, liability may beimposed. In a subsequent American photocopying decision holding that itwas not fair use for defendant to reproduce single copies from plaintiffs’ jour-nals for research purposes, the court gave substantial weight to the effect of

867. See E.C. Commission, Twentieth Report on Competition Policy, CM 60 91 410 Part II,ch. I 4(g) at 67 (Brussels, 1991): “The Commission’s concern was to ensure that a fair bal-ance was maintained between, on the one hand, the protection of the rights attaching theprogram and, on the other, the safeguarding of an economic environment that could encour-age competition and innovation in the market. . . . Decompilation is permitted to the extentnecessary to ensure the interoperability of an independently created computer program. Sucha program may connect to the program subject to decompilation. Alternatively it may com-pete with the decompiled program and in such cases will not normally connect to it.”

868. Sega Enterprises, Ltd. v. Accolade, Inc. 977 F.2d 1510, 1527–28 (9th Cir. 1992).869. Williams & Wilkins Co. v. United States, 487 F.2d 1345 (1973), aff’d by an equally

divided Court, 420 U.S. 376 (1975).870. 487 F.2d 1345, 1359.



the licensing activities of a reproduction rights organization in reducingtransactions costs.871

§5.5.1.2. Public Uses

In most cases, the Berne Convention bars member states from permittingwidespread, as opposed to private, copying of protected works unless provi-sion is made for equitable remuneration and Article 9(2)’s other two require-ments are met, or unless the exempted use comes under some other morespecific provision of the treaty.

a. parody

Parody, though nowhere expressly exonerated in the Berne text, is widelyaccepted across the Berne Union as a permitted use, presumably on theground that it meets Article 9(2)’s standards. Professor Françon has ob-served that “the very principle of the theory of parody is that the parodistmay indulge in his art without need to obtain authorization from the authorof the parodied work. It was feared that, if such authorization had to be ob-tained, it would be refused by an all too conceited author. Consequently, itseems preferable to state that no authorization was necessary and that thereis, in this respect, an exception to the author’s monopoly to exploit thework.”872 This generalization should not, however, obscure two harder ques-tions raised by parodies under national law: the point at which parody leavesoff and a derivative work begins, and the possible conflict between parodyand moral right.

Legislation in some countries specifically exempts parodies from copyrightcontrol. The French Intellectual Property Code exempts “parody, pasticheand caricature, observing the rules of the genre,” once a work has been pub-lished.873 The Spanish Copyright Act provides that a “parody of a disclosedwork shall not be considered such a transformation as requires the consentof the author, provided that it embodies no risk of confusion with that workand does no harm to the original work or its author.”874 The German Copy-right Act does not expressly provide for parodies, but Article 24’s doctrineof free use effectively gives authors breathing room to draw on themes andideas in earlier works, subject to a bar against free use of musical elements

871. American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 1994).872. André Françon, The Copyright Aspects of Parodies and Similar Works, 24 Copyright

283, 285 (1988).873. France, Intellectual Property Code Art. L 122.5(4).874. Spain, Copyright Act Art. 39.

in later works. In common law countries such as the United Kingdom andCanada, parody may be assimilated to the fair dealing exemption for thepurpose of criticism so long as the parody meets the statutory requirementof sufficiently identifying the original work and its author. There is also somesuggestion that English courts will apply a somewhat more generous in-fringement standard to parodies than they will to other works.875

In Campbell v. Acuff-Rose Music, Inc.,876 the U.S. Supreme Court’s firstparody decision, the Court offered a nominally objective test for determin-ing whether a work is in fact a parody—“whether a parodic character mayreasonably be perceived”—and concluded that defendant’s “rap” version ofplaintiff’s poignant lyric Oh, Pretty Woman could reasonably be perceivedas a parody. The conclusion that a work is a parody does not, however, con-clude the question of liability. Indeed, the Court in Campbell remanded thecase to the lower court for determination of whether defendant had borrowedexcessively from the copyrighted song and impaired its marketability.877

American courts usually hold that a claimed parody comes within the scopeof fair use if it is unlike any kind of use that the copyright owner itself couldreasonably be expected to make878 and that it falls outside the scope of fairuse if it is the kind of use that the proprietor itself could reasonably be ex-pected to make.879

b. press

Article 2(8) of the Berne Paris Text provides that “[t]he protection of thisConvention shall not apply to news of the day or to miscellaneous facts hav-ing the character of mere items of press information.”880 This provision,though it concerns subject matter rather than exemptions, is pivotal to pressuses because the subject matter it disqualifies is the standard grist of the pressmill; to bring news of the day or items of press information within copyrightcontrol could seriously hamper press operations and injure the public inter-est in being informed of newsworthy events.

As a complement to the press freedom to carry news of the day, Article10bis(2) of the Berne Paris Text makes it a matter of legislation for membercountries “to determine the conditions under which, for the purpose of re-

875. See Hugh Laddie, Peter Prescott, & Mary Vitoria, The Modern Law of Copyright and De-signs ¶2.113 (2d ed. 1995).

876. 510 U.S. 569 (1994).877. 510 U.S. at 589.878. See, e.g., Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978), cert. de-

nied, 439 U.S. 1132 (1979).879. Benny v. Loew’s, Inc., 239 F.2d 532 (9th Cir. 1956), aff’d by an equally divided Court,

356 U.S. 43 (1958).880. Berne Convention, 1971 Paris Text, Art. 2(8).



porting current events by means of photography, cinematography, broad-casting or communication to the public by wire, literary or artistic works seenor heard in the course of the event may, to the extent justified by the infor-matory purpose, be reproduced and made available to the public.”881 As theWIPO Guide to the Berne Convention observes, “[t]his is a matter of allowingthe reporting of news, within reasonable limits. It often happens that, dur-ing the reporting of current events by film or broadcast, protected works areseen or heard. Their appearance is fortuitous and subsidiary to the reportitself. For example, military music and other tunes are played on the occa-sion of a State visit or a sporting event; a microphone cannot avoid pickingthem up, even if only part of the ceremony or event is covered. It would beimpossible to seek the composer’s consent in advance.”882

Many Berne member countries have enacted exemptions for news report-ing under Berne Article 10bis(1), permitting the “reproduction by the press,the broadcasting or the communication to the public by wire of articles pub-lished in newspapers or periodicals on current economic, political or reli-gious topics, and of broadcast works of the same character, in cases inwhich the reproduction, broadcasting or such communication thereof isnot expressly reserved.”883 Article 2bis(2) of the Paris Text makes it a matterfor national legislation “to determine the conditions under which lectures,addresses and other works of the same nature which are delivered in publicmay be reproduced by the press, broadcast, communicated to the publicby wire and made the subject of public communication as envisaged inArticle 11bis(1) of this Convention, when such use is justified by the in-formatory purpose.”884

c. instruction

Many countries permit photocopying or other reproduction of copyrightedworks for purposes of instruction. The United Kingdom’s Copyright, Designsand Patents Act, for example, includes variously conditioned exemptions forcopies made for purposes of instruction or examination.885 The JapaneseCopyright Law provides more broadly worded exemptions for schools andother educational institutions.886 Authority for these exceptions can be found

881. Berne Convention, 1971 Paris Text, Art. 10bis(2).882. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 62 (1978).883. Berne Convention, 1971 Paris Text, Art. 10bis(1). The provision adds, “Nevertheless,

the source must always be clearly indicated; the legal consequences of a breach of this obliga-tion shall be determined by the legislation of the country where protection is claimed.”

884. Berne Convention, 1971 Paris Text, Art. 2bis(2).885. United Kingdom, Copyright, Designs and Patents Act 1988 §§32, 33, 35, 36.886. Japan, Copyright Act Arts. 35, 36.

in the Berne Convention’s long-standing exemption for teaching purposes,presently embodied in Article 10(2) of the Paris Text,887 as well as in the safetynet of Article 9(2).

“[N]onprofit educational purposes” and “teaching (including multiple copiesfor classroom use)”888 occupy a preferred place in the U.S. Copyright Act’sfair use calculus. Recognizing that even these specific statutory directivesleft a “need for greater certainty and protection for teachers,”889 Congressencouraged publisher and user groups to devise clear-cut guidelines for class-room uses of literary, musical, and audiovisual works that would be accept-able to both sides. The resulting book and periodical guidelines, for example,allow a teacher to make a single copy of a chapter from a book, an articlefrom a periodical or newspaper, a short story, short essay or short poem, ora chart, graph, diagram, drawing, cartoon, or picture from a book, periodi-cal, or newspaper for the teacher’s scholarly research or use in teaching orpreparation to teach a class. Teachers may also make multiple copies for usein their classes, so long as the number of copies does not exceed the numberof students in the class. Multiple copies must meet specified tests of brevity,spontaneity, and cumulative effect. The guidelines prohibit copying to cre-ate, to replace, or to substitute for anthologies, compilations or collectiveworks and also prohibit copying from “consumables” such as workbooks,exercises, standardized tests, and test booklets and answer sheets.890

d. quotation

Article 10(1) of the Berne Paris Text obligates member countries to permit“quotations from a work which has already been lawfully made available tothe public, provided that their making is compatible with fair practice, andtheir extent does not exceed that justified by the purpose, including quota-tions from newspaper articles and periodicals in the form of press summa-ries.”891 The condition that the quoted work “has already been lawfully madeavailable to the public” effectively secures the author’s reputational interest

887. According to the WIPO Guide to the Berne Convention, “[a]t the Stockholm Revi-sion (1967), it was agreed that the word ‘teaching’ included teaching at all levels—that is tosay in educational institutes, municipal and state schools and private schools. From this, onecan deduce that mere scientific research is not within the scope of the paragraph.” WIPO,Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act,1971) 60 (1978).

888. U.S. 1976 Copyright Act §107.889. U.S. House Report, 67.890. U.S. House Report, 67–70.891. Berne Convention, 1971 Paris Text Art. 10(1). Article 10(3) requires that, where a

work is quoted from under Article 10(1), “mention shall be made of the source, and of the nameof the author if it appears thereon.”



in privacy as well as his economic interest in first publication. The requirementthat the quotation be compatible with fair practice will probably turn in anycase on whether the use interferes with the market for the original work.892

Although Article 10(1) is mandatory rather than permissive, national leg-islatures are presumably free to prescribe the conditions on which quotationis permitted. The French Intellectual Property Code exempts the use of shortquotations from published works where they are “justified by the critical,polemic, educational, scientific or informational nature of the work in whichthey are incorporated”; also the name of the author and the source must beclearly stated.893 The German Copyright Act provides for quotation frompublished works for purposes of illustration in “an independent scientificwork,” in “an independent work of language,” and “in an independent mu-sical work.”894 Common law countries characteristically subject these useseither to highly particularized conditions or to the more generalized require-ments of fair dealing or fair use.895

Article 10(1) of the Berne Convention contains no express limitation on thesize of the quotation permitted and, in the view of the WIPO Guide to the BerneConvention, “it is a question of proportion and there are cases where quite largeextracts from articles or speeches fall to be quoted.”896 Legislation in severalcountries expressly permits the reproduction of art works in catalogues pre-pared for art sales or auctions.897 Nonetheless, the French Supreme Court hasruled that the reproduction of an entire work of art in an auction cataloguewithout the artist’s permission failed to qualify as a short quotation under thegoverning legislation and consequently was actionable.898

§5.5.1.3. Incidental Uses

a. ephemeral broadcast copies

National legislation will sometimes create exemptions for uses that are soclosely allied, and incidental, to primary uses that themselves come within

892. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works(Paris Act, 1971) 58–59 (1978).

893. France, Intellectual Property Code Art. L 122-5(3) (a).894. Germany, Copyright Act Art. 51.895. See generally Yves Gaubiac, Freedom to Quote from an Intellectual Work, 171 R.I.D.A.

2 (1997).896. WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works

(Paris Act, 1971) 59 (1978).897. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §63; Germany,

Copyright Act Art 58 (permitting use for purposes of public exhibition as well as auction).898. Fabris v. Loudmer, Court of Cassation (1st Civ. Chamber), January 22, 1991, 23 I.I.C.

294 (1992).

copyright control that the copyright owner can be presumed to have includedthe incidental use in any license to make the primary use. Article 11bis(3)of the Berne Paris Text contemplates one such situation in allowing mem-ber countries to determine whether and under what conditions the right tobroadcast a program includes the right to make a temporary copy for pur-poses of rebroadcasting the program, and to authorize the preservation ofrecordings of “exceptional documentary character” in official archives. TheU.S. Copyright Act permits a transmitting organization that is entitled totransmit publicly a performance or display of a work to make one copy orphonorecord of the transmission program that embodies the performanceor display. The performance or display cannot, however, be of a motion pic-ture or other audiovisual work; further, the provision requires as a condi-tion to the exemption that “(1) the copy or phonorecord is retained and usedsolely by the transmitting organization that made it, and no further copiesor phonorecords are reproduced from it; and (2) the copy or phonorecord isused solely for the transmitting organization’s own transmissions within itslocal service area, or for purposes of archival preservation or security; and,(3) unless preserved exclusively for archival purposes, the copy or phono-record is destroyed within six months from the date the transmission pro-gram was first transmitted to the public.”899

b. computer copies

The reproduction of a computer program in the course of operating a com-puter may be excluded from copyright control if it is a necessary incidentaluse. Without such an exemption, a computer user would risk being a copy-right infringer each time he started up his machine by reproducing his copyof an application program in the computer’s random access memory, andeach time he made a backup copy of the application program as a precau-tion against destruction of the original through electronic failure or opera-tor error.

Article 5(1) of the E.C. Software Directive exempts unauthorized copies andadaptations from Article 4’s reproduction and adaptation rights if “they arenecessary for the use of the computer program by the lawful acquirer in ac-cordance with its intended purpose, including for error correction.” Article5(2) provides that “The making of a backup copy by a person having a rightto use a computer program may not be prevented by contract insofar as it isnecessary for that use.”

The U.S. Copyright Act provides that it is not copyright infringement forthe owner of a copy of a copyrighted computer program to make, or toauthorize the making of, another copy of the program, if the copy is created

899. U.S. 1976 Copyright Act §112(a).



as an “essential step in the utilization of the computer program” in connec-tion with the computer, and “in no other manner,”900 or if the copy is “forarchival purposes only and . . . all archival copies are destroyed in the eventthat continued possession of the computer program should cease to be right-ful.”901 The provision carves out a parallel exemption from the derivativeright to enable necessary adaptations of computer programs, and it modi-fies the distribution right as applied to computer programs put to these uses.

Courts have generally construed the “essential step” language narrowly,confining the exemption to the process of copying a computer program intothe computer’s random access memory each time the program is used, anderasing the program each time the computer is turned off.902 Similarly, courtshave construed the archival copy exemption narrowly and in light of theconcern that occasioned its adoption: to guard against destruction or dam-age by mechanical or electrical failure.903 The provision requires that, to beexempted from infringement, the otherwise infringing copy must be madeor authorized by “the owner of a copy of the computer program.”

The exemptions for copies made as an essential step in the use of a com-puter program or for archival purposes has in the United States been heldnot to encompass the transitory reproduction of computer programs in thecourse third-party computer maintenance.904 However, a 1998 amendmentto the 1976 Copyright Act has exempted copies that are made of an autho-rized copy of the computer program in the course of running a computer “forpurposes only of maintenance or repair of that machine.” The new copycannot be used in any other manner and must be destroyed “immediatelyafter the maintenance or repair is completed.”905

§5.5.1.4. Exhaustion (First Sale)

The exhaustion, or “first sale,” doctrine implies that once a copyright ownerhas parted with title to a copy of his work, successive possessors of the copyshould not have to negotiate with him each time they contemplate a furthersale or other transfer of the copy. In the usual case, such as the sale of a paper-bound novel, the copyright owner will have no economic interest in under-taking the expense of such additional negotiations. In the exceptional case,such as the sale of phonograms and computer programs, the copyright owner

900. U.S. 1976 Copyright Act §117(a) (1).901. U.S. 1976 Copyright Act §117(a) (2).902. See, e.g., Sega Enterprises Ltd. v. Accolade, Inc. 977 F.2d 1510, 1520 (9th Cir. 1992).903. See, e.g., Atari, Inc. v. JS&A Group, Inc., 597 F.Supp. 5 (N.D. Ill. 1983).904. MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993), cert. dis-

missed, 510 U.S. 1033 (1994).905. U.S. 1976 Copyright Act §117(c).

may wish to bring subsequent disposition of copies under copyright control—not to profit from a rental or resale market, but to stifle the unlawful repro-duction of rented copies.

One implication of exhaustion doctrine for international copyright trans-actions is that national law may hold that sale of copies exhausts the copy-right owner’s control within a country’s boundaries but not outside them,with the result that copies cannot be imported from abroad without the copy-right owner’s consent. The economic significance of such a rule lies in thepractice of price discrimination—pricing copies differentially from countryto country on the basis of relative demand for a work, and the relative abil-ity of local markets to pay for it. To the extent that the distribution right isexhausted across borders, price discrimination is effectively defeated.

The fact that not all countries have adopted a discrete distribution right hascomplicated definition of the exhaustion doctrine. In the European Union,where some countries have a distribution right and others do not, the E.C.Software and Database Directives have, respectively, required member statesto define public distribution as a restricted act for copyrighted computer pro-grams and databases, subject, however, to exhaustion upon first sale of copieswithin the Community.906 Outside the boundaries of these Directives, the Euro-pean Court of Justice, applying Article 36 of the E.C.C. Treaty, has establishedthe principle that once a copy of a copyrighted work is sold with the copyrightowner’s authority in one member country, the right to control further distri-bution is exhausted in any other member country; the rule on exhaustion doesnot, however, extend to countries outside the European Community.907

The first sale doctrine in the United States carves out a major exception tothe distribution right by providing that “the owner of a particular copy orphonorecord lawfully made under this title, or any person authorized by suchowner, is entitled, without the authority of the copyright owner, to sell orotherwise dispose of the possession of that copy or phonorecord.”908 By cen-tering its exemption on the “owner” of a copy or phonorecord, the provisionmay make it appear that the copyright owner could restrict transfers by bor-rowers and licensees to whom the owner of the copy or phonorecord hadtransferred possession but not title. Nonetheless, the provision’s clear intentwas to adopt the long-standing principle that a copyright owner exhaustsits rights to distribute copies or phonorecords of its work upon the sale of eachcopy or phonorecord so that, once the copyright owner parts with owner-ship, everyone in the succeeding chain of title—owners and nonownersalike—will enjoy the privilege.

906. E.C. Software Directive, Art. 4(c); E.C. Database Directive, Art. 5(c).907. See, e.g., Deutsche Grammophon v. Metro, Case 78/70 [1971] ECR 487. See gener-

ally Moritz Röttinger, The Exhaustion of Copyright, 157 R.I.D.A. 50 (1993).908. U.S. 1976 Copyright Act §109(a).



Section 602(a) of the U.S. Copyright Act makes the unauthorized impor-tation into the United States of copies or phonorecords acquired outside theUnited States an infringement of the exclusive distribution right. Courts havegenerally held that section 109(a)’s first sale defense is not available to im-porters who acquired ownership of gray market copies or phonorecords law-fully made abroad.909 Courts have also held that the first sale defense is notavailable to a seller who acquired ownership in the United States of copiesor phonorecords that, though lawfully made abroad, were unlawfully im-ported;910 the defense will apply “to copies made abroad only if the copieshave been sold in the United States by the copyright owner or with its au-thority.”911 In Quality King Distributors, Inc. v. L’Anza Research International,Inc.912 the U.S. Supreme Court addressed a third situation: where copyrightedgoods lawfully made in the United States are shipped abroad for resale andsubsequently reintroduced into the United States by the foreign purchaser.The Court ruled that in these circumstances the first sale defense applied.

§5.5.1.5. Other Exemptions

Outside the Berne Convention’s general framework for exempting particu-lar private and public uses of copyrighted works, national legislatures havecarved out a variety of exemptions to accommodate rights in these works tolocal political and cultural traditions. These exemptions reflect a balancedregard for two distributional concerns: the need of authors to be compen-sated for use of their works, and the need of characteristically underfunded,but socially vital, institutions—schools and libraries, for example—to enjoyaccess to literary and artistic works. For example, the Japanese CopyrightAct exempts library photocopying913 and braille reproductions of publishedworks,914 subject to prescribed limitations. The German Copyright Act per-mits reproduction and distribution of limited parts of published works inanthologies exclusively for religious, school, or instructional use, subject tothe author’s right of equitable remuneration.915 The British legislation cre-ates exemptions for school and library photocopying.916

909. See, e.g., Parfums Givenchy, Inc. v. Drug Emporium, Inc., 38 F.3d 477 (9th Cir. 1994),cert. denied, 514 U.S. 1004 (1995).

910. Columbia Broadcasting System, Inc. v. Scorpio Music Distributors, Inc., 569 F.Supp. 47,(E.D. Pa. 1983), aff’d, without op. 738 F.2d 424 (3d Cir. 1984).

911. Denbicare U.S.A. Inc. v. Toys “R” Us, Inc., 84 F.3d 1143, 1150 (9th Cir.), cert. denied,519 U.S. 873 (1996).

912. 523 U.S. 135 (1998).913. Japan, Copyright Act Art. 31.914. Japan, Copyright Act Art. 37.915. Germany, Copyright Act Art. 46.916. United Kingdom, Copyright Designs & Patents Act 1988 §§36–43.

The U.S. Copyright Act carves out exemptions from the reproduction rightto facilitate copying by archives or libraries for purposes of interlibrary loanand for purposes of preservation or security. The Act allows a library or ar-chives to reproduce and distribute not more than one copy or phonorecord ofa work under specified conditions.917 The privilege to reproduce “no more thanone copy” means no more than one copy at a time, and the provision expresslypermits “the isolated and unrelated reproduction or distribution of a single copyor phonorecord of the same material on separate occasions.”918 Where copiesare made for such essential library purposes as preservation, security, or re-placement of a deteriorating copy, the provision places no limit on the kindsof copyrighted works to which the exemption applies. Where, however, cop-ies are made for patrons, the Act excludes from the exemption musical works,pictorial, graphic, or sculptural works, and motion pictures or other audiovi-sual works “other than an audiovisual work dealing with news.”919

§5.5.1.6. Statutory Licenses (Equitable Remuneration)

Legislative arrangements for equitable remuneration occupy a position on thecontinuum of copyright and author’s right somewhere between exclusiverights and absolute exemptions. In strictly economic terms, these arrange-ments reflect the legislator’s judgment that to extend an exclusive right wouldhamper socially important uses, typically because of the high transaction costof negotiating a license, but that to make the use entirely free would seriouslyimpair needed rewards for the author. Compulsory licenses trade the bargain-ing power conferred by the prospect of injunctive or other coercive relief for amonetary award aimed at approximating the sum a reasonable licensee wouldin good faith offer and a reasonable copyright owner would in good faith ac-cept. Institutional and technological innovations such as collecting societiesand electronic contracting will sometimes obviate compulsory licenses. Forexample, the United Kingdom’s 1988 Copyright, Designs and Patents Act en-courages collective licensing in situations where compulsory licenses repre-sent only a second-best solution. To stimulate the formation of the necessarycollecting agencies, the Act expressly exempts specified classes of use unlesscertified licensing arrangements come into place to administer the uses.920

917. U.S. 1976 Copyright Act §108(a).918. U.S. 1976 Copyright Act §108(g).919. U.S. 1976 Copyright Act §108(i).920. See, e.g., United Kingdom, Copyright, Designs and Patents Act 1988 §§35 (educational

recording of broadcasts and cable programs), 60 (copying of scientific or technical abstracts),74 (copying for handicapped). See generally William Cornish, Intellectual Property 380–381 (3ded. 1996).



Apart from an express provision governing compulsory licenses for mechani-cal reproduction of musical works,921 and for certain uses in developing coun-tries,922 Article 9(2) of the Berne Paris Text provides the Convention’s exclu-sive basis for equitable remuneration. Article 9(2) requires that all three ofits conditions be met before a member country can entirely excuse a use, butit treats the third requirement—that a reproduction “not unreasonablyprejudice the legitimate interests of the author”—as met if equitable remu-neration is ensured.923 As in the case of the public lending right, argumentshave been made that some equitable remuneration schemes involving re-prography and home audiotaping and videotaping implicate neither copy-right nor author’s right and so are exempt not only from the Convention’sbars on compulsory licenses, but also from Article 5(1)’s requirement ofnational treatment.924

National arrangements for compulsory licensing divide into three groups:mechanical recording of musical works,925 “private” copying such as homeaudio- and videotaping and reprography,926 and translation and reproduc-tion of protected works in developing countries.927

a. musical works

Article 13(1) of the Berne Paris Text allows member countries to impose “res-ervations and conditions on the exclusive right granted to the author of amusical work and to the author of any words, the recording of which togetherwith the musical work has already been authorized by the latter, to autho-rize the sound recording of that musical work, together with such words, ifany: but all such reservations and conditions shall apply only in the coun-tries which have imposed them and shall not, in any circumstances, be preju-dicial to the rights of these authors to obtain equitable remuneration which,in the absence of agreement, shall be fixed by competent authority.”928 Not

921. See §5.5.1.6A, below.922. See §5.5.1.6.C, below.923. Berne Convention, 1971 Paris Text, Art. 9(2).924. See, e.g., Peter F. Burger, The New Photocopy Remuneration Provisions in the Fed-

eral Republic of Germany and Their Application to Foreign Authors under International Copy-right Law (Parts I and II), 19 I.I.C. 319 (1988), and 19 I.I.C. 488 (1988); Walter Dillenz, TheRemuneration for Home Taping and the Principle of National Treatment, 26 Copyright 186(1990).

925. See §5.5.1.6.A, below.926. See §5.5.1.6.B, below.927. See §5.5.1.6.C, below.928. Berne Convention, 1971 Paris Text, Art. 13(1).Provision for mechanical compulsory licenses for music was introduced into the Berne

Convention in the 1908 Berlin Act. Until the 1967 Stockholm Revision, the provision encom-passed compulsory licensing for public performances from recorded compositions as well as

all Berne countries have adopted a mechanical recording license, and Ar-ticle 13(3) effectively makes the license territorial: “Recordings made inaccordance with paragraphs (1) and (2) of this Article and imported with-out permission from the parties concerned into a country where they aretreated as infringing recordings shall be liable to seizure.”

The structure of the mechanical license may vary from country to coun-try. The German Copyright Act provides that where a phonogram producerhas been granted the right to reproduce and distribute recordings of a musi-cal work for commercial purposes, the work’s author shall be required togrant to any other qualified producer “an exploitation right with the samecontent on reasonable conditions.”929 The provision also suspends the effectof the compulsory license if the exploitation right is “lawfully administeredby a collecting society or if the work no longer reflects the author’s convictionsand he therefore can no longer be expected to agree to the exploitation of hiswork and he has for that reason revoked any existing exploitation right.”

In the United States, a nondramatic musical work will first become sub-ject to compulsory licensing when phonorecords of the work have been dis-tributed to the public within the United States by authority of the copyrightowner.930 By following the statutory procedures and paying the specifiedroyalties, the prospective copier becomes entitled to a compulsory license tomake and to distribute phonorecords of the copyrighted work. However, thecompulsory license is available only if the licensee’s “primary purpose inmaking phonorecords is to distribute them to the public for private use”;931

further, the mechanical licensee has only a limited adaptation privilege andis permitted to make changes to the work only to the extent necessary toconform it to the licensee’s “style or manner of interpretation.”932

The U.S. Copyright Act was amended in 1995 to extend the mechanicalcompulsory license to include “the right of the compulsory licensee to dis-tribute or authorize the distribution of a phonorecord of a nondramaticmusical work by means of a digital transmission which constitutes a digitalphonorecord delivery.”933 The Act defines the operative term, “digital phono-record delivery,” as “each individual delivery of a phonorecord by digital

reproduction in records. “It became clear, with the increasing public use of discs, and sincepublic performance by this means was almost invariably covered by contract, that there wasno longer any need for compulsion, and the scope of compulsory licensing could be confinedto the act of recording. This was done in Stockholm (1967) and confirmed at Paris (1971).”WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act,1971) 79 (1978).

929. Germany, Copyright Act Art. 61930. U.S. 1976 Copyright Act §115.931. U.S. 1976 Copyright Act §115(a) (1).932. U.S. 1976 Copyright Act §115(a) (1).933. U.S. 1976 Copyright Act §115(c) (3).



transmission of a sound recording which results in a specifically identifiablereproduction by or for any transmission recipient of a phonorecord of thatsound recording, regardless of whether the digital transmission is also apublic performance of the sound recording or any nondramatic musical workembodied therein.”934

b. private copies

Well into the twentieth century, private copying rarely entailed more thanhand copying by a researcher of a passage from a text or copying by a teacherof materials into a lesson book—activities that easily came within the ex-ceptions to the reproduction right permitted by Article 9(2) of the BerneConvention. But by the latter part of the century, with the massive prolif-eration of photocopies, audiotapes, and videotapes, nominally private activitiesbegan seriously to undermine the economic interests of copyright owners.Some national legislatures responded with equitable remuneration schemeson the premise that, though the new copying technologies did not conflictwith the normal exploitation of copyrighted works, they did unreasonablyprejudice the legitimate interests of authors, a condition that Article 9(2)allows equitable remuneration to cure.935

The German legislation establishes a tithing system for photocopies, im-posing a levy both on manufacturers of photocopying equipment and onthose who operate the equipment—educational and research institutionsincluding schools, universities, and vocational training institutions andpublic libraries, as well as copy shops.936 In France the Intellectual PropertyCode contemplates photocopying licenses administered by one or more re-prographic collecting societies.937 The British Copyright, Designs and Pat-ents Act strikes a balance between private initiative and government regu-lation in establishing the terms for educational photocopying by prescribinglimited exemptions in default of negotiated licenses; subjecting licenses to

934. U.S. 1976 Copyright Act §115(d).935. Photocopying in library and workplace might not seem to qualify as “private” copy-

ing, and the widespread availability of collective licensing arrangements from national soci-eties under the umbrella of the International Federation of Reproduction Rights Organiza-tion (IFFRO) may imply that unlicensed copying conflicts with the normal exploitation ofcopyrighted works. Nonetheless, equitable remuneration has been installed as a solution tothe economic inroads of reprography. See generally Peter F. Burger, The New Photocopy Re-muneration Provisions in the Federal Republic of Germany and Their Application to ForeignAuthors under International Copyright Law (Parts I and II), 19 I.I.C. 319, and 19 I.I.C. 488(1988).

936. Germany, Copyright Act Art. 54(2). For a discussion of the provision’s application,see Adolf Dietz, News from Germany, 176 R.I.D.A. 166, 194–200 (1998).

937. France, Intellectual Property Code Arts. L 121-10 through L 121-12.

review by the Copyright Tribunal; implying an indemnity under which thegrantor of a blanket license effectively warrants that the license encompassesall works within the class covered and not just those over which the licensoractually possesses legal authority; and authorizing the Secretary of State toexpand the license to encompass similar works.938

National legislation on home taping usually takes the form of a levy ontapes, equipment, or both. For example, the German and Spanish legisla-tion imposes a levy on both equipment and blank media,939 while the Frenchlegislation imposes the levy on blank media only.940 According to one surveyof home taping legislation, “all sorts of solutions are to be found, rangingfrom a pure tax without any participation on the part of copyright ownersto pure copyright royalties. In particular, there are solutions in which theremuneration for home taping is devised as a copyright royalty, yet onlypart of it is distributed to individual copyright owners while another partgoes to collective purposes which do not benefit authors, especially foreignones, either by virtue of the law or in fact.”941 The German statute treatsthese levies strictly as a royalty payable to authors in compensation for ause under author’s right; under the national treatment principle, the leviesare paid to qualifying foreign as well as domestic authors. Other nationalschemes divide revenues in varying proportions between payments to nationaland foreign authors and social and cultural funds dedicated entirely todomestic uses.942

Regulation of private taping in the United States focuses on digital repro-duction and combines technical measures, levies on recording devices andmedia, and outright exemption. The Audio Home Recording Act of 1992943

prohibits the manufacture, importation, or distribution of digital recordingdevices that are not equipped with a “Serial Copy Management System” thatdisables the device from copying a copy of a digital audio recording. The Actalso imposes a levy on digital audio recording devices and digital recordingmedia, with the royalties to be collected by the Copyright Office and distrib-uted by a Copyright Arbitration Royalty Panel, and it immunizes “noncom-mercial” taping of copyrighted works from suits for copyright infringement,whether the technology employed is digital or analog.

938. United Kingdom, Copyright, Designs and Patents Act 1988 §§36, 136–137; 140–141.See generally William Cornish, Intellectual Property 437 (3d ed. 1996).

939. Germany, Copyright Act Art. 54; Spain, Copyright Act Art. 25.940. France, Intellectual Property Code Art. 311-4.941. Walter Dillenz, The Remuneration for Home Taping and the Principle of National

Treatment, 26 Copyright 186, 192 (1990).942. See Walter Dillenz, The Remuneration for Home Taping and the Principle of National

Treatment, 26 Copyright 186, 187 (1990).943. Pub. L. No. 102-563, 106 Stat. 4237 (1992). The act appears as Chapter 10 of 17 U.S.

Code.



c. reproduction and translation indeveloping countries

Economically developing countries must often strike the copyright balancedifferently than economically developed countries, favoring free use, or at leastcompulsory licenses, to meet deep-seated educational needs. Before their in-dependence, many of these countries were colonies of early Berne Union mem-bers, a political fact that effectively committed them to the Convention’s mini-mum standards of exclusive rights. While political independence might haveimplied that these countries could free themselves of Berne’s shackles and relyinstead on the Universal Copyright Convention with its lower minimum stan-dards, Article XVII of the Universal Copyright Convention, the so-called BerneSafeguard Clause,944 barred them from defecting to the U.C.C. Specifically, theBerne Safeguard Clause denied U.C.C. protection in Berne countries to worksoriginating in a country that withdrew from Berne in favor of the U.C.C. Be-ginning in late 1963, the governing bodies of the Berne Union and the U.C.C.responded to mounting pressure from the developing countries and, after atumultuous 1967 Conference in Stockholm, engineered a compromise, withrevisions of both Berne and the U.C.C. signed in Paris on July 24, 1971.945

The Paris compromise is embodied in an appendix to the Berne Conven-tion entitled “Special Provisions Regarding Developing Countries,” and inArticles Vbis–Vquater of the U.C.C. The Paris Texts revised the Berne Safe-guard Clause by denying U.C.C. protection in Berne countries to any mem-ber that withdrew from Berne in favor of the U.C.C., but exempting a devel-oping country from the Safeguard Clause if, at the time it withdrew fromBerne, it issued the prescribed notification that it is a developing country.946

Roughly parallel provisions of the 1971 Berne and U.C.C. Paris Textssubject both the translation right and the reproduction right to compulsorylicenses in developing countries.947 In the case of the translation right, quali-fying countries may replace exclusive rights with nontransferable, nonex-

944. Universal Copyright Convention, 1971 Paris Text Art. XVII(2) and Appendix Decla-ration Relating to Article XVII.

945. On the history of the revisions, see generally Nora Maija Tocups, The Developmentof Special Provisions in International Copyright Law for the Benefit of the Developing Coun-tries, 29 Bull. Copr. Soc’y 402 (1982); Charles F. Johnson, The Origins of the Stockholm Pro-tocol, 18 Bull. Copr. Soc’y 91 (1970); Irwin A. Olian, Jr., International Copyright and the Needsof Developing Countries: The Awakening at Stockholm and Paris, 7 Cornell Int’l L.J. 81, 95–97 (1974); Robert D. Hadl, Toward International Copyright Revision: Report on the Meetingsin Paris and Geneva, September 1970, 18 Bull. Copr. Soc’y 183 (1970).

946. Universal Copyright Convention, 1971 Paris Text, Appendix Declaration relating toArticle XVII.

947. On qualification as a “developing country,” see Berne Convention, 1971 Paris Text,Appendix, Special Provisions Regarding Developing Countries Art. I(1) (“Any country re-garded as a developing country in conformity with the established practice of the General As-sembly of the United Nations which ratifies or accedes to this Act, of which this Appendix forms

clusive licenses under conditions that include the expiration of at least threeyears from a work’s publication, if a translation “has not been published ina language in general use in that country by the owner of the right of trans-lation,” provided that the license “shall be granted only for the purpose ofteaching, scholarship or research.”948 In the case of the reproduction right,the compulsory license is limited to copies made for use in systematic instruc-tional activities and is available if copies have not, within five years of pub-lication, been distributed for this purpose at a reasonable price; in the caseof works in the natural and physical sciences the minimum period is reducedto three years, and in the case of fiction, poetry, drama, music, and art booksit is increased to seven years.949 No compulsory license can allow the exportof copies from the qualifying country.950

§5.5.2. Performance, Broadcast, and Communication Rights

Performances, broadcasts, and similar communications of copyrighted worksare intangible and evanescent and are consequently more difficult and costlyto monitor and enforce than are tangible uses. This difficulty doubtless ex-plains why collecting societies, with their blanket licenses aimed at overcom-ing the high transaction costs of negotiated performance licenses, made theirfirst appearance in the context of the performance right. The robust and effi-cient operation of the musical performance right societies in turn explainswhy exemptions and compulsory licenses have generally not been neededto accommodate the performance right to market realities.951

an integral part, and which, having regard to its economic situation and its social or culturalneeds, does not consider itself immediately in a position to make provision for the protectionof all the rights as provided for in this Act, may, by a notification deposited with the DirectorGeneral at the time of depositing its instrument of ratification or accession or, subject to Ar-ticle V(1)(c), at any time thereafter, declare that it will avail itself of the faculty provided for inArticle II, or of the faculty provided for in Article III, or of both of those faculties. It may, in-stead of availing itself of the faculty provided for in Article II, make a declaration according toArticle V(1) (a).”)

See also Universal Copyright Convention, 1971 Paris Text Art. Vbis.948. Berne Convention, 1971 Paris Text, Appendix Arts. II(2) (a) and (5). See also Univer-

sal Copyright Convention 1971 Paris Text, Art. Vter.949. Berne Convention, 1971 Paris Text, Appendix Art. III. See also Universal Copyright

Convention, 1971 Paris Text, Art. Vquater.950. Berne Convention, 1971 Paris Text, Appendix Art. IV(4)(a). See also Universal Copy-

right Convention, 1971 Paris Text, Arts. Vter(4)(a), Vquater 1(f).951. In some respects the operations of music collecting societies, albeit under the shelter

of the exclusive performance right, approximate schemes of equitable remuneration in thosesituations where their proposed rates to users are subject to administrative or judicial review.On the operation of copyright collecting societies, see §5.2.2.3, above.



Unlike the public performance right, the Berne Convention’s later-addedguarantees of broadcasting, retransmission, and public communication rightspermit member states to qualify these exclusive rights. Article 11bis(2),which makes it a matter for local legislation to determine the conditionsunder which these rights may be exercised, also imposes three limitationson the legislative prerogative.952 One is that the conditions shall not impairthe author’s “right to obtain equitable remuneration which, in the absenceof agreement, shall be fixed by competent authority,” a limitation thatundergirds the widespread use of compulsory licenses in this field. Second,any such conditions are bounded by the territory of the country prescribingthem. The third requirement, that the conditions “shall not in any circum-stances be prejudicial to the moral rights of the author,” is in any event pre-sumably implied in the case of all such restrictions on authors’ rights underBerne.953

§5.5.2.1. Instructional and Other Nonprofit Uses

Legislation in many countries exempts instructional and other nonprofitperformances and displays on the ostensible ground that these worthy, andcharacteristically underfunded, institutions deserve special support from thecopyright system. The British Copyright, Designs and Patents Act, for ex-ample, exempts the performance of sound recordings by nonprofit organi-zations for charitable purposes,954 and the German statute exempts certainperformances in schools and welfare organizations.955 In certain other non-profit settings, the German legislation provides for equitable remuneration,956

as does the Japanese Copyright Act in the case of classroom broadcasts andcablecasts.957 The French Intellectual Property Code provides for the pay-ment of reduced royalties for performances in educational institutions as wellas at municipal fairs.958

The U.S. Copyright Act exempts certain performances and displays madein the course of direct or broadcast instructional activities. One provision ex-empts the performance of all forms of copyrighted works “by instructors orpupils in the course of face-to-face teaching activities of a nonprofit educational

952. Berne Convention for the Protection of Literary and Artistic Works, 1971 Paris Text,Art. 11bis(2).

953. See Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:1886–1986 526 (1987).

954. United Kingdom, Copyright, Designs and Patents Act 1988 §67.955. Germany, Copyright Act Art 52(1).956. Germany, Copyright Act Art. 52(1), (2).957. Japan, Copyright Act Art. 34.958. France, Intellectual Property Code Art. L 132-21.

institution, in a classroom or similar place devoted to instruction.”959 A sec-ond provision exempts performances given in connection with transmissionsfor specified instructional purposes and to specified instructional settings.960

The 1976 Act also provides qualified exemptions from the performance anddisplay rights for religious services,961 educational, religious, or charitable pur-poses,962 and transmissions to handicapped individuals.963

§5.5.2.2. Incidental Uses

Performance of a work in a public place such as a restaurant or bar willgenerally come within copyright control even though the place is fre-quented for purposes other than viewing or hearing the work performed.Typically, the works in issue are musical, and in many cases a blanketlicense from the musical performing rights society will cover the perfor-mance. In some places, however, such incidental uses will be subject toequitable remuneration.

The U.S. Copyright Act carves out an exemption for public performanceor display in certain situations where equipment, such as a television or radioreceiver carrying a broadcast performance or display, is turned on in a pub-lic place. As originally enacted, section 110(5) provided a “homestyle” ex-emption that pivots on three conditions: reception of the transmission em-bodying the performance or display must be on a single receiving apparatusof a kind commonly used in private homes, no direct charge can be made tosee or hear the transmission, and the transmission thus received cannot befurther transmitted to the public.964 The provision was amended in 1998 tomake the nature and size of the establishment in which the transmission isreceived an alternative basis for exemption.965 In 2000, a W.T.O. panel con-cluded that section 110(5)’s “homestyle” exemption met the requirementsof Article 13 of the TRIPs Agreement, but that the subsequently enacted es-tablishment exemption did not meet the requirements of Article 13 and wasthus inconsistent with Articles 11(1) (ii) and 11bis(1) (iii) of the Berne Con-vention Paris Act, as incorporated into the obligations imposed by the TRIPsAgreement.966

959. U.S. 1976 Copyright Act §110(1).960. U.S. 1976 Copyright Act §110(2).961. U.S. 1976 Copyright Act §110(3).962. U.S. 1976 Copyright Act §110(4).963. U.S. 1976 Copyright Act §110(8), (9).964. U.S. 1976 Copyright Act §110(5) (A).965. U.S. 1976 Copyright Act §110(5) (B).966. United States—Section 110(5) of the U.S. Copyright Act, Report of the Panel, W.T.O.,

WT/DS 160/R (2000).



§5.5.2.3. Cable Retransmission

Since the emergence of cable television as an economically significant me-dium, the questions whether and how it should be brought within copyrightcontrol has been complicated by concerns that transaction costs and thecompeting interests of program owners and broadcasters might unduly ham-per cable operations. Although some European Community members favoredstatutory licenses as the answer to these concerns, the 1993 E.C. Directiveon Satellite Broadcasting and Cable Retransmission ultimately settled on aqualified regime of exclusive rights. Article 8 of the Directive establishes theprinciple that when a program is retransmitted from a member country, thereceiving country shall ensure “that such retransmission takes place onthe basis of individual or collective contractual agreements between copy-right owners, holders of related rights and cable operators.” Articles 9(1) and10 effectively mandate collective licensing arrangements for all copyrightowners other than broadcasting organizations in connection with their owntransmissions, and Article 11 provides for mediation in cases where Agree-ment cannot be reached on terms for cable retransmission.

Section 111 of the U.S. Copyright Act deals with the retransmission of pri-mary transmissions containing performances or displays, and it focuses pri-marily, but not exclusively, on the operations of cable television systems.967

Section 111 establishes three categories of liability for secondary transmis-sions that come within its scope. First, among other uses, the Act entirelyexempts secondary transmissions by common carriers, by hotels for guests,and for instructional broadcasts.968 Second, the Act provides that, subjectto prescribed conditions, secondary transmissions to the public by a cablesystem of a primary transmission made by a broadcast station licensed bythe appropriate governmental authority in the United States, Canada, orMexico will be subject to compulsory licensing “where the carriage of thesignals comprising the secondary transmission is permissible under the rules,regulations, or authorizations of the Federal Communications Commis-sion.”969 Finally, the Act subjects to full liability any secondary transmissionfalling outside the scope of the exemptions and compulsory license, or notmeeting their conditions.970

Satellite retransmissions of copyrighted works may also qualify for a com-pulsory license. Section 119 of the U.S. Copyright Act gives satellite carriers

967. Section 119 of the 1976 Act creates comparable rules for secondary transmissions ofsuperstations and network stations, and section 118 grants public broadcasting entities acompulsory license to perform published nondramatic musical works in the course of a trans-mission made by a noncommercial educational broadcast station.

968. U.S. 1976 Copyright Act §111(a).969. U.S. 1976 Copyright Act §111(c) (l).970. U.S. 1976 Copyright Act §111(b).

and their authorized distributors a statutory license to retransmit specifiedtelevision transmissions to the public for private home viewing upon com-pliance with prescribed conditions. A central condition to the statutorylicense for network station retransmissions is that the retransmissions be toindividuals residing in “unserved households,” typically rural householdsthat cannot receive clear over-the-air signals of the national television net-works. Section 122 of the U.S. Copyright Act gives satellite operators aroyalty-free statutory license to retransmit local television broadcast stationsignals to customers in the same local market.

§5.5.3. Misuse and Abuse of Copyright

It is a much vexed question whether, and in what circumstances, courts willquestion a copyright owner’s motives in refusing to license its work on rea-sonable terms or on any terms at all. One writer, noting the existence of adoctrine of abuse of rights in French civil law, observed, “the fact neverthe-less remains that it is a delicate matter to use this notion in literary and ar-tistic property law. Indeed, it may be difficult to accept the principle thatauthors may misuse their rights because it leads quite simply to the removalof the sacred aura surrounding those whom the gentlemen of the Enlight-enment labelled ‘the most respectable citizens.’”971

The Berne Convention’s rigorous limitations on exemptions and statutorylicenses reflect the special relationship that exists between an author and hisintellectual creation. Since the explanation for this general deference to au-thorial autonomy lies in the special qualities of artistic endeavor, it is nocoincidence that inroads on this autonomy through the doctrine of abuse ofcopyright, or cognate doctrines, have occurred in cases involving factual orfunctional works possessing a low degree of authorship. For example, in themuch discussed Magill decision972 the European Court of Justice ruled thatit was an abuse of dominant position under Article 86 of the E.C. Treaty, andbeyond the proper function of copyright as contemplated by Article 36 of theTreaty, for three television broadcasters to refuse to license their copyrightedweekly program listings to Magill, which wanted to publish a comprehen-sive television guide incorporating the program information of the threebroadcasters. The court noted that mere ownership of copyright does notconfer a dominant position, but that the broadcasters’ de facto monopoly overtheir own programming information put them “in a position to prevent effec-

971. Christophe Caron, Abuse of Rights and Author’s Rights (1), 176 R.I.D.A. 2, 4 (1998)(emphasis in the original).

972. Radio Telefis Eireann (RTE) and Independent Television Publications Ltd. (ITP) v. Com-mission, Cases C-242 and 242/91 P [1995] ECR I 743.



tive competition on the market in weekly television magazines,” effectivelya dominant position. In the court’s view, the broadcasters’ “refusal to pro-vide basic information by relying on national copyright provisions thus pre-vented the appearance of a new product, a comprehensive guide to televi-sion programmes, which the appellants did not offer and for which there wasa potential consumer demand,” constituting abuse of dominant positionunder Article 86 of the Treaty.973

In the United States an infringer may invoke the defense of copyright mis-use by showing that the copyright owner has violated a specific legal normin enforcing its copyright, with consequent injury to the infringer. The op-erative legal norm will typically be embodied in general rules on unfair com-petition or antitrust policy.974 As in other countries, the misuse defense hasbeen strongest where the justification for copyright is weakest—cases involv-ing fact works or functional works such as computer programs. In one case,for example, the court held that where a competing microprocessor carddeveloped for use on plaintiff’s phone switches had to be compatible withplaintiff’s operating system software, and where, to achieve compatibility,defendant competitor had to make a copy of the copyrighted operating sys-tem in order to test the card, defendant could prevail on a misuse defensebecause plaintiff was using “its copyright to obtain a patent-like monopolyover unpatented microprocessor cards.”975

§5.6REMEDIES

Historically, treaties have provided few minimum standards on the remediesfor copyright infringement. The Berne Convention, for example, generallyleaves “means of redress” to local legislation976 and imports a specific reme-dial requirement only in the provisions of Articles 13 and 16 on seizure ofinfringing copies.977 International copyright agreements did not begin tointroduce minimum standards for a generalized system of remedies until the

973. Id. at ¶¶ 46–56.974. See Paul Goldstein, 2 Copyright §9.6.1 (2d ed. 1996).975. DSC Communications Corp. v. DGI Technologies, Inc., 81 F.3d 597, 601 (5th Cir. 1996).976. See, e.g., Berne Convention, 1971 Paris Text, Arts. 5(2) and 6bis(3). “Although the

Convention does not say so expressly except in relation to seizure, all sanctions on infringersare left to national legislation. Remedies may be civil, criminal or administrative: injunctions,damages, fines and/or prison sentences are examples. The courts can usually be trusted tomitigate the punishment when lenience for the infringer is deserved.” WIPO, Guide to theBerne Convention for the Protection of Literary and Artistic Works (Paris Act, 1971) 98 (1978).

977. Berne Convention, 1971 Paris Text, Arts. 13(3) and 16.

end of the twentieth century. The TRIPs Agreement, signed in 1994, imposesa comprehensive set of remedial standards, requiring local judicial authori-ties to have power to issue injunctions,978 assess damages,979 order seizureand disposition of offending goods,980 and impose border controls.981 The1996 WIPO Copyright Treaty and the WIPO Performances and PhonogramsTreaty require contracting parties to “ensure that enforcement proceduresare available under their law so as to permit effective action against any actof infringement of rights covered by this Treaty, including expeditious rem-edies to prevent infringements and remedies which constitute a deterrent tofurther infringements.”982 The two treaties also aim to buttress copyrightowners’ efforts at self-help through technical measures, such as encryption,to protect their works from infringement.983

As a rule, copyright legislation, and in some cases local procedural codes,empower courts to issue preliminary and permanent relief against continu-ing infringements of copyright. Usually this legislation will not condition anaward of coercive relief on proof that the defendant knew, or even disre-garded, the infringing nature of its conduct. Compensatory monetary reliefis also generally available, and in most countries requires a showing that thedefendant knew, or recklessly disregarded the fact, that its conduct was in-fringing. The TRIPs Agreement reinforces procedures already in place inmany countries by providing a procedural framework for customs interdic-tion of pirated copies at a member country’s border.984

§5.6.1. Coercive Remedies

§5.6.1.1. Temporary Remedies

Subject to prescribed safeguards, Article 50 of the TRIPs Agreement requires“judicial authorities” in member countries to “have the authority to orderprompt and effective provisional measures . . . to prevent an infringementof any intellectual property right from occurring, and in particular to pre-vent the entry into the channels of commerce in their jurisdiction of goods,including imported goods immediately after customs clearance,”985 and also

978. TRIPs Agreement Art. 44.979. TRIPs Agreement Art. 45.980. TRIPs Agreement Art. 46.981. TRIPs Agreement Arts. 50–60.982. WIPO Copyright Treaty Art. 14(2); WIPO Performances and Phonograms Treaty

Art. 23(2).983. WIPO Copyright Treaty Art. 11; WIPO Performances and Phonograms Treaty Art. 18.984. TRIPs Agreement §4 (Arts. 51–60, “Special Requirements Related to Border

Measures”).985. TRIPs Agreement Art. 50(1) (a).

§5.6. Remedies 321


“the authority to adopt provisional measures inaudita altera parte where ap-propriate, in particular where any delay is likely to cause irreparable harmto the right holder, or where there is a demonstrable risk of evidence beingdestroyed.”986

As a rule, preliminary, pretrial relief is available to enjoin copyright in-fringements without the requirement of any showing that the defendantcommitted the infringement intentionally or negligently. In France the In-tellectual Property Code authorizes grants of expedited provisional relief thatcan include seizure of the allegedly infringing goods.987 The German Copy-right Act provides for injunctive relief “requiring the wrongdoer to cease anddesist if there is a danger of repetition of the acts of infringement.”988 UnderBritish practice, preliminary injunctions, called interlocutory injunctions,are regularly granted before trial upon the copyright owner’s showing ofa serious case to be tried and showing that the balance of conveniencesfavors it rather than defendant.989 Canadian practice is similar.990 The U.S.Copyright Act authorizes courts to grant temporary restraining orders andtemporary injunctions to preserve the parties’ positions during pretrial pro-ceedings and trial.991 The Copyright Act authorizes nationwide service andenforcement of temporary injunctions, and courts possess substantial dis-cretion to shape the terms of the temporary injunction in order to secure thestatus quo. For example, in addition to enjoining infringement, a court mayorder the defendant to use its best efforts to recall infringing goods from themarketplace.

Article 16 of the Berne Convention, which in somewhat different form hasbeen part of the treaty from the beginning, requires that “[i]nfringing copiesof a work shall be liable to seizure in any country of the Union where the workenjoys legal protection,”992 and that this remedy “shall also apply to repro-ductions coming from a country where the work is not protected, or hasceased to be protected.”993 Article 51 of the TRIPs Agreement has introduced

986. TRIPs Agreement Art. 50(2).987. France, Intellectual Property Code Art. L 332-1.988. Germany, Copyright Act Art. 97(1).989. See E. P. Skone James et al., Copyright ¶¶11-35 through 11-47 (13th ed. 1991).990. See Ann Carlsen, Canada, in Susan Cotter, ed., Copyright Infringement 45, 74 (1997).991. U.S. 1976 Copyright Act §§502–503.992. Berne Convention, 1971 Paris Text Art. 16(1).993. Berne Convention, 1971 Paris Text Art. 16(2). Article 16(3) leaves it to local legisla-

tion to prescribe rules on seizure.Article 13, subclauses (1) and (2), of the 1971 Berne Paris Text deal with equitable remu-

neration for mechanical licenses for recorded musical compositions. See §5.5.1.6A, above.Article 13(3) provides: “Recordings made in accordance with paragraphs (1) and (2) of thisArticle and imported without permission from the parties concerned into a country wherethey are treated as infringing recordings shall be liable to seizure.”

a significant remedial norm in its provision requiring member countries toadopt procedures for border measures against importation of counterfeittrademark or pirated copyright goods.

National legislatures have taken a variety of approaches to preliminary co-ercive remedies. One is the so-called Anton Piller Order, innovated994 and statu-torily codified995 in the United Kingdom and employed elsewhere in Common-wealth countries.996 This procedure allows copyright owners to petition, incamera and ex parte, for an order requiring the defendant to open its premisesto the plaintiff’s attorney, who may then seize any articles, most commonlyinfringing materials, needed to preserve evidence of the infringement. Severalprocedural safeguards aim to protect defendants faced with these orders.997

Confiscation pending trial is also a feature of coercive remedies under civil law.Upon application by the copyright owner, the French Intellectual PropertyCode authorizes pretrial seizure of allegedly infringing copies.998

The U.S. Copyright Act provides that any time an action under the Act ispending, “the court may order the impounding, on such terms as it may deemreasonable, of all copies or phonorecords claimed to have been made or usedin violation of the copyright owner’s exclusive rights and of all plates, molds,matrices, masters, tapes, film negatives, or other articles by means of whichsuch copies or phonorecords may be reproduced.”999 According to the legis-lative history of the Act, allegedly infringing articles may be seized “as soonas suit has been filed and without waiting for an injunction.”1000 Impound-ment effectively secures temporary injunctive relief by sequestering the prod-ucts and instruments of infringement.

§5.6.1.2. Permanent Remedies

Permanent injunctive relief is generally available to a prevailing copyrightowner without any proof required that the defendant acted knowingly orthat the copyright owner would be irreparably harmed if an injunction

994. Anton Piller v. Manufacturing Processes, [1976] Ch. 55.995. See Supreme Court Act 1981 c. 54 §72.996. See, e.g., cases cited and discussed in H. J. Erasmus, Anton Piller Orders in South Af-

rican Practice, 101 South African L.J. 324 (1984); Jeffrey Berryman, Anton Piller Injunctions:An Update, 2 Int. Prop. J. 49 (1986).

997. See generally Steven Gee, Mareva Injunctions and Anton Piller Relief (3d ed. 1995); AnneStaines, Protection of Intellectual Property Rights: Anton Piller Orders, 46 Mod. L. Rev. 274(1983).

998. France, Intellectual Property Code Art. L 332-1.999. U.S. 1976 Copyright Act §503(a).1000. U.S. House Report, 160.

§5.6. Remedies 323


failed to issue. The German legislation augments the award of permanentinjunctive relief1001 with the prospect of equitable disposition, includingpossible destruction or delivery to the copyright owner of infringing copiesand equipment.1002 In the United Kingdom, where injunctive relief is avail-able as a matter of right to a prevailing copyright owner, the Copyright, De-signs and Patents Act authorizes the court to order delivery of infringingcopies to the copyright owner.1003

Courts in the United States freely grant final injunctions upon a finding ofcopyright infringement. Final injunctive relief is not automatic, however, anda court will deny a final injunction if it appears that the defendant is unlikelyto infringe in the future.1004 In cases where the infringing work borrows onlyin part from the copyrighted work and contains substantial value of its own,American courts will if possible tailor the injunctive decree to require only thatthe infringing matter be expunged. But if, as will often be the case with deriva-tive works such as translations and motion pictures, the infringing andnoninfringing material are closely intertwined, courts will enjoin the entireinfringing work. American courts, including the U.S. Supreme Court, haveoccasionally held or suggested that the preferable alternative in these cases isto withhold injunctive relief entirely and award the copyright owner damagesor profits allocable to the infringing portions of the defendant’s work.1005

As a counterpart to the interim remedy of impoundment, the U.S. CopyrightAct provides that as “part of a final judgment or decree, the court may orderthe destruction or other reasonable disposition of all copies or phonorecordsfound to have been made or used in violation of the copyright owner’s exclu-sive rights, and of all plates, molds, matrices, masters, tapes, film negatives, orother articles by means of which such copies or phonorecords may be repro-duced.”1006 By specifically providing for “other reasonable disposition,” the Actgives courts flexibility in tailoring the final disposition of infringing articles andparaphernalia. As examples, the legislative history on the Act suggests that“as part of its final judgment or decree, the court could order the infringingarticles sold, delivered to the plaintiff, or disposed of in some other way thatwould avoid needless waste and best serve the ends of justice.”1007

1001. Germany, Copyright Act Art. 97.1002. Germany, Copyright Act Arts. 98, 99.1003. United Kingdom, Copyright, Designs and Patents Act 1988 §99(1).1004. See, e.g., Harolds Stores, Inc. v. Dillard Dept. Stores, Inc., 82 F.3d 1533, 1555–1556 (10th

Cir. 1996) (plaintiff not entitled to permanent injunction where there was no probability de-fendant would continue to infringe existing copyrighted designs and no substantial likelihoodit would infringe future designs).

1005. Dun v. Lumbermen’s Credit Association, 209 U.S. 20 (1908).1006. U.S. 1976 Copyright Act §503(b).1007. U.S. House Report, 160.

§5.6.2. Monetary Remedies

Article 45(1) of the TRIPs Agreement requires judicial authorities in mem-ber states to “have the authority to order the infringer to pay the right holderdamages adequate to compensate for the injury the right holder has sufferedbecause of an infringement of his intellectual property right by an infringerwho knew or had reasonable grounds to know that he was engaged in in-fringing activity.” Article 45(2) adds that in “appropriate cases,” judicialauthorities may award “profits and/or payment of pre-established damageseven where the infringer did not knowingly or with reasonable grounds toknow, engage in infringing activity.”1008

Monetary relief in both civil and common law jurisdictions generally ad-heres to the same pattern and, with the notable exception of the United States,to the requirement that the infringer’s knowledge, or negligent disregard,of the infringement be shown before damages can be recovered. Nationalpractice varies on whether, and to what extent, a copyright owner can re-cover damages incurred in a country other than the one in which the in-fringement occurred.1009

Article 97(1) of the German Copyright Act, making anyone who inten-tionally or negligently infringes another’s copyright answerable for dam-age, is in many ways typical of national approaches to computation ofdamages generally. One, largely theoretical, computational method drawson general civil law principles and would subtract the value of the copy-right following the infringement from its value before the infringement,awarding the difference to the copyright owner.1010 A second, widely ap-plied approach, called the “license analogy,” rests on the same economicfoundation as the first method and awards the copyright owner the amountthat he would reasonably have accepted, and that the infringer would rea-sonably have paid, for a license that encompassed the infringing activ-ity.1011 A third measure would require the defendant to account for itsprofits from the infringing activity on the premise that profits earned by thedefendant will be equal to those lost to the plaintiff. Apart from its ques-tionable logic, this measure is rarely used, according to Professor Dreier,because “it is difficult to prove which part of the infringing profits may be

1008. TRIPs Agreement Article 45(2) also authorizes awards of expenses, including “ap-propriate attorney’s fees” against the infringer.

1009. See §3.1.2.1.B, above.1010. See Thomas Dreier, Damages for Copyright Infringement in Germany, in Jan Kabel

& Gerard Mom, eds., Essays in Honour of Herman Cohen Jehoram 129–130 (1998). See also AdolfDietz, News from Germany (II), 176 R.I.D.A. 166, 258 (1998).

1011. See Thomas Dreier, Damages for Copyright Infringement in Germany, in Jan Kabel& Gerard Mom, eds., Essays in Honour of Herman Cohen Jehoram 131 (1998).

§5.6. Remedies 325


causally linked to the particular infringement.”1012 As an alternative, whichdoes not require proof of the defendant’s intention or negligence, the copyrightowner can recover the defendant’s profits on a theory of unjust enrichment.1013

Modest variations on the basic economic principles underlying the Ger-man system of monetary relief appear in the legislation of other countries.The Japanese Copyright Act establishes two presumptions respecting thedamage suffered by a copyright owner: that the infringer’s profits are equiva-lent to the copyright owner’s damages1014 and that damages correspond tothe sum ordinarily to be received from exercise of the right infringed.1015 Un-der British practice, the prevailing copyright owner can recover compensatorydamages, or an accounting of profits,1016 as well as additional damages, “asthe justice of the case may require” in light of the flagrancy of the infringementand the benefit enjoyed by the defendant from the infringement.1017

The U.S. Copyright Act provides that a successful copyright plaintiff mayrecover “the actual damages suffered by him or her as a result of the infringe-ment, and any profits of the infringer that are attributable to the infringe-ment and are not taken into account in computing the actual damages.”1018

According to the legislative history on the Act, “the provision recognizes thedifferent purposes served by awards of damages and profits. Damages areawarded to compensate the copyright owner for losses from the infringement,and profits are awarded to prevent the infringer from unfairly benefiting froma wrongful act.”1019

American courts generally employ either of two basic measures of dam-ages. If the infringer is in the same market as the copyright owner, courtswill employ lost sales as the measure of damages, on the assumption thatevery sale made by the defendant is one that otherwise would have been madeby the copyright owner. If the infringer occupies a different market than thecopyright owner, courts will employ a reasonable royalty measure of damages,on the assumption that the value of the copyrighted work in the infringer’smarket corresponds to the sum that the infringer would have agreed to payfor licensing the work in that market.

In the case of profits, the copyright owner bears the burden of proving theinfringer’s gross revenues, and the infringer bears the burden of proving

1012. See Thomas Dreier, Damages for Copyright Infringement in Germany, in Jan Kabel& Gerard Mom, eds., Essays in Honour of Herman Cohen Jehoram 132 (1998).

1013. Germany, Copyright Act Art. 97(1). See generally Thomas Dreier, Damages for Copy-right Infringement in Germany, in Jan Kabel & Gerard Mom, eds., Essays in Honour of HermanCohen Jehoram 133–134 (1998).

1014. Japan, Copyright Act Art. 114(1).1015. Japan, Copyright Act Art. 114(2).1016. United Kingdom, Copyright, Designs and Patents Act 1988 §96(2).1017. United Kingdom, Copyright, Designs and Patents Act 1988 §97(2).1018. U.S. 1976 Copyright Act §504(b).1019. U.S. House Report, 161.

“deductible expenses and the elements of profit attributable to factors otherthan the copyrighted work.”1020 In the latter case, courts will, if they canseparate the infringing and noninfringing elements of defendant’s work,usually take the relative proportions of the two sets of elements as a startingpoint in determining an award of profits allocable to the infringement.

The U.S. Copyright Act entitles the copyright owner to recover, as an alter-native to actual damages and profits, an award of statutory damages withinprescribed minimum and maximum amounts—between $750 and $30,000in ordinary cases1021 —“for all infringements involved in the action, withrespect on any one work, for which any one infringer is liable individually,or for which any two or more infringers are liable jointly and severally.”1022

The Act also gives courts in copyright cases the authority to “award a rea-sonable attorney’s fee to the prevailing party as part of the costs.”1023

§5.6.3. Criminal Sanctions

Criminal liability for copyright infringement, long a relatively dormant fea-ture of copyright legislation around the world, was substantially invigoratedby initiatives to control piracy of phonorecords, videotapes, and softwarebeginning in the 1980s. The central sanctions for criminal copyright infringe-ment are fines and terms of imprisonment, both of which were in many coun-tries increased as part of the antipiracy initiative. Infringement is generallyconsidered to be an economic crime, and differences exist from country tocountry over whether infringement of an author’s moral right should comewithin the criminal sanction. Most national legislation imposes a higher stan-dard of willfulness on criminal defendants than on civil defendants, but na-tional legislation varies on the role of evidential presumptions in proving guiltand the elements essential to a prima facie case.

1020. U.S. 1976 Copyright Act §504(b).1021. In the case of willful infringement, the court may increase the award to a sum of

not more than $100,000, and in the case of innocent infringement, the court may reduce theaward to a sum of not less than $200. U.S. 1976 Copyright Act §504(c).

1022. U.S. 1976 Copyright Act §504(c) (1). To be entitled to an award of statutory dam-ages, as well as of attorney’s fees, the copyright owner must make a timely registration of itsclaim to copyright. U.S. 1976 Copyright Act §412.

1023. U.S. 1976 Copyright Act §505.

§5.6. Remedies 327

appendix

Treaties and Other International

Instruments Respecting Copyright

and Neighboring Rights

331

A1. INTERNATIONAL COPYRIGHT RELATIONS

OF THE UNITED STATES

U.S. Copyright Office, Circular 38a, May 1999

General Information*

This sets forth U.S. copyright relations of current interest with the other indepen-dent nations of the world. Each entry gives country name (and alternate name) anda statement of copyright relations. The following code is used:

Berne Party to the Berne Convention for the Protection of Literary andArtistic Works as of the date given. Appearing within parenthesesis the latest Act1 of the Convention to which the country is party.The effective date for the United States is March 1, 1989. Thelatest Act of the Convention, to which the United States is party,is the revision done at Paris on July 24, 1971.

Bilateral Bilateral copyright relations with the United States by virtue of aproclamation or treaty, as of the date given. Where there is morethan one proclamation or treaty, only the date of the first one isgiven.

BAC Party to the Buenos Aires Convention of 1910, as of the dategiven. U.S. ratification deposited with the Government ofArgentina, May 1, 1911; proclaimed by the President of theUnited States, July 13, 1914.

None No copyright relations with the United States.Phonogram Party to the Convention for the Protection of Producers of

Phonograms Against Unauthorized Duplication of TheirPhonograms, Geneva, 1971, as of the date given. The effectivedate for the United States is March 10, 1974.

SAT Party to the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite, Brussels, 1974, as ofthe date given. The effective date for the United States is March 7,1985.

UCC Geneva Party to the Universal Copyright Convention, Geneva, 1952, as ofthe date given. The effective date for the United States is Septem-ber 16, 1955.

UCC Paris Party to the Universal Copyright Convention as revised at Paris,1971, as of the date given. The effective date for the United Statesis July 10, 1974.

*[Explanations of notes appear at end of document A1. —P.G.]

332 Appendix

Unclear Became independent since 1943. Has not established copyrightrelations with the United States, but may be honoring obligationsincurred under former political status.

WTO (World Trade Organization) Member of the World Trade Organi-zation, established pursuant to the Marrakesh Agreement of April15, 1994, to implement the Uruguay Round Agreements. TheseAgreements affect, among other things, intangible propertyrights, including copyright and other intellectual property rights.The effective date of United States membership in the WTO isJanuary 1, 1995. A country’s membership in the World TradeOrganization is effective as of the date indicated.

Relations as of May 1999

AfghanistanNone

AlbaniaBerne Mar. 6, 1994

(Paris)1

AlgeriaUCC Geneva Aug. 28,

1973UCC Paris July 10, 1974Berne April 19, 1998

(Paris)Andorra

UCC Geneva Sept. 16,1955

AngolaWTO Nov. 23, 1996

Antigua and BarbudaWTO Jan. 1, 1995

ArgentinaBilateral Aug. 23, 1934BAC Apr. 19, 1950UCC Geneva Feb. 13,

1958Berne June 10, 1967

(Brussels)2

Phonogram June 30,19733

WTO Jan. 1, 1995Armenia

SAT Dec. 13, 1993Australia

Bilateral March 15, 1918Berne Apr. 14, 1928

(Paris)2

UCC Geneva May 1,1969

Phonogram June 22,1974

UCC Paris Feb. 28, 1978SAT Oct. 26, 1990WTO Jan. 1, 1995

AustriaBilateral Sept. 20, 1907Berne Oct. 1, 1920

(Paris)2

UCC Geneva July 2,1957

SAT Aug. 6, 19824

UCC Paris Aug. 14, 1982Phonogram Aug. 21,

1982WTO Jan. 1, 1995

AzerbaijanUCC Geneva May 27,

1973Bahamas, The

Berne July 10, 1973(Brussels)UCC Geneva Dec. 27,

1976UCC Paris Dec. 27, 1976

BahrainWTO Jan. 1, 1995Berne Mar. 2, 1997

(Paris)Bangladesh

UCC Geneva Aug. 5,1975

UCC Paris Aug. 5, 1975WTO Jan. 1, 1995Berne May 4, 1999

(Paris)Barbados

UCC Geneva June 18,1983

UCC Paris June 18, 1983

Berne July 30, 1983(Paris)2

Phonogram July 29,1983

WTO Jan. 1, 1995Belarus


Berne Dec. 12, 1997(Paris)

Belau(see Palau)

BelgiumBerne Dec. 5, 1887

(Brussels)2

Bilateral July 1, 1891UCC Geneva Aug. 31,

1960WTO Jan. 1, 1995

BelizeUCC Geneva Dec. 1,

1982WTO Jan. 1, 1995

Benin (formerly Dahomey)Berne Jan. 3, 1961

(Paris)2

WTO Feb. 22, 1996Bhutan

NoneBolivia

BAC May 15, 1914UCC Geneva Mar. 22,

1990UCC Paris Mar. 22,

1990Berne Nov. 4, 1993

(Paris)WTO Sept. 13, 1995

Appendix 333

Bosnia and HerzegovinaUCC Geneva May 11,

1966UCC Paris July 10, 1974Berne Mar. 6, 1992

(Paris)SAT Mar. 6, 1992

BotswanaWTO May 31, 1995Berne Apr. 15, 1998

(Paris)Brazil

BAC Aug. 31, 1915Berne Feb. 9, 1922

(Paris)2

Bilateral Apr. 2, 1957UCC Geneva Jan. 13,

1960Phonogram Nov. 28,

1975UCC Paris Dec. 11, 1975WTO Jan. 1, 1995

Brunei DarussalamWTO Jan. 1, 1995

BulgariaBerne Dec. 5, 1921

(Paris)2


UCC Paris June 7, 1975Phonogram Sept. 6,

1995WTO Dec. 1, 1996

Burkina Faso (formerlyUpper Volta)

Berne Aug. 19, 1963(Paris)2

Phonogram Jan. 30,1988

WTO June 3, 1995Burma

(See Myanmar, Union of)Burundi

WTO July 23, 1995Cambodia


CameroonBerne Sept. 21, 1964

(Paris)2


UCC Paris July 10,1974

WTO Dec. 13, 1995

CanadaBilateral Jan. 1, 1924Berne Apr. 10, 1928

(Paris)2


WTO Jan. 1, 1995Cape Verde

Berne July 7, 1997(Paris)

Central African RepublicBerne Sept. 3, 1977

(Paris)2

WTO May 31, 1995Chad

Berne Nov. 25, 1971(Brussels)2

WTO Oct. 19, 1996Chile

Bilateral May 25, 1896BAC June 14, 1955UCC Geneva Sept. 16,

1955Berne June 5, 1970

(Paris)2

Phonogram Mar. 24,1977

WTO Jan. 1, 1995China

Bilateral Jan. 13, 19045

Bilateral Mar. 17, 19929

Berne Oct. 15, 1992(Paris)

UCC Geneva Oct. 30,1992

UCC Paris Oct. 30, 1992Phonogram Apr. 30,

1993Colombia

BAC Dec. 23, 1936UCC Geneva June 18,

1976UCC Paris June 18,

1976Berne Mar. 7, 1988

(Paris)2

Phonogram May 16,1994

WTO Apr. 30, 1995Comoros

UnclearCongo

Berne May 8, 1962(Paris)2

WTO Mar. 27, 1997

Costa Rica6

Bilateral Oct. 19, 1899BAC Nov. 30, 1916UCC Geneva Sept. 16,

1955Berne June 10, 1978

(Paris)2

UCC Paris Mar. 7, 1980Phonogram June 17,

1982WTO Jan. 1, 1995

Cote d’Ivoire (Ivory Coast)Berne Jan. 1, 1962

(Paris)2

WTO Jan. 1, 1995Croatia


UCC Paris July 10, 1974Berne Oct. 8, 1991

(Paris)2

SAT Oct. 8, 1991Cuba

Bilateral Nov. 17, 1903UCC Geneva June 18,

1957WTO Apr. 20, 1995Berne Feb. 20, 1997

(Paris)Cyprus

Berne Feb. 24, 1964(Paris)2

UCC Geneva Dec. 19,1990

UCC Paris Dec. 19, 1990Phonogram Sept. 30,

1993WTO July 30, 1995

Czech RepublicUCC Geneva Jan. 6, 1960UCC Paris Apr. 17, 1980Berne Jan. 1, 1993

(Paris)Phonogram Jan. 1, 1993WTO Jan. 1, 1995

Czechoslovakia11

Bilateral Mar. 1, 1927Democratic Republic of

Congo (formerlyZaire)

Berne Oct. 8, 1963(Paris)2

Phonogram Nov. 29,1977

WTO Jan. 1, 1997

334 Appendix

DenmarkBilateral May 8, 1893Berne July 1, 1903

(Paris)2

UCC Geneva Feb. 9,1962

Phonogram Mar. 24,1977

UCC Paris July 11, 1979WTO Jan. 1, 1995

DjiboutiWTO May 31, 1995

DominicaWTO Jan. 1, 1995

Dominican Republic6

BAC Oct. 31, 1912UCC Geneva May 8,

1983UCC Paris May 8, 1983WTO Mar. 9, 1995Berne Dec. 24, 1997

(Paris)Ecuador

BAC Aug. 31, 1914UCC Geneva June 5,

1957Phonogram Sept. 14,

1974UCC Paris Sept. 6, 1991Berne Oct. 9, 1991

(Paris)WTO Jan. 21, 1996

EgyptBerne June 7, 1977

(Paris)2

Phonogram Apr. 23,1978

WTO June 30, 1995El Salvador

Bilateral June 30, 1908,by virtue of MexicoCity Convention, 1902

Phonogram Feb. 9, 1979UCC Geneva Mar. 29,

1979UCC Paris Mar. 29, 1979Berne Feb. 19, 1994

(Paris)WTO May 7, 1995

Equatorial GuineaBerne Jun. 26, 1997

(Paris)Estonia


EthiopiaNone

European CommunityWTO Jan. 1, 1995

FijiBerne Dec. 1, 1971

(Brussels)2

UCC Geneva Mar. 13,1972

Phonogram Apr. 18,19733

WTO Jan. 14, 1996Finland

Berne Apr. 1, 1928(Paris)2

Bilateral Jan. 1, 1929UCC Geneva Apr. 16,

1963Phonogram Apr. 18,

19733

UCC Paris Nov. 1, 1986WTO Jan. 1, 1995

FranceBerne Dec. 5, 1887

(Paris)2

Bilateral July 1, 1891UCC Geneva Jan. 14,


19733


GabonBerne Mar. 26, 1962

(Paris)2

WTO Jan. 1, 1995Gambia, The

Berne Mar. 7, 1993(Paris)

WTO Oct. 23, 1996Georgia

Berne May 16, 1995(Paris)

Germany10

Berne Dec. 5, 1887(Paris)2,7

Bilateral Apr. 15, 1892UCC Geneva Sept. 16,

1955Phonogram May 18,

1974UCC Paris July 10,

1974SAT Aug. 25, 19794

WTO Jan. 1, 1995

GhanaUCC Geneva Aug. 22,

1962Berne Oct. 11, 1991


GreeceBerne Nov. 9, 1920

(Paris)2

Bilateral Mar. 1, 1932UCC Geneva Aug. 24,

1963SAT Oct. 22, 1991Phonogram Feb. 9,

1994WTO Jan. 1, 1995

GrenadaWTO Feb. 22, 1996Berne Sept. 22, 1998

(Paris)Guatemala6

BAC Mar. 28, 1913UCC Geneva Oct. 28,

1964Phonogram Feb. 1,

1977WTO July 21, 1995Berne Jul. 28, 1997

(Paris)Guinea

Berne Nov. 20, 1980(Paris)2

UCC Geneva Nov. 13,1981

UCC Paris Nov. 13,1981

WTO Oct. 25, 1995Guinea-Bissau


WTO May 31, 1995Guyana


WTO Jan. 1, 1995Haiti

BAC Nov. 27, 1919UCC Geneva Sept. 16,

1955Berne Jan. 11, 1996


Holy See(See entry under

Vatican City)

Appendix 335

Honduras6

BAC Apr. 27, 1914Berne Jan. 25, 1990

(Paris)Phonogram Mar. 6,

1990WTO Jan. 1, 1995

Hong Kong12

WTO Jan. 1, 1995Hungary

Bilateral Oct. 16, 1912Berne Feb. 14, 1922

(Paris)2

UCC Geneva Jan. 23,1971

UCC Paris July 10, 1974Phonogram May 28,

1975WTO Jan. 1, 1995

IcelandBerne Sept. 7, 1947

(Rome)2


WTO Jan. 1, 1995India


Bilateral Aug. 15, 1947UCC Geneva Jan. 21,


1975UCC Paris Apr. 7, 1988WTO Jan. 1, 1995

IndonesiaBilateral Aug. 1, 1989WTO Jan. 1, 1995Berne Sept. 5, 1997

(Paris)Iran

NoneIraq

NoneIreland

Berne Oct. 5, 1927(Brussels)2

Bilateral Oct. 1, 1929UCC Geneva Jan. 20,

1959WTO Jan. 1, 1995

IsraelBilateral May 15, 1948Berne Mar. 24, 1950

(Brussels)2


Phonogram May 1,1978

WTO Apr. 21, 1995Italy

Berne Dec. 5, 1887(Paris)2

Bilateral Oct. 31, 1892UCC Geneva Jan. 24,

1957Phonogram Mar. 24,

1977UCC Paris Jan. 25, 1980SAT July 7, 19814

WTO Jan. 1, 1995Ivory Coast

(See entry under Coted’Ivoire)

JamaicaBerne Jan. 1, 1994

(Paris)Phonogram Jan. 11,

1994WTO Mar. 9, 1995

Japan8

Berne July 15, 1899(Paris)2

UCC Geneva Apr. 28,1956

UCC Paris Oct. 21,1977

Phonogram Oct. 14,1978

WTO Jan. 1, 1995Jordan

UnclearKazakhstan


Berne Apr. 12, 1999(Paris)

KenyaUCC Geneva Sept. 7,



1976SAT Aug. 25, 19794

Berne June 11, 1993(Paris)

WTO Jan. 1, 1995Kiribati

Unclear

KoreaDemocratic People’s

Republic of KoreaUnclearRepublic of KoreaUCC Geneva Oct. 1,

1987UCC Paris Oct. 1, 1987Phonogram Oct. 10,

1987WTO Jan. 1, 1995Berne Aug. 21, 1996

(Paris)Kuwait

WTO Jan. 1, 1995Kyrgyz Republic

WTO Dec. 20, 1998Laos


LatviaBerne Aug. 11, 1995

(Paris)Phonogram Aug. 23,

1997WTO Feb. 10, 1999

LebanonBerne Sept. 30, 1947

(Rome)2


LesothoBerne Sept. 28, 1989

(Paris)WTO May 31, 1995

LiberiaUCC Geneva July 27,

1956Berne Mar. 8, 1989

(Paris)Libya

Berne Sept. 28, 1976(Paris)2

LiechtensteinBerne July 30, 1931

(Brussels)2


WTO Sept. 1, 1995Lithuania

Berne Dec. 14, 1994(Paris)

LuxembourgBerne June 20, 1888

(Paris)2

336 Appendix

Bilateral June 29, 1910UCC Geneva Oct. 15,

1955Phonogram Mar. 8,

1976WTO Jan. 1, 1995

MacauWTO Jan. 1, 1995

Macedonia (formerYugoslav Republic of)

Berne Sept. 8, 1991(Paris)

SAT Nov. 17, 1991UCC Geneva July 30,

1997UCC Paris July 30, 1997Phonogram Mar. 2,

1998Madagascar (Malagasy

Republic)Berne Jan. 1, 1966

(Brussels)2

WTO Nov. 17, 1995Malawi



WTO May 31, 1995Malaysia


WTO Jan. 1, 1995Maldives

WTO May 31, 1995Mali

Berne Mar. 19, 1962(Paris)2

WTO May 31, 1995Malta

Berne Sept. 21, 1964(Rome)2


WTO Jan. 1, 1995Mauritania

Berne Feb. 6, 1973(Paris)2

WTO May 31, 1995Mauritius

UCC Geneva Mar. 12,1968

Berne May 10, 1989(Paris)

WTO Jan. 1, 1995

MexicoBilateral Feb. 27, 1896UCC Geneva May 12,

1957BAC Apr. 24, 1964Berne June 11, 1967

(Paris)2

Phonogram Dec. 21,19733

UCC Paris Oct. 31, 1975SAT Aug. 25, 19794

WTO Jan. 1, 1995Moldova

Berne Nov. 2, 1995(Paris)


MonacoBerne May 30, 1889

(Paris)2

Bilateral Oct. 15, 1952UCC Geneva Sept. 16,

1955Phonogram Dec. 2,

1974UCC Paris Dec. 13, 1974

MongoliaWTO Jan. 29, 1997Berne Mar. 12, 1998

(Paris)Morocco

Berne June 16, 1917(Paris)2


UCC Paris Jan. 28, 1976SAT June 30, 19834

WTO Jan. 1, 1995Mozambique

WTO Aug. 26, 1995Myanmar, Union of

(formerly Burma)WTO Jan. 1, 1995

NamibiaBerne Mar. 21, 1990


NauruUnclear

NepalNone

NetherlandsBilateral Nov. 20, 1899Berne Nov. 1, 1912

(Paris)2


UCC Paris Nov. 30, 1985Phonogram Oct. 12,

1993WTO Jan. 1, 1995

New ZealandBilateral Dec. 1, 1916Berne Apr. 24, 1928

(Rome)2


Phonogram Aug. 13,1976

WTO Jan. 1, 1995Nicaragua6

BAC Dec. 15, 1913UCC Geneva Aug. 16,

1961SAT Aug. 25, 19794

WTO Sept. 3, 1995Niger

Berne May 2, 1962(Paris)2


UCC Paris May 15,1989

WTO Dec. 13, 1996Nigeria

UCC Geneva Feb. 14,1962

Berne Sept. 14, 1993(Paris)

WTO Jan. 1, 1995Norway


Bilateral July 1, 1905UCC Geneva Jan. 23,

1963UCC Paris Aug. 7, 1974Phonogram Aug. 1,

1978WTO Jan. 1, 1995

OmanNone

PakistanBerne July 5, 1948

(Rome)2


WTO Jan. 1, 1995Palau

Unclear

Appendix 337

PanamaBAC Nov. 25, 1913UCC Geneva Oct. 17,

1962Phonogram June 29,

1974UCC Paris Sept. 3, 1980SAT Sept. 25, 1985Berne Jun. 8, 1996

(Paris)Papua New Guinea

WTO Jun. 9, 1996Paraguay

BAC Sept. 20, 1917UCC Geneva Mar. 11,


1979Berne Jan. 2, 1992


PeruBAC Apr. 30, 1920UCC Geneva Oct. 16,

1963UCC Paris July 22, 1985SAT Aug. 7, 1985Phonogram Aug. 24,

1985Berne Aug. 20, 1988

(Paris)2

WTO Jan. 1, 1995Philippines

Bilateral Oct. 21, 1948Berne Aug. 1, 1951

(Paris) 2

UCC status undeter-mined by UNESCO(Copyright Officeconsiders that UCCrelations do notexist.)

WTO Jan. 1, 1995Poland

Berne Jan. 28, 1920(Paris)2

Bilateral Feb. 16, 1927UCC Geneva Mar. 9,

1977UCC Paris Mar. 9, 1977WTO July 1, 1995

PortugalBilateral July 20, 1893Berne Mar. 29, 1911

(Paris)2


UCC Paris July 30, 1981WTO Jan. 1, 1995SAT Mar. 11, 1996

QatarWTO Jan. 13, 1996

RomaniaBerne Jan. 1, 1927

(Paris)2

Bilateral May 14, 1928WTO Jan. 1, 1995Phonogram Oct. 1, 1998

Russian FederationUCC Geneva May 27,

1973SAT Dec. 25, 1991UCC Paris Mar. 9, 1995Berne Mar. 13, 1995

(Paris)Phonogram Mar. 13,

1995Rwanda

Berne Mar. 1, 1984(Paris)2


UCC Paris Nov. 10, 1989WTO May 22, 1996

St. Christopher (St. Kitts)and Nevis


WTO Feb. 21, 1996Saint Lucia


WTO Jan. 1, 1995Saint Vincent and the

GrenadinesUCC Geneva Apr. 22,

1985UCC Paris Apr. 22,

1985WTO Jan. 1, 1995Berne Aug. 29, 1995

(Paris)San Marino

NoneSão Tomé and Principe

UnclearSaudi Arabia


UCC Paris July 13, 1994

SenegalBerne Aug. 25, 1962

(Paris)2



SeychellesUnclear

Sierra LeoneWTO July 23, 1995

SingaporeBilateral May 18, 1987WTO Jan. 1, 1995Berne Dec. 21, 1998

(Paris)Slovakia


UCC Paris Apr. 17, 1980Berne Jan. 1, 1993

(Paris)2


WTO Jan. 1, 1995Slovenia


UCC Paris July 10, 1974Berne June 25, 1991

(Paris)2

SAT June 25, 1991WTO July 30, 1995Phonogram Oct. 15,

1996Solomon Islands

WTO July 26, 1996Somalia

UnclearSouth Africa

Bilateral July 1, 1924Berne Oct. 3, 1928

(Brussels)2

WTO Jan. 1, 1995Soviet Union

(See entry underRussian Federation)

SpainBerne Dec. 5, 1887

(Paris)2

Bilateral July 10, 1895UCC Geneva Sept. 16,


1974

338 Appendix

Phonogram Aug. 24,1974

WTO Jan. 1, 1995Sri Lanka (formerly

Ceylon)Berne July 20, 1959

(Rome)2


UCC Paris Jan. 25, 1984WTO Jan. 1, 1995

SudanUnclear

SurinameBerne Feb. 23, 1977

(Paris)2

WTO Jan. 1, 1995Swaziland

WTO Jan. 1, 1995Berne Dec. 14, 1998

(Paris)Sweden


Bilateral June 1, 1911UCC Geneva July 1, 1961Phonogram Apr. 18,

19733


SwitzerlandBerne Dec. 5, 1887

(Paris)2

Bilateral July 1, 1891UCC Geneva Mar. 30,

1956UCC Paris Sept. 21, 1993SAT Sept. 24, 1993Phonogram Sept. 30,

1993WTO July 1, 1995

SyriaUnclear

TajikistanUCC Geneva May 27,

1973Tanzania


WTO Jan. 1, 1995Thailand

Bilateral Sept. 1, 1921Berne July 17, 1931

(Paris)2

WTO Jan. 1, 1995

TogoBerne Apr. 30, 1975

(Paris)2

WTO May 31, 1995Tonga

NoneTrinidad and Tobago



UCC Paris Aug. 19, 1988Phonogram Oct. 1, 1988WTO Mar. 1, 1995SAT Nov. 1, 1996

TunisiaBerne Dec. 5, 1887

(Paris)2


UCC Paris June 10,1975

WTO Mar. 29, 1995Turkey

Berne Jan. 1, 1952(Paris)2

WTO Mar. 26, 1995Tuvalu

UnclearUganda

WTO Jan. 1, 1995Ukraine



United Arab EmiratesWTO Apr. 10, 1996

United KingdomBerne Dec. 5, 1887

(Paris)2

Bilateral July 1, 1891UCC Geneva Sept. 27,


19733


Upper Volta(See entry under

Burkina Faso)Uruguay

BAC Dec. 17, 1919Berne July 10, 1967

(Paris)2


UCC Geneva Apr. 12,1993

UCC Paris Apr. 12, 1993WTO Jan. 1, 1995

VanuatuUnclear

Vatican City (Holy See)Berne Sept. 12, 1935

(Paris)2


Phonogram July 18,1977

UCC Paris May 6, 1980Venezuela


Phonogram Nov. 18,1982

Berne Dec. 30, 1982(Paris)2

WTO Jan. 1, 1995UCC Paris Feb. 11, 1997

VietnamBilateral Dec. 23,

199813

Western SamoaUnclear

Yemen (Aden)Unclear

Yemen (San’a)None

YugoslaviaBerne June 17, 1930

(Paris)2


UCC Paris July 10, 1974SAT Aug. 25, 19794

Zaire(See entry under

Democratic Republicof Congo)

ZambiaUCC Geneva June 1,

1965Berne Jan. 2, 1992

(Paris)2

WTO Jan. 1, 1995Zimbabwe

Berne Apr. 18, 1980(Rome)2

WTO Mar. 3, 1995

Appendix 339

Notes

1. “Paris” means the Berne Convention for the Protection of Literary and Artis-tic Works as revised at Paris on July 24, 1971 (Paris Act); “Stockholm” means thesaid Convention as revised at Stockholm on July 14, 1967 (Stockholm Act); “Brus-sels” means the said Convention as revised at Brussels on June 26, 1948 (BrusselsAct); “Rome” means the said Convention as revised at Rome on June 2, 1928 (RomeAct); “Berlin” means the said Convention as revised at Berlin on November 13, 1908(Berlin Act). NOTE: In each case the reference to Act signifies adherence to the sub-stantive provisions of such Act only, e.g., Articles 1 to 21 and the Appendix of theParis Act. Articles 22 to 38 deal with administration and structure.

2. The Berne Convention for the Protection of Literary and Artistic Works of Sep-tember 9, 1886, as revised at Paris on July 24, 1971, did not enter into force withrespect to the United States until March 1, 1989.

3. The Convention for the Protection of Producers of Phonograms Against Un-authorized Duplication of Their Phonograms done at Geneva on October 29, 1971,did not enter into force with respect to the United States until March 10, 1974.

4. The Convention Relating to the Distribution of Programme-Carrying SignalsTransmitted by Satellite done at Brussels on May 21, 1974, did not enter into forcewith respect to the United States until March 7, 1985.

5. The government of the People’s Republic of China views this treaty as not bind-ing on the PRC. In the territory administered by the authorities on Taiwan the treatyis considered to be in force.

6. This country became a party to the Mexico City Convention, 1902, effectiveJune 30, 1908, to which the United States also became a party, effective on the samedate. As regards copyright relations with the United States, this Convention is con-sidered to have been superseded by adherence of this country and the United Statesto the Buenos Aires Convention of 1910.

7. Date on which the accession by the German Empire became effective.8. Bilateral copyright relations between Japan and the United States, which were

formulated effective May 10, 1906, are considered to have been abrogated and super-seded by the adherence of Japan to the UCC Geneva, effective April 28, 1956.

9. Bilateral copyright relations between the People’s Republic of China and theUnited States of America were established, effective March 17, 1992, by a Presiden-tial Proclamation of the same date, under the authority of section 104 of title 17 ofthe United States Code, as amended by the Act of October 31, 1988 (Public Law 100-568, 102 Stat. 2853, 2855).

10. The dates of adherence by Germany to multilateral treaties include adherenceby the Federal Republic of Germany when that country was divided into the FederalRepublic of Germany and the German Democratic Republic. However, through theaccession, effective October 3, 1990, of the German Democratic Republic to the FederalRepublic of Germany, in accordance with the German Unification Treaty of August31, 1990, the German Democratic Republic ceased, on the said date, to be a sovereignstate. Previously, the German Democratic Republic had become party to the Paris Actof the Berne Convention for the Protection of Literary and Artistic Works on February18, 1978, but ceased to be a party to the said Convention on October 3, 1990. The Ger-man Democratic Republic had also been a member of the Universal Copyright Con-vention, having become party to the Geneva text of the said Convention on October5, 1973, and party to the revised Paris text of the same Convention on December 10,1980.

340 Appendix

11. See also Czech Republic and Slovakia.12. Prior to the return of Hong Kong to China, bilateral copyright relations

existed with Hong Kong through the United Kingdom (from August 1, 1973), andPhonogram Convention Membership existed through the United Kingdom (fromMarch 4, 1975).

13. Bilateral copyright relations between the Socialist Republic of Vietnam andthe United States were established effective December 23, 1998, by PresidentialProclamation No. 7161 of that same date, at 63 Fed. Reg. 71571 (1998), under theauthority of sections 104(b)(5) and 104A(g) of title 17 of the United States Code, asamended.

341

A2. BERNE CONVENTION FOR THE PROTECTION

OF LITERARY AND ARTISTIC WORKS

[PARIS TEXT, 1971]

[Berne Convention for the Protection of Literary and Artistic Works of September9, 1886, completed at PARIS on May 4, 1896, revised at BERLIN on November 13,1908, completed at BERNE on March 20, 1914, revised at ROME on June 2, 1928, atBRUSSELS on June 26, 1948, at STOCKHOLM on July 14, 1967, and at PARIS onJuly 24, 1971, and amended on September 28, 1979.]

The countries of the Union, being equally animated by the desire to protect, in as effectiveand uniform a manner as possible, the rights of authors in their literary and artistic works,

Recognizing the importance of the work of the Revision Conference held at Stockholm in 1967,

Have resolved to revise the Act adopted by the Stockholm Conference, while maintainingwithout change Articles 1 to 20 and 22 to 26 of that Act.

Consequently, the undersigned Plenipotentiaries, having presented their full powers, rec-ognized as in good and due form, have agreed as follows:

article 1

The countries to which this Convention applies constitute a Union for the protec-tion of the rights of authors in their literary and artistic works.

article 2

(1) The expression “literary and artistic works” shall include every production inthe literary, scientific and artistic domain, whatever may be the mode or formof its expression, such as books, pamphlets and other writings; lectures, ad-dresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; mu-sical compositions with or without words; cinematographic works to which areassimilated works expressed by a process analogous to cinematography; worksof drawing, painting, architecture, sculpture, engraving and lithography; pho-tographic works to which are assimilated works expressed by a process analo-gous to photography; works of applied art; illustrations, maps, plans, sketchesand three-dimensional works relative to geography, topography, architectureor science.

(2) It shall, however, be a matter for legislation in the countries of the Union toprescribe that works in general or any specified categories of works shall not beprotected unless they have been fixed in some material form.

(3) Translations, adaptations, arrangements of music and other alterations of a lit-erary or artistic work shall be protected as original works without prejudice tothe copyright in the original work.

342 Appendix

(4) It shall be a matter for legislation in the countries of the Union to determine theprotection to be granted to official texts of a legislative, administrative and legalnature, and to official translations of such texts.

(5) Collections of literary or artistic works such as encyclopedias and anthologieswhich, by reason of the selection and arrangement of their contents, constituteintellectual creations shall be protected as such, without prejudice to the copy-right in each of the works forming part of such collections.

(6) The works mentioned in this Article shall enjoy protection in all countries ofthe Union. This protection shall operate for the benefit of the author and hissuccessors in title.

(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matterfor legislation in the countries of the Union to determine the extent of the appli-cation of their laws to works of applied art and industrial designs and models,as well as the conditions under which such works, designs and models shall beprotected. Works protected in the country of origin solely as designs and mod-els shall be entitled in another country of the Union only to such special pro-tection as is granted in that country to designs and models; however, if no suchspecial protection is granted in that country, such works shall be protected asartistic works.

(8) The protection of this Convention shall not apply to news of the day or to mis-cellaneous facts having the character of mere items of press information.

article 2bis

(1) It shall be a matter for legislation in the countries of the Union to exclude, whollyor in part, from the protection provided by the preceding Article political speechesand speeches delivered in the course of legal proceedings.

(2) It shall also be a matter for legislation in the countries of the Union to deter-mine the conditions under which lectures, addresses and other works of thesame nature which are delivered in public may be reproduced by the press,broadcast, communicated to the public by wire and made the subject of publiccommunication as envisaged in Article 11bis(1) of this Convention, when suchuse is justified by the informatory purpose.

(3) Nevertheless, the author shall enjoy the exclusive right of making a collectionof his works mentioned in the preceding paragraphs.

article 3

(1) The protection of this Convention shall apply to:(a) authors who are nationals of one of the countries of the Union, for their

works, whether published or not;(b) authors who are not nationals of one of the countries of the Union, for their

works first published in one of those countries, or simultaneously in a coun-try outside the Union and in a country of the Union.

(2) Authors who are not nationals of one of the countries of the Union but who havetheir habitual residence in one of them shall, for the purposes of this Conven-tion, be assimilated to nationals of that country.

(3) The expression “published works” means works published with the consentof their authors, whatever may be the means of manufacture of the copies,provided that the availability of such copies has been such as to satisfy the

Appendix 343

reasonable requirements of the public, having regard to the nature of thework. The performance of a dramatic, dramatico-musical, cinematographicor musical work, the public recitation of a literary work, the communicationby wire or the broadcasting of literary or artistic works, the exhibition of awork of art and the construction of a work of architecture shall not consti-tute publication.

(4) A work shall be considered as having been published simultaneously in severalcountries if it has been published in two or more countries within thirty days ofits first publication.

article 4

The protection of this Convention shall apply, even if the conditions of Article 3 arenot fulfilled, to:(a) authors of cinematographic works the maker of which has his headquarters or

habitual residence in one of the countries of the Union;(b) authors of works of architecture erected in a country of the Union or of other

artistic works incorporated in a building or other structure located in a countryof the Union.

article 5

(1) Authors shall enjoy, in respect of works for which they are protected under thisConvention, in countries of the Union other than the country of origin, therights which their respective laws do now or may hereafter grant to their na-tionals, as well as the rights specially granted by this Convention.

(2) The enjoyment and the exercise of these rights shall not be subject to any for-mality; such enjoyment and such exercise shall be independent of the existenceof protection in the country of origin of the work. Consequently, apart from theprovisions of this Convention, the extent of protection, as well as the means ofredress afforded to the author to protect his rights, shall be governed exclusivelyby the laws of the country where protection is claimed.

(3) Protection in the country of origin is governed by domestic law. However, whenthe author is not a national of the country of origin of the work for which he isprotected under this Convention, he shall enjoy in that country the same rightsas national authors.

(4) The country of origin shall be considered to be:(a) in the case of works first published in a country of the Union, that country;

in the case of works published simultaneously in several countries of theUnion which grant different terms of protection, the country whose legis-lation grants the shortest term of protection;

(b) in the case of works published simultaneously in a country outside theUnion and in a country of the Union, the latter country;

(c) in the case of unpublished works or of works first published in a countryoutside the Union, without simultaneous publication in a country of theUnion, the country of the Union of which the author is a national, providedthat:(i) when these are cinematographic works the maker of which has his

headquarters or his habitual residence in a country of the Union, thecountry of origin shall be that country, and

344 Appendix

(ii) when these are works of architecture erected in a country of the Unionor other artistic works incorporated in a building or other structurelocated in a country of the Union, the country of origin shall be thatcountry.

article 6

(1) Where any country outside the Union fails to protect in an adequate mannerthe works of authors who are nationals of one of the countries of the Union, thelatter country may restrict the protection given to the works of authors who are,at the date of the first publication thereof, nationals of the other country andare not habitually resident in one of the countries of the Union. If the countryof first publication avails itself of this right, the other countries of the Union shallnot be required to grant to works thus subjected to special treatment a widerprotection than that granted to them in the country of first publication.

(2) No restrictions introduced by virtue of the preceding paragraph shall affect therights which an author may have acquired in respect of a work published in acountry of the Union before such restrictions were put into force.

(3) The countries of the Union which restrict the grant of copyright in accordancewith this Article shall give notice thereof to the Director General of the WorldIntellectual Property Organization (hereinafter designated as “the DirectorGeneral”) by a written declaration specifying the countries in regard to whichprotection is restricted, and the restrictions to which rights of authors whoare nationals of those countries are subjected. The Director General shallimmediately communicate this declaration to all the countries of the Union.

article 6bis

(1) Independently of the author’s economic rights, and even after the transfer ofthe said rights, the author shall have the right to claim authorship of the workand to object to any distortion, mutilation or other modification of, or other de-rogatory action in relation to, the said work, which would be prejudicial to hishonor or reputation.

(2) The rights granted to the author in accordance with the preceding paragraphshall, after his death, be maintained, at least until the expiry of the economicrights, and shall be exercisable by the persons or institutions authorized by thelegislation of the country where protection is claimed. However, those coun-tries whose legislation, at the moment of their ratification of or accession to thisAct, does not provide for the protection after the death of the author of all therights set out in the preceding paragraph may provide that some of these rightsmay, after his death, cease to be maintained.

(3) The means of redress for safeguarding the rights granted by this Article shall begoverned by the legislation of the country where protection is claimed.

article 7

(1) The term of protection granted by this Convention shall be the life of the authorand fifty years after his death.

(2) However, in the case of cinematographic works, the countries of the Unionmay provide that the term of protection shall expire fifty years after the work

Appendix 345

has been made available to the public with the consent of the author, or, fail-ing such an event within fifty years from the making of such a work, fifty yearsafter the making.

(3) In the case of anonymous or pseudonymous works, the term of protectiongranted by this Convention shall expire fifty years after the work has been law-fully made available to the public. However, when the pseudonym adoptedby the author leaves no doubt as to his identity, the term of protection shallbe that provided in paragraph (1). If the author of an anonymous or pseud-onymous work discloses his identity during the above-mentioned period, theterm of protection applicable shall be that provided in paragraph (1). Thecountries of the Union shall not be required to protect anonymous or pseud-onymous works in respect of which it is reasonable to presume that theirauthor has been dead for fifty years.

(4) It shall be a matter for legislation in the countries of the Union to determine theterm of protection of photographic works and that of works of applied art in sofar as they are protected as artistic works; however, this term shall last at leastuntil the end of a period of twenty-five years from the making of such a work.

(5) The term of protection subsequent to the death of the author and the terms pro-vided by paragraph (2), paragraph (3) and paragraph (4) shall run from the dateof death or of the event referred to in those paragraphs, but such terms shall alwaysbe deemed to begin on the first of January of the year following the death or suchevent.

(6) The countries of the Union may grant a term of protection in excess of thoseprovided by the preceding paragraphs.

(7) Those countries of the Union bound by the Rome Act of this Convention whichgrant, in their national legislation in force at the time of signature of the presentAct, shorter terms of protection than those provided for in the preceding para-graphs shall have the right to maintain such terms when ratifying or accedingto the present Act.

(8) In any case, the term shall be governed by the legislation of the country whereprotection is claimed; however, unless the legislation of that country otherwiseprovides, the term shall not exceed the term fixed in the country of origin of thework.

article 7bis

The provisions of the preceding Article shall also apply in the case of a work of jointauthorship, provided that the terms measured from the death of the author shall becalculated from the death of the last surviving author.

article 8

Authors of literary and artistic works protected by this Convention shall enjoy theexclusive right of making and of authorizing the translation of their works through-out the term of protection of their rights in the original works.

article 9

(1) Authors of literary and artistic works protected by this Convention shall have theexclusive right of authorizing the reproduction of these works, in any manner orform.

346 Appendix

(2) It shall be a matter for legislation in the countries of the Union to permit thereproduction of such works in certain special cases, provided that such repro-duction does not conflict with a normal exploitation of the work and does notunreasonably prejudice the legitimate interests of the author.

(3) Any sound or visual recording shall be considered as a reproduction for thepurposes of this Convention.

article 10

(1) It shall be permissible to make quotations from a work which has already beenlawfully made available to the public, provided that their making is compatiblewith fair practice, and their extent does not exceed that justified by the purpose,including quotations from newspaper articles and periodicals in the form of presssummaries.

(2) It shall be a matter for legislation in the countries of the Union, and for specialagreements existing or to be concluded between them, to permit the utilization,to the extent justified by the purpose, of literary or artistic works by way of il-lustration in publications, broadcasts or sound or visual recordings for teach-ing, provided such utilization is compatible with fair practice.

(3) Where use is made of works in accordance with the preceding paragraphs ofthis Article, mention shall be made of the source, and of the name of the authorif it appears thereon.

article 10bis

(1) It shall be a matter for legislation in the countries of the Union to permit thereproduction by the press, the broadcasting or the communication to the pub-lic by wire of articles published in newspapers or periodicals on current eco-nomic, political or religious topics, and of broadcast works of the same charac-ter, in cases in which the reproduction, broadcasting or such communicationthereof is not expressly reserved. Nevertheless, the source must always be clearlyindicated; the legal consequences of a breach of this obligation shall be deter-mined by the legislation of the country where protection is claimed.

(2) It shall also be a matter for legislation in the countries of the Union to deter-mine the conditions under which, for the purpose of reporting current eventsby means of photography, cinematography, broadcasting or communication tothe public by wire, literary or artistic works seen or heard in the course of theevent may, to the extent justified by the informatory purpose, be reproduced andmade available to the public.

article 11

(1) Authors of dramatic, dramatico-musical and musical works shall enjoy theexclusive right of authorizing:(i) the public performance of their works, including such public performance

by any means or process;(ii) any communication to the public of the performance of their works.

(2) Authors of dramatic or dramatico-musical works shall enjoy, during the fullterm of their rights in the original works, the same rights with respect to trans-lations thereof.

Appendix 347

article 11bis

(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing:(i) the broadcasting of their works or the communication thereof to the pub-

lic by any other means of wireless diffusion of signs, sounds or images;(ii) any communication to the public by wire or by rebroadcasting of the broad-

cast of the work, when this communication is made by an organizationother than the original one;

(iii) the public communication by loudspeaker or any other analogous instru-ment transmitting, by signs, sounds or images, the broadcast of the work.

(2) It shall be a matter for legislation in the countries of the Union to determine theconditions under which the rights mentioned in paragraph (1) may be exercised,but these conditions shall apply only in the countries where they have been pre-scribed. They shall not in any circumstances be prejudicial to the moral rightsof the author, nor to his right to obtain equitable remuneration which, in theabsence of agreement, shall be fixed by competent authority.

(3) In the absence of any contrary stipulation, permission granted in accordancewith paragraph (1) of this Article shall not imply permission to record, by meansof instruments recording sounds or images, the work broadcast. It shall, how-ever, be a matter for legislation in the countries of the Union to determine theregulations for ephemeral recordings made by a broadcasting organization bymeans of its own facilities and used for its own broadcasts. The preservation ofthese recordings in official archives may, on the ground of their exceptionaldocumentary character, be authorized by such legislation.

article 11ter

(1) Authors of literary works shall enjoy the exclusive right of authorizing:(i) the public recitation of their works, including such public recitation by any

means or process;(ii) any communication to the public of the recitation of their works.

(2) Authors of literary works shall enjoy, during the full term of their rights in theoriginal works, the same rights with respect to translations thereof.

article 12

Authors of literary or artistic works shall enjoy the exclusive right of authorizingadaptations, arrangements and other alterations of their works.

article 13

(1) Each country of the Union may impose for itself reservations and conditions onthe exclusive right granted to the author of a musical work and to the author ofany words, the recording of which together with the musical work has alreadybeen authorized by the latter, to authorize the sound recording of that musicalwork, together with such words, if any; but all such reservations and conditionsshall apply only in the countries which have imposed them and shall not, inany circumstances, be prejudicial to the rights of these authors to obtain equi-table remuneration which, in the absence of agreement, shall be fixed by com-petent authority.

348 Appendix

(2) Recordings of musical works made in a country of the Union in accordance withArticle 13(3) of the Conventions signed at Rome on June 2, 1928, and at Brus-sels on June 26, 1948, may be reproduced in that country without the permis-sion of the author of the musical work until a date two years after that countrybecomes bound by this Act.

(3) Recordings made in accordance with paragraph (1) and paragraph (2) of thisArticle and imported without permission from the parties concerned into acountry where they are treated as infringing recordings shall be liable to seizure.

article 14

(1) Authors of literary or artistic works shall have the exclusive right of authorizing:(i) the cinematographic adaptation and reproduction of these works, and the

distribution of the works thus adapted or reproduced;(ii) the public performance and communication to the public by wire of the

works thus adapted or reproduced.(2) The adaptation into any other artistic form of a cinematographic production

derived from literary or artistic works shall, without prejudice to the authori-zation of the author of the cinematographic production, remain subject to theauthorization of the authors of the original works.

(3) The provisions of Article 13(1) shall not apply.

article 14bis

(1) Without prejudice to the copyright in any work which may have been adapted orreproduced, a cinematographic work shall be protected as an original work. Theowner of copyright in a cinematographic work shall enjoy the same rights as theauthor of an original work, including the rights referred to in the preceding Article.

(2) (a) Ownership of copyright in a cinematographic work shall be a matter forlegislation in the country where protection is claimed.

(b) However, in the countries of the Union which, by legislation, includeamong the owners of copyright in a cinematographic work authors whohave brought contributions to the making of the work, such authors, if theyhave undertaken to bring such contributions, may not, in the absence ofany contrary or special stipulation, object to the reproduction, distribution,public performance, communication to the public by wire, broadcasting orany other communication to the public, or to the subtitling or dubbing oftexts, of the work.

(c) The question whether or not the form of the undertaking referred to aboveshould, for the application of the preceding subparagraph (b), be in a writtenagreement or a written act of the same effect shall be a matter for the legis-lation of the country where the maker of the cinematographic work has hisheadquarters or habitual residence. However, it shall be a matter for thelegislation of the country of the Union where protection is claimed to providethat the said undertaking shall be in a written agreement or a written actof the same effect. The countries whose legislation so provides shall notifythe Director General by means of a written declaration, which will be imme-diately communicated by him to all the other countries of the Union.

(d) By “contrary or special stipulation” is meant any restrictive condition whichis relevant to the aforesaid undertaking.

Appendix 349

(3) Unless the national legislation provides to the contrary, the provisions of para-graph (2)(b) above shall not be applicable to authors of scenarios, dialogues andmusical works created for the making of the cinematographic work, or to theprincipal director thereof. However, those countries of the Union whose legis-lation does not contain rules providing for the application of the said paragraph(2)(b) to such director shall notify the Director General by means of a writtendeclaration, which will be immediately communicated by him to all the othercountries of the Union.

article 14ter

(1) The author, or after his death the persons or institutions authorized by nationallegislation, shall, with respect to original works of art and original manuscriptsof writers and composers, enjoy the inalienable right to an interest in any saleof the work subsequent to the first transfer by the author of the work.

(2) The protection provided by the preceding paragraph may be claimed in a countryof the Union only if legislation in the country to which the author belongs sopermits, and to the extent permitted by the country where this protection isclaimed.

(3) The procedure for collection and the amounts shall be matters for determina-tion by national legislation.

article 15

(1) In order that the author of a literary or artistic work protected by this Conven-tion shall, in the absence of proof to the contrary, be regarded as such, and con-sequently be entitled to institute infringement proceedings in the countries ofthe Union, it shall be sufficient for his name to appear on the work in the usualmanner. This paragraph shall be applicable even if this name is a pseudonym,where the pseudonym adopted by the author leaves no doubt as to his identity.

(2) The person or body corporate whose name appears on a cinematographic workin the usual manner shall, in the absence of proof to the contrary, be presumedto be the maker of the said work.

(3) In the case of anonymous and pseudonymous works, other than those referredto in paragraph (1) above, the publisher whose name appears on the work shall,in the absence of proof to the contrary, be deemed to represent the author, andin this capacity he shall be entitled to protect and enforce the author’s rights.The provisions of this paragraph shall cease to apply when the author revealshis identity and establishes his claim to authorship of the work.

(4) (a) In the case of unpublished works where the identity of the author is un-known, but where there is every ground to presume that he is a national ofa country of the Union, it shall be a matter for legislation in that country todesignate the competent authority which shall represent the author andshall be entitled to protect and enforce his rights in the countries of theUnion.

(b) Countries of the Union which make such designation under the terms ofthis provision shall notify the Director General by means of a written dec-laration giving full information concerning the authority thus designated.The Director General shall at once communicate this declaration to all othercountries of the Union.

350 Appendix

article 16

(1) Infringing copies of a work shall be liable to seizure in any country of the Unionwhere the work enjoys legal protection.

(2) The provisions of the preceding paragraph shall also apply to reproductions com-ing from a country where the work is not protected, or has ceased to be protected.

(3) The seizure shall take place in accordance with the legislation of each country.

article 17

The provisions of this Convention cannot in any way affect the right of the Govern-ment of each country of the Union to permit, to control, or to prohibit, by legislationor regulation, the circulation, presentation, or exhibition of any work or productionin regard to which the competent authority may find it necessary to exercise that right.

article 18

(1) This Convention shall apply to all works which, at the moment of its cominginto force, have not yet fallen into the public domain in the country of originthrough the expiry of the term of protection.

(2) If, however, through the expiry of the term of protection which was previouslygranted, a work has fallen into the public domain of the country where protec-tion is claimed, that work shall not be protected anew.

(3) The application of this principle shall be subject to any provisions contained inspecial conventions to that effect existing or to be concluded between countriesof the Union. In the absence of such provisions, the respective countries shalldetermine, each in so far as it is concerned, the conditions of application of thisprinciple.

(4) The preceding provisions shall also apply in the case of new accessions to theUnion and to cases in which protection is extended by the application of Article7 or by the abandonment of reservations.

article 19

The provisions of this Convention shall not preclude the making of a claim to thebenefit of any greater protection which may be granted by legislation in a countryof the Union.

article 20

The Governments of the countries of the Union reserve the right to enter into spe-cial agreements among themselves, in so far as such agreements grant to authorsmore extensive rights than those granted by the Convention, or contain other pro-visions not contrary to this Convention. The provisions of existing agreements whichsatisfy these conditions shall remain applicable.

article 21

(1) Special provisions regarding developing countries are included in the Appendix.(2) Subject to the provisions of Article 28(1)(b), the Appendix forms an integral part

of this Act.

Appendix 351

article 22

(1) (a) The Union shall have an Assembly consisting of those countries of the Unionwhich are bound by Article 22 to Article 26.

(b) The Government of each country shall be represented by one delegate, whomay be assisted by alternate delegates, advisors, and experts.

(c) The expenses of each delegation shall be borne by the Government whichhas appointed it.

(2) (a) The Assembly shall:(i) deal with all matters concerning the maintenance and development

of the Union and the implementation of this Convention;(ii) give directions concerning the preparation for conferences of revision

to the International Bureau of Intellectual Property (hereinafter des-ignated as “the International Bureau”) referred to in the ConventionEstablishing the World Intellectual Property Organization (herein-after designated as “the Organization”), due account being taken ofany comments made by those countries of the Union which are notbound by Article 22 to Article 26;

(iii) review and approve the reports and activities of the Director Generalof the Organization concerning the Union, and give him all necessaryinstructions concerning matters within the competence of the Union;

(iv) elect the members of the Executive Committee of the Assembly;(v) review and approve the reports and activities of its Executive Commit-

tee, and give instructions to such Committee;(vi) determine the program and adopt the biennial budget of the Union,

and approve its final accounts;(vii) adopt the financial regulations of the Union;

(viii) establish such committees of experts and working groups as may benecessary for the work of the Union;

(ix) determine which countries not members of the Union and which inter-governmental and international non-governmental organizationsshall be admitted to its meetings as observers;

(x) adopt amendments to Article 22 to Article 26;(xi) take any other appropriate action designed to further the objectives

of the Union;(xii) exercise such other functions as are appropriate under this Convention;

(xiii) subject to its acceptance, exercise such rights as are given to it in theConvention establishing the Organization.

(b) With respect to matters which are of interest also to other Unions adminis-tered by the Organization, the Assembly shall make its decisions after hav-ing heard the advice of the Coordination Committee of the Organization.

(3) (a) Each country member of the Assembly shall have one vote.(b) One-half of the countries members of the Assembly shall constitute a quorum.(c) Notwithstanding the provisions of subparagraph (b), if, in any session, the

number of countries represented is less than one-half but equal to or morethan one-third of the countries members of the Assembly, the Assembly maymake decisions but, with the exception of decisions concerning its own pro-cedure, all such decisions shall take effect only if the following conditionsare fulfilled. The International Bureau shall communicate the said decisionsto the countries members of the Assembly which were not represented and

352 Appendix

shall invite them to express in writing their vote or abstention within a pe-riod of three months from the date of the communication. If, at the expira-tion of this period, the number of countries having thus expressed their voteor abstention attains the number of countries which was lacking for attain-ing the quorum in the session itself, such decisions shall take effect providedthat at the same time the required majority still obtains.

(d) Subject to the provisions of Article 26(2), the decisions of the Assembly shallrequire two-thirds of the votes cast.

(e) Abstentions shall not be considered as votes.(f) A delegate may represent, and vote in the name of, one country only.

(g) Countries of the Union not members of the Assembly shall be admitted toits meetings as observers.

(4) (a) The Assembly shall meet once in every second calendar year in ordinarysession upon convocation by the Director General and, in the absence ofexceptional circumstances, during the same period and at the same placeas the General Assembly of the Organization.

(b) The Assembly shall meet in extraordinary session upon convocation by theDirector General, at the request of the Executive Committee or at the requestof one-fourth of the countries members of the Assembly.

(5) The Assembly shall adopt its own rules of procedure.

article 23

(1) The Assembly shall have an Executive Committee.(2) (a) The Executive Committee shall consist of countries elected by the Assembly

from among countries members of the Assembly. Furthermore, the countryon whose territory the Organization has its headquarters shall, subject tothe provisions of Article 25(7)(b), have an ex officio seat on the Committee.

(b) The Government of each country member of the Executive Committee shallbe represented by one delegate, who may be assisted by alternate delegates,advisors, and experts.

(c) The expenses of each delegation shall be borne by the Government whichhas appointed it.

(3) The number of countries members of the Executive Committee shall corre-spond to one-fourth of the number of countries members of the Assembly. Inestablishing the number of seats to be filled, remainders after division by fourshall be disregarded.

(4) In electing the members of the Executive Committee, the Assembly shall havedue regard to an equitable geographical distribution and to the need for coun-tries party to the Special Agreements which might be established in relation withthe Union to be among the countries constituting the Executive Committee.

(5) (a) Each member of the Executive Committee shall serve from the close of thesession of the Assembly which elected it to the close of the next ordinarysession of the Assembly.

(b) Members of the Executive Committee may be re-elected, but not more thantwo-thirds of them.

(c) The Assembly shall establish the details of the rules governing the electionand possible re-election of the members of the Executive Committee.

(6) (a) The Executive Committee shall:(i) prepare the draft agenda of the Assembly;

Appendix 353

(ii) submit proposals to the Assembly respecting the draft program andbiennial budget of the Union prepared by the Director General;

(iii) [Deleted](iv) submit, with appropriate comments, to the Assembly the periodical re-

ports of the Director General and the yearly audit reports on the accounts;(v) in accordance with the decisions of the Assembly and having regard

to circumstances arising between two ordinary sessions of the Assem-bly, take all necessary measures to ensure the execution of the programof the Union by the Director General;

(vi) perform such other functions as are allocated to it under this Convention.(b) With respect to matters which are of interest also to other Unions administered

by the Organization, the Executive Committee shall make its decisions afterhaving heard the advice of the Coordination Committee of the Organization.

(7) (a) The Executive Committee shall meet once a year in ordinary session uponconvocation by the Director General, preferably during the same period andat the same place as the Coordination Committee of the Organization.

(b) The Executive Committee shall meet in extraordinary session upon convo-cation by the Director General, either on his own initiative, or at the requestof its Chairman or one-fourth of its members.

(8) (a) Each country member of the Executive Committee shall have one vote.(b) One-half of the members of the Executive Committee shall constitute a

quorum.(c) Decisions shall be made by a simple majority of the votes cast.(d) Abstentions shall not be considered as votes.(e) A delegate may represent, and vote in the name of, one country only.

(9) Countries of the Union not members of the Executive Committee shall be admittedto its meetings as observers.

(10) The Executive Committee shall adopt its own rules of procedure.

article 24

(1) (a) The administrative tasks with respect to the Union shall be performed bythe International Bureau, which is a continuation of the Bureau of theUnion united with the Bureau of the Union established by the InternationalConvention for the Protection of Industrial Property.

(b) In particular, the International Bureau shall provide the secretariat of thevarious organs of the Union.

(c) The Director General of the Organization shall be the chief executive of theUnion and shall represent the Union.

(2) The International Bureau shall assemble and publish information concerningthe protection of copyright. Each country of the Union shall promptly commu-nicate to the International Bureau all new laws and official texts concerningthe protection of copyright.

(3) The International Bureau shall publish a monthly periodical.(4) The International Bureau shall, on request, furnish information to any coun-

try of the Union on matters concerning the protection of copyright.(5) The International Bureau shall conduct studies, and shall provide services,

designed to facilitate the protection of copyright.(6) The Director General and any staff member designated by him shall participate,

without the right to vote, in all meetings of the Assembly, the Executive Com-

354 Appendix

mittee and any other committee of experts or working group. The Director Gen-eral, or a staff member designated by him, shall be ex officio secretary of thesebodies.

(7) (a) The International Bureau shall, in accordance with the directions of theAssembly and in cooperation with the Executive Committee, make the pre-parations for the conferences of revision of the provisions of the Conventionother than Article 22 to Article 26.

(b) The International Bureau may consult with intergovernmental and in-ternational non-governmental organizations concerning preparations forconferences of revision.

(c) The Director General and persons designated by him shall take part, with-out the right to vote, in the discussions at these conferences.

(8) The International Bureau shall carry out any other tasks assigned to it.

article 25

(1) (a) The Union shall have a budget.(b) The budget of the Union shall include the income and expenses proper to

the Union, its contribution to the budget of expenses common to the Unions,and, where applicable, the sum made available to the budget of the Confer-ence of the Organization.

(c) Expenses not attributable exclusively to the Union but also to one or moreother Unions administered by the Organization shall be considered as ex-penses common to the Unions. The share of the Union in such commonexpenses shall be in proportion to the interest the Union has in them.

(2) The budget of the Union shall be established with due regard to the requirementsof coordination with the budgets of the other Unions administered by the Orga-nization.

(3) The budget of the Union shall be financed from the following sources:(i) contributions of the countries of the Union;

(ii) fees and charges due for services performed by the International Bureauin relation to the Union;

(iii) sale of, or royalties on, the publications of the International Bureau con-cerning the Union;

(iv) gifts, bequests, and subventions;(v) rents, interests, and other miscellaneous income.

(4) (a) For the purpose of establishing its contribution towards the budget, eachcountry of the Union shall belong to a class, and shall pay its annual contri-butions on the basis of a number of units fixed as follows:

Class I 25Class II 20

Class III 15Class IV 10Class V 5

Class VI 3Class VII 1

(b) Unless it has already done so, each country shall indicate, concurrently withdepositing its instrument of ratification or accession, the class to which itwishes to belong. Any country may change class. If it chooses a lower class,the country must announce it to the Assembly at one of its ordinary ses-

Appendix 355

sions. Any such change shall take effect at the beginning of the calendaryear following the session.

(c) The annual contribution of each country shall be an amount in the sameproportion to the total sum to be contributed to the annual budget of theUnion by all countries as the number of its units is to the total of the unitsof all contributing countries.

(d) Contributions shall become due on the first of January of each year.(e) A country which is in arrears in the payment of its contributions shall have

no vote in any of the organs of the Union of which it is a member if theamount of its arrears equals or exceeds the amount of the contributions duefrom it for the preceding two full years. However, any organ of the Unionmay allow such a country to continue to exercise its vote in that organ if,and as long as, it is satisfied that the delay in payment is due to exceptionaland unavoidable circumstances.

(f) If the budget is not adopted before the beginning of a new financial period,it shall be at the same level as the budget of the previous year, in accordancewith the financial regulations.

(5) The amount of the fees and charges due for services rendered by the Interna-tional Bureau in relation to the Union shall be established, and shall be reportedto the Assembly and the Executive Committee, by the Director General.

(6) (a) The Union shall have a working capital fund which shall be constituted bya single payment made by each country of the Union. If the fund becomesinsufficient, an increase shall be decided by the Assembly.

(b) The amount of the initial payment of each country to the said fund or of itsparticipation in the increase thereof shall be a proportion of the contribu-tion of that country for the year in which the fund is established or the in-crease decided.

(c) The proportion and the terms of payment shall be fixed by the Assembly onthe proposal of the Director General and after it has heard the advice of theCoordination Committee of the Organization.

(7) (a) In the headquarters agreement concluded with the country on the territoryof which the Organization has its headquarters, it shall be provided that,whenever the working capital fund is insufficient, such country shall grantadvances. The amount of these advances and the conditions on which theyare granted shall be the subject of separate agreements, in each case, be-tween such country and the Organization. As long as it remains under theobligation to grant advances, such country shall have an ex officio seat onthe Executive Committee.

(b) The country referred to in subparagraph (a) and the Organization shall eachhave the right to denounce the obligation to grant advances, by written no-tification. Denunciation shall take effect three years after the end of the yearin which it has been notified.

(8) The auditing of the accounts shall be effected by one or more of the countries ofthe Union or by external auditors, as provided in the financial regulations. Theyshall be designated, with their agreement, by the Assembly.

article 26

(1) Proposals for the amendment of Article 22, Article 23, Article 24, Article 25,and the present Article, may be initiated by any country member of the As-

356 Appendix

sembly, by the Executive Committee, or by the Director General. Such propos-als shall be communicated by the Director General to the member countriesof the Assembly at least six months in advance of their consideration by theAssembly.

(2) Amendments to the Articles referred to in paragraph (1) shall be adopted by theAssembly. Adoption shall require three-fourths of the votes cast, provided thatany amendment of Article 22, and of the present paragraph, shall require four-fifths of the votes cast.

(3) Any amendment to the Articles referred to in paragraph (1) shall enter into forceone month after written notifications of acceptance, effected in accordance withtheir respective constitutional processes, have been received by the DirectorGeneral from three-fourths of the countries members of the Assembly at the timeit adopted the amendment. Any amendment to the said Articles thus acceptedshall bind all the countries which are members of the Assembly at the time theamendment enters into force, or which become members thereof at a subse-quent date, provided that any amendment increasing the financial obligationsof countries of the Union shall bind only those countries which have notifiedtheir acceptance of such amendment.

article 27

(1) This Convention shall be submitted to revision with a view to the introductionof amendments designed to improve the system of the Union.

(2) For this purpose, conferences shall be held successively in one of the countriesof the Union among the delegates of the said countries.

(3) Subject to the provisions of Article 26 which apply to the amendment of Article22 to Article 26, any revision of this Act, including the Appendix, shall requirethe unanimity of the votes cast.

article 28

(1) (a) Any country of the Union which has signed this Act may ratify it, and, if ithas not signed it, may accede to it. Instruments of ratification or accessionshall be deposited with the Director General.

(b) Any country of the Union may declare in its instrument of ratification oraccession that its ratification or accession shall not apply to Article 1 toArticle 21 and the Appendix, provided that, if such country has previouslymade a declaration under Article VI(1) of the Appendix, then it may declarein the said instrument only that its ratification or accession shall not applyto Article 1 to Article 20.

(c) Any country of the Union which, in accordance with subparagraph (b), hasexcluded provisions therein referred to from the effects of its ratification oraccession may at any later time declare that it extends the effects of its rati-fication or accession to those provisions. Such declaration shall be depos-ited with the Director General.

(2) (a) Article 1 to Article 21 and the Appendix shall enter into force three monthsafter both of the following two conditions are fulfilled:(i) at least five countries of the Union have ratified or acceded to this Act

without making a declaration under paragraph (1)(b),

Appendix 357

(ii) France, Spain, the United Kingdom of Great Britain and Northern Ire-land, and the United States of America, have become bound by the Uni-versal Copyright Convention as revised at Paris on July 24, 1971.

(b) The entry into force referred to in subparagraph (a) shall apply to those coun-tries of the Union which, at least three months before the said entry into force,have deposited instruments of ratification or accession not containing adeclaration under paragraph (1)(b).

(c) With respect to any country of the Union not covered by subparagraph (b)and which ratifies or accedes to this Act without making a declaration underparagraph (1)(b), Article 1 to Article 21 and the Appendix shall enter intoforce three months after the date on which the Director General has noti-fied the deposit of the relevant instrument of ratification or accession, un-less a subsequent date has been indicated in the instrument deposited. In thelatter case, Article 1 to Article 21 and the Appendix shall enter into force withrespect to that country on the date thus indicated.

(d) The provisions of subparagraph (a) to subparagraph (c) do not affect the ap-plication of Article VI of the Appendix.

(3) With respect to any country of the Union which ratifies or accedes to this Actwith or without a declaration made under paragraph (1)(b), Article 22 to Ar-ticle 38 shall enter into force three months after the date on which the DirectorGeneral has notified the deposit of the relevant instrument of ratification or ac-cession, unless a subsequent date has been indicated in the instrument depos-ited. In the latter case, Article 22 to Article 38 shall enter into force with respectto that country on the date thus indicated.

article 29

(1) Any country outside the Union may accede to this Act and thereby become partyto this Convention and a member of the Union. Instruments of accession shallbe deposited with the Director General.

(2) (a) Subject to subparagraph (b), this Convention shall enter into force with re-spect to any country outside the Union three months after the date on whichthe Director General has notified the deposit of its instrument of accession,unless a subsequent date has been indicated in the instrument deposited. Inthe latter case, this Convention shall enter into force with respect to thatcountry on the date thus indicated.

(b) If the entry into force according to subparagraph (a) precedes the entry intoforce of Article 1 to Article 21 and the Appendix according to Article 28(2)(a),the said country shall, in the meantime, be bound, instead of by Article 1 toArticle 21 and the Appendix, by Article 1 to Article 20 of the Brussels Act ofthis Convention.

article 29bis

Ratification of or accession to this Act by any country not bound by Article 22 toArticle 38 of the Stockholm Act of this Convention shall, for the sole purposes ofArticle 14(2) of the Convention establishing the Organization, amount to ratifica-tion of or accession to the said Stockholm Act with the limitation set forth in Article28(1)(b)(i) thereof.

358 Appendix

article 30

(1) Subject to the exceptions permitted by paragraph (2) of this Article, by Article28(1)(b), by Article 33(2), and by the Appendix, ratification or accession shallautomatically entail acceptance of all the provisions and admission to all theadvantages of this Convention.

(2) (a) Any country of the Union ratifying or acceding to this Act may, subject toArticle V(2) of the Appendix, retain the benefit of the reservations it haspreviously formulated on condition that it makes a declaration to that ef-fect at the time of the deposit of its instrument of ratification or accession.

(b) Any country outside the Union may declare, in acceding to this Conven-tion and subject to Article V(2) of the Appendix, that it intends to substi-tute, temporarily at least, for Article 8 of this Act concerning the right oftranslation, the provisions of Article 5 of the Union Convention of 1886,as completed at Paris in 1896, on the clear understanding that the saidprovisions are applicable only to translations into a language in generaluse in the said country. Subject to Article I(6)(b) of the Appendix, anycountry has the right to apply, in relation to the right of translation ofworks whose country of origin is a country availing itself of such a reser-vation, a protection which is equivalent to the protection granted by thelatter country.

(c) Any country may withdraw such reservations at any time by notificationaddressed to the Director General

article 31

(1) Any country may declare in its instrument of ratification or accession, or mayinform the Director General by written notification at any time thereafter, thatthis Convention shall be applicable to all or part of those territories, designated inthe declaration or notification, for the external relations of which it is responsible.

(2) Any country which has made such a declaration or given such a notificationmay, at any time, notify the Director General that this Convention shall ceaseto be applicable to all or part of such territories.

(3) (a) Any declaration made under paragraph (1) shall take effect on the same dateas the ratification or accession in which it was included, and any notifica-tion given under that paragraph shall take effect three months after its no-tification by the Director General.

(b) Any notification given under paragraph (2) shall take effect twelve monthsafter its receipt by the Director General.

(4) This Article shall in no way be understood as implying the recognition or tacitacceptance by a country of the Union of the factual situation concerning a ter-ritory to which this Convention is made applicable by another country of theUnion by virtue of a declaration under paragraph (1).

article 32

(1) This Act shall, as regards relations between the countries of the Union, and tothe extent that it applies, replace the Berne Convention of September 9, 1886,and the subsequent Acts of revision. The Acts previously in force shall continueto be applicable, in their entirety or to the extent that this Act does not replace

Appendix 359

them by virtue of the preceding sentence, in relations with countries of theUnion which do not ratify or accede to this Act.

(2) Countries outside the Union which become party to this Act shall, subject toparagraph (3), apply it with respect to any country of the Union not bound bythis Act or which, although bound by this Act, has made a declaration pursu-ant to Article 28(1)(b). Such countries recognize that the said country of theUnion, in its relations with them:(i) may apply the provisions of the most recent Act by which it is bound, and

(ii) subject to Article I(6) of the Appendix, has the right to adapt the protectionto the level provided for by this Act.

(3) Any country which has availed itself of any of the faculties provided for in theAppendix may apply the provisions of the Appendix relating to the faculty orfaculties of which it has availed itself in its relations with any other country ofthe Union which is not bound by this Act, provided that the latter country hasaccepted the application of the said provisions.

article 33

(1) Any dispute between two or more countries of the Union concerning the inter-pretation or application of this Convention, not settled by negotiation, may, byany one of the countries concerned, be brought before the International Courtof Justice by application in conformity with the Statute of the Court, unless thecountries concerned agree on some other method of settlement. The countrybringing the dispute before the Court shall inform the International Bureau; theInternational Bureau shall bring the matter to the attention of the other coun-tries of the Union.

(2) Each country may, at the time it signs this Act or deposits its instrument of rati-fication or accession, declare that it does not consider itself bound by the provi-sions of paragraph (1). With regard to any dispute between such country andany other country of the Union, the provisions of paragraph (1) shall not apply.

(3) Any country having made a declaration in accordance with the provisions ofparagraph (2) may, at any time, withdraw its declaration by notification ad-dressed to the Director General.

article 34

(1) Subject to Article 29bis, no country may ratify or accede to earlier Acts of thisConvention once Article 1 to Article 21 and the Appendix have entered intoforce.

(2) Once Article 1 to Article 21 and the Appendix have entered into force, no coun-try may make a declaration under Article 5 of the Protocol Regarding Develop-ing Countries attached to the Stockholm Act.

article 35

(1) This Convention shall remain in force without limitation as to time.(2) Any country may denounce this Act by notification addressed to the Director

General. Such denunciation shall constitute also denunciation of all earlier Actsand shall affect only the country making it, the Convention remaining in fullforce and effect as regards the other countries of the Union.

360 Appendix

(3) Denunciation shall take effect one year after the day on which the DirectorGeneral has received the notification.

(4) The right of denunciation provided by this Article shall not be exercised by anycountry before the expiration of five years from the date upon which it becomesa member of the Union.

article 36

(1) Any country party to this Convention undertakes to adopt, in accordance withits constitution, the measures necessary to ensure the application of thisConvention.

(2) It is understood that, at the time a country becomes bound by this Convention,it will be in a position under its domestic law to give effect to the provisions ofthis Convention.

article 37

(1) (a) This Act shall be signed in a single copy in the French and English languagesand, subject to paragraph (2), shall be deposited with the Director General.

(b) Official texts shall be established by the Director General, after consultationwith the interested Governments, in the Arabic, German, Italian, Portugueseand Spanish languages, and such other languages as the Assembly may des-ignate.

(c) In case of differences of opinion on the interpretation of the various texts,the French text shall prevail.

(2) This Act shall remain open for signature until January 31, 1972. Until that date,the copy referred to in paragraph (1)(a) shall be deposited with the Governmentof the French Republic.

(3) The Director General shall certify and transmit two copies of the signed text ofthis Act to the Governments of all countries of the Union and, on request, tothe Government of any other country.

(4) The Director General shall register this Act with the Secretariat of the UnitedNations.

(5) The Director General shall notify the Governments of all countries of the Unionof signatures, deposits of instruments of ratification or accession and any dec-larations included in such instruments or made pursuant to Article 28(1)(c),Article 30(2)(a) and Article 30(2)(b), and Article 33(2), entry into force of anyprovisions of this Act, notifications of denunciation, and notifications pursu-ant to Article 30(2)(c), Article 31(1) and Article 31(2), Article 33(3), and Ar-ticle 38(1), as well as the Appendix.

article 38

(1) Countries of the Union which have not ratified or acceded to this Act and whichare not bound by Article 22 to Article 26 of the Stockholm Act of this Conven-tion may, until April 26, 1975, exercise, if they so desire, the rights providedunder the said Articles as if they were bound by them. Any country desiring toexercise such rights shall give written notification to this effect to the DirectorGeneral; this notification shall be effective on the date of its receipt. Such coun-tries shall be deemed to be members of the Assembly until the said date.

Appendix 361

(2) As long as all the countries of the Union have not become Members of the Orga-nization, the International Bureau of the Organization shall also function as theBureau of the Union, and the Director General as the Director of the saidBureau.

(3) Once all the countries of the Union have become Members of the Organization,the rights, obligations, and property, of the Bureau of the Union shall devolveon the International Bureau of the Organization.

Appendix: Special Provisions Regarding DevelopingCountries

article i

(1) Any country regarded as a developing country in conformity with the estab-lished practice of the General Assembly of the United Nations which ratifies oraccedes to this Act, of which this Appendix forms an integral part, and which,having regard to its economic situation and its social or cultural needs, doesnot consider itself immediately in a position to make provision for the protec-tion of all the rights as provided for in this Act, may, by a notification depositedwith the Director General at the time of depositing its instrument of ratificationor accession or, subject to Article V(1)(c), at any time thereafter, declare that itwill avail itself of the faculty provided for in Article II, or of the faculty providedfor in Article III, or of both of those faculties. It may, instead of availing itself ofthe faculty provided for in Article II, make a declaration according to ArticleV(1)(a).

(2) (a) Any declaration under paragraph (1) notified before the expiration of theperiod of ten years from the entry into force of Article 1 to Article 21 andthis Appendix according to Article 28(2) shall be effective until the expira-tion of the said period. Any such declaration may be renewed in whole orin part for periods of ten years each by a notification deposited with the Di-rector General not more than fifteen months and not less than three monthsbefore the expiration of the ten-year period then running.

(b) Any declaration under paragraph (1) notified after the expiration of theperiod of ten years from the entry into force of Article 1 to Article 21 andthis Appendix according to Article 28(2) shall be effective until the expira-tion of the ten-year period then running. Any such declaration may be re-newed as provided for in the second sentence of subparagraph (a).

(3) Any country of the Union which has ceased to be regarded as a developingcountry as referred to in paragraph (1) shall no longer be entitled to renew itsdeclaration as provided in paragraph (2), and, whether or not it formally with-draws its declaration, such country shall be precluded from availing itself ofthe faculties referred to in paragraph (1) from the expiration of the ten-yearperiod then running or from the expiration of a period of three years after ithas ceased to be regarded as a developing country, whichever period expireslater.

(4) Where, at the time when the declaration made under paragraph (1) or para-graph (2) ceases to be effective, there are copies in stock which were made undera license granted by virtue of this Appendix, such copies may continue to bedistributed until their stock is exhausted.

362 Appendix

(5) Any country which is bound by the provisions of this Act and which has depos-ited a declaration or a notification in accordance with Article 31(1) with respectto the application of this Act to a particular territory, the situation of which canbe regarded as analogous to that of the countries referred to in paragraph (1),may, in respect of such territory, make the declaration referred to in paragraph(1) and the notification of renewal referred to in paragraph (2). As long as suchdeclaration or notification remains in effect, the provisions of this Appendix shallbe applicable to the territory in respect of which it was made.

(6) (a) The fact that a country avails itself of any of the faculties referred to in para-graph (1) does not permit another country to give less protection to worksof which the country of origin is the former country than it is obliged to grantunder Article 1 to Article 20.

(b) The right to apply reciprocal treatment provided for in Article 30(2)(b), sec-ond sentence, shall not, until the date on which the period applicableunder Article I(3) expires, be exercised in respect of works the country oforigin of which is a country which has made a declaration according toArticle V(1)(a).

article ii

(1) Any country which has declared that it will avail itself of the faculty providedfor in this Article shall be entitled, so far as works published in printed or analo-gous forms of reproduction are concerned, to substitute for the exclusive rightof translation provided for in Article 8 a system of non-exclusive and non-transferable licenses, granted by the competent authority under the followingconditions and subject to Article IV.

(2) (a) Subject to paragraph (3), if, after the expiration of a period of three years,or of any longer period determined by the national legislation of the saidcountry, commencing on the date of the first publication of the work, atranslation of such work has not been published in a language in generaluse in that country by the owner of the right of translation, or with his au-thorization, any national of such country may obtain a license to make atranslation of the work in the said language and publish the translation inprinted or analogous forms of reproduction.

(b) A license under the conditions provided for in this Article may also be grantedif all the editions of the translation published in the language concerned areout of print.

(3) (a) In the case of translations into a language which is not in general use inone or more developed countries which are members of the Union, a periodof one year shall be substituted for the period of three years referred to inparagraph (2)(a).

(b) Any country referred to in paragraph (1) may, with the unanimous agree-ment of the developed countries which are members of the Union and inwhich the same language is in general use, substitute, in the case of trans-lations into that language, for the period of three years referred to in para-graph (2)(a) a shorter period as determined by such agreement but not lessthan one year. However, the provisions of the foregoing sentence shall notapply where the language in question is English, French or Spanish. TheDirector General shall be notified of any such agreement by the Govern-ments which have concluded it.

Appendix 363

(4) (a) No license obtainable after three years shall be granted under this Articleuntil a further period of six months has elapsed, and no license obtainableafter one year shall be granted under this Article until a further period ofnine months has elapsed(i) from the date on which the applicant complies with the requirements

mentioned in Article IV(1), or(ii) where the identity or the address of the owner of the right of transla-

tion is unknown, from the date on which the applicant sends, as pro-vided for in Article IV(2), copies of his application submitted to the au-thority competent to grant the license.

(b) If, during the said period of six or nine months, a translation in the languagein respect of which the application was made is published by the owner ofthe right of translation or with his authorization, no license under thisArticle shall be granted.

(5) Any license under this Article shall be granted only for the purpose of teach-ing, scholarship or research.

(6) If a translation of a work is published by the owner of the right of translation orwith his authorization at a price reasonably related to that normally chargedin the country for comparable works, any license granted under this Article shallterminate if such translation is in the same language and with substantially thesame content as the translation published under the license. Any copies alreadymade before the license terminates may continue to be distributed until theirstock is exhausted.

(7) For works which are composed mainly of illustrations, a license to make andpublish a translation of the text and to reproduce and publish the illustrationsmay be granted only if the conditions of Article III are also fulfilled.

(8) No license shall be granted under this Article when the author has withdrawnfrom circulation all copies of his work.

(9) (a) A license to make a translation of a work which has been published in printedor analogous forms of reproduction may also be granted to any broadcastingorganization having its headquarters in a country referred to in paragraph(1), upon an application made to the competent authority of that country bythe said organization, provided that all of the following conditions are met:

(i) the translation is made from a copy made and acquired in accordancewith the laws of the said country;

(ii) the translation is only for use in broadcasts intended exclusively forteaching or for the dissemination of the results of specialized technicalor scientific research to experts in a particular profession;

(iii) the translation is used exclusively for the purposes referred to in con-dition (ii) through broadcasts made lawfully and intended for recipi-ents on the territory of the said country, including broadcasts madethrough the medium of sound or visual recordings lawfully and exclu-sively made for the purpose of such broadcasts;

(iv) all uses made of the translation are without any commercial purpose.(b) Sound or visual recordings of a translation which was made by a broadcast-

ing organization under a license granted by virtue of this paragraph may, forthe purposes and subject to the conditions referred to in subparagraph (a) andwith the agreement of that organization, also be used by any other broad-casting organization having its headquarters in the country whose compe-tent authority granted the license in question.

364 Appendix

(c) Provided that all of the criteria and conditions set out in subparagraph (a)are met, a license may also be granted to a broadcasting organization totranslate any text incorporated in an audio-visual fixation where such fixa-tion was itself prepared and published for the sole purpose of being used inconnection with systematic instructional activities.

(d) Subject to subparagraph (a) to subparagraph (c), the provisions of the pre-ceding paragraphs shall apply to the grant and exercise of any licensegranted under this paragraph.

article iii

(1) Any country which has declared that it will avail itself of the faculty providedfor in this Article shall be entitled to substitute for the exclusive right of repro-duction provided for in Article 9 a system of non-exclusive and non-transferablelicenses, granted by the competent authority under the following conditions andsubject to Article IV.

(2) (a) If, in relation to a work to which this Article applies by virtue of paragraph(7), after the expiration of(i) the relevant period specified in paragraph (3), commencing on the date

of first publication of a particular edition of the work, or(ii) any longer period determined by national legislation of the country re-

ferred to in paragraph (1), commencing on the same date,copies of such edition have not been distributed in that country to thegeneral public or in connection with systematic instructional activities, bythe owner of the right of reproduction or with his authorization, at a pricereasonably related to that normally charged in the country for comparableworks, any national of such country may obtain a license to reproduce andpublish such edition at that or a lower price for use in connection with sys-tematic instructional activities.

(b) A license to reproduce and publish an edition which has been distributedas described in subparagraph (a) may also be granted under the conditionsprovided for in this Article if, after the expiration of the applicable period,no authorized copies of that edition have been on sale for a period of sixmonths in the country concerned to the general public or in connectionwith systematic instructional activities at a price reasonably related to thatnormally charged in the country for comparable works.

(3) The period referred to in paragraph (2)(a)(i) shall be five years, except that(i) for works of the natural and physical sciences, including mathematics,

and of technology, the period shall be three years;(ii) for works of fiction, poetry, drama and music, and for art books, the

period shall be seven years.(4) (a) No license obtainable after three years shall be granted under this Article

until a period of six months has elapsed(i) from the date on which the applicant complies with the requirements

mentioned in Article IV(1), or(ii) where the identity or the address of the owner of the right of reproduc-

tion is unknown, from the date on which the applicant sends, as pro-vided for in Article IV(2), copies of his application submitted to the au-thority competent to grant the license.

Appendix 365

(b) Where licenses are obtainable after other periods and Article IV(2) is appli-cable, no license shall be granted until a period of three months has elapsedfrom the date of the dispatch of the copies of the application.

(c) If, during the period of six or three months referred to in subparagraph (a)and subparagraph (b), a distribution as described in paragraph (2)(a) hastaken place, no license shall be granted under this Article.

(d) No license shall be granted if the author has withdrawn from circulationall copies of the edition for the reproduction and publication of which thelicense has been applied for.

(5) A license to reproduce and publish a translation of a work shall not be grantedunder this Article in the following cases:

(i) where the translation was not published by the owner of the right oftranslation or with his authorization, or

(ii) where the translation is not in a language in general use in the coun-try in which the license is applied for.

(6) If copies of an edition of a work are distributed in the country referred to in para-graph (1) to the general public or in connection with systematic instructional ac-tivities, by the owner of the right of reproduction or with his authorization, at aprice reasonably related to that normally charged in the country for comparableworks, any license granted under this Article shall terminate if such edition is inthe same language and with substantially the same content as the edition whichwas published under the said license. Any copies already made before the licenseterminates may continue to be distributed until their stock is exhausted.

(7) (a) Subject to subparagraph (b), the works to which this Article applies shall belimited to works published in printed or analogous forms of reproduction.

(b) This Article shall also apply to the reproduction in audio-visual form of lawfullymade audio-visual fixations including any protected works incorporated thereinand to the translation of any incorporated text into a language in general usein the country in which the license is applied for, always provided that the audio-visual fixations in question were prepared and published for the sole purposeof being used in connection with systematic instructional activities.

article iv

(1) A license under Article II or Article III may be granted only if the applicant, inaccordance with the procedure of the country concerned, establishes either thathe has requested, and has been denied, authorization by the owner of the rightto make and publish the translation or to reproduce and publish the edition, asthe case may be, or that, after due diligence on his part, he was unable to findthe owner of the right. At the same time as making the request, the applicantshall inform any national or international information center referred to inparagraph (2).

(2) If the owner of the right cannot be found, the applicant for a license shall send,by registered airmail, copies of his application, submitted to the authority com-petent to grant the license, to the publisher whose name appears on the workand to any national or international information center which may have beendesignated, in a notification to that effect deposited with the Director General,by the Government of the country in which the publisher is believed to havehis principal place of business.

366 Appendix

(3) The name of the author shall be indicated on all copies of the translation or re-production published under a license granted under Article II or Article III. Thetitle of the work shall appear on all such copies. In the case of a translation, theoriginal title of the work shall appear in any case on all the said copies.

(4) (a) No license granted under Article II or Article III shall extend to the exportof copies, and any such license shall be valid only for publication of the trans-lation or of the reproduction, as the case may be, in the territory of the coun-try in which it has been applied for.

(b) For the purposes of subparagraph (a), the notion of export shall include thesending of copies from any territory to the country which, in respect of thatterritory, has made a declaration under Article I(5).

(c) Where a governmental or other public entity of a country which has granteda license to make a translation under Article II into a language other thanEnglish, French or Spanish sends copies of a translation published under suchlicense to another country, such sending of copies shall not, for the purposesof subparagraph (a), be considered to constitute export if all of the followingconditions are met:

(i) the recipients are individuals who are nationals of the country whosecompetent authority has granted the license, or organizations group-ing such individuals;

(ii) the copies are to be used only for the purpose of teaching, scholarshipor research;

(iii) the sending of the copies and their subsequent distribution to recipi-ents is without any commercial purpose; and

(iv) the country to which the copies have been sent has agreed with thecountry whose competent authority has granted the license to allowthe receipt, or distribution, or both, and the Director General has beennotified of the agreement by the Government of the country in whichthe license has been granted.

(5) All copies published under a license granted by virtue of Article II or Article IIIshall bear a notice in the appropriate language stating that the copies are availablefor distribution only in the country or territory to which the said license applies.

(6) (a) Due provision shall be made at the national level to ensure(i) that the license provides, in favour of the owner of the right of transla-

tion or of reproduction, as the case may be, for just compensation thatis consistent with standards of royalties normally operating on licensesfreely negotiated between persons in the two countries concerned, and

(ii) payment and transmittal of the compensation: should national cur-rency regulations intervene, the competent authority shall make all ef-forts, by the use of international machinery, to ensure transmittal ininternationally convertible currency or its equivalent.

(b) Due provision shall be made by national legislation to ensure a correct trans-lation of the work, or an accurate reproduction of the particular edition, asthe case may be.

article v

(1) (a) Any country entitled to make a declaration that it will avail itself of the facultyprovided for in Article II may, instead, at the time of ratifying or acceding tothis Act:

Appendix 367

(i) if it is a country to which Article 30(2)(a) applies, make a declarationunder that provision as far as the right of translation is concerned;

(ii) if it is a country to which Article 30(2)(a) does not apply, and even if itis not a country outside the Union, make a declaration as provided forin Article 30(2)(b), first sentence.

(b) In the case of a country which ceases to be regarded as a developing countryas referred to in Article I(1), a declaration made according to this paragraphshall be effective until the date on which the period applicable under Ar-ticle I(3) expires.

(c) Any country which has made a declaration according to this paragraph maynot subsequently avail itself of the faculty provided for in Article II even if itwithdraws the said declaration.

(2) Subject to paragraph (3), any country which has availed itself of the facultyprovided for in Article II may not subsequently make a declaration accordingto paragraph (1).

(3) Any country which has ceased to be regarded as a developing country as re-ferred to in Article I(1) may, not later than two years prior to the expiration ofthe period applicable under Article I(3), make a declaration to the effect providedfor in Article 30(2)(b), first sentence, notwithstanding the fact that it is not acountry outside the Union. Such declaration shall take effect at the date onwhich the period applicable under Article I(3) expires.

article vi

(1) Any country of the Union may declare, as from the date of this Act, and at anytime before becoming bound by Article 1 to Article 21 and this Appendix:

(i) if it is a country which, were it bound by Article 1 to Article 21 andthis Appendix, would be entitled to avail itself of the faculties referredto in Article I(1), that it will apply the provisions of Article II or ofArticle III or of both to works whose country of origin is a countrywhich, pursuant to (ii) below, admits the application of those Articlesto such works, or which is bound by Article 1 to Article 21 and thisAppendix; such declaration may, instead of referring to Article II, referto Article V;

(ii) that it admits the application of this Appendix to works of which it isthe country of origin by countries which have made a declaration under(i) above or a notification under Article I.

(2) Any declaration made under paragraph (1) shall be in writing and shall bedeposited with the Director General. The declaration shall become effectivefrom the date of its deposit.

368 Appendix

368



[BRUSSELS TEXT, 1948]

article 1

The countries to which this Convention applies constitute a Union for the protec-tion of the rights of authors in their literary and artistic works.

article 2

(1) The expression “literary and artistic works” shall include every productionin the literary, scientific and artistic domain, whatever may be the mode orform of its expression, such as books, pamphlets and other writings; lectures,addresses, sermons, and other works of the same nature, dramatic or dramatico-musical works; choreographic works and entertainments in dumb show, theacting form of which is fixed in writing or otherwise; musical compositions withor without words; cinematographic works and works produced by a processanalogous to cinematography; works of drawing, painting, architecture, sculp-ture, engraving and lithography; photographic works and works produced bya process analogous to photography; works of applied art; illustrations, maps,plans, sketches and three-dimensional works relative to geography, topogra-phy, architecture or science.

(2) Translations, adaptations, arrangements of music and other alterations of a lit-erary or artistic work shall be protected as original works without prejudice tothe copyright in the original work. It shall, however, be a matter for legislation inthe countries of the Union to determine the protection to be granted to transla-tions of official texts of a legislative, administrative and legal nature.

(3) Collections of literary or artistic works such as encyclopaedias and anthologieswhich, by reason of the selection and arrangement of their contents, constituteintellectual creations shall be protected as such, without prejudice to the copy-right in each of the works forming part of such collections.

(4) The works mentioned in this Article shall enjoy protection in all countries ofthe Union. This protection shall operate for the benefit of the author and hissuccessors in title.

(5) It shall be a matter for legislation in the countries of the Union to determinethe extent of the application of their laws to works of applied art and indus-trial designs and models, as well as the conditions under which such works,designs and models shall be protected. Works protected in the country of ori-gin solely as designs and models shall be entitled in other countries of theUnion only to such protection as is granted to designs and models in suchcountries.

Appendix 369

article 2bis

(1) It shall be a matter for legislation in the countries of the Union to exclude, whollyor in part, from the protection afforded by the preceding Article political speechesand speeches delivered in the course of legal proceedings.

(2) It shall also be a matter for legislation in the countries of the Union to deter-mine the conditions under which lectures, addresses, sermons and other worksof the same nature may be reproduced by the press.

(3) Nevertheless, the author alone shall have the right of making a collection of hisworks mentioned in the preceding paragraphs.

article 3

[Omitted]

article 4

(1) Authors who are nationals of any of the countries of the Union shall enjoy incountries other than the country of origin of the work, for their works, whetherunpublished or first published in a country of the Union, the rights which theirrespective laws do now or may hereafter grant to their nationals, as well as therights specially granted by this Convention.

(2) The enjoyment and the exercise of these rights shall not be subject to any for-mality; such enjoyment and such exercise shall be independent of the existenceof protection in the country of origin of the work. Consequently, apart from theprovisions of this Convention, the extent of protection, as well as the means ofredress afforded to the author to protect his rights, shall be governed exclusivelyby the laws of the country where protection is claimed.

(3) The country of origin shall be considered to be, in the case of published works,the country of first publication, even in the case of works published simultaneouslyin several countries of the Union which grant the same term of protection; in thecase of works published simultaneously in several countries of the Union whichgrant different terms of protection, the country whose legislation grants the short-est term of protection. In the case of works published simultaneously in a coun-try outside the Union and in a country of the Union, the latter country shall beconsidered exclusively as the country of origin. A work shall be considered ashaving been published simultaneously in several countries if it has been publishedin two or more countries within thirty days of its first publication.

(4) For the purposes of Articles 4, 5 and 6, the expression “published works”means works published, whatever may be the means of manufacture of thecopies, and which have been made available in sufficient quantities to the pub-lic. The performance of a dramatic, dramatico-musical or cinematographicwork, of a musical work, the public recitation of a literary work, the commu-nication by wire or the broadcasting of literary or artistic works, the exhibi-tion of a work of art and the construction of a work of architecture shall notconstitute publication.

(5) The country of origin shall be considered to be, in the case of unpublished works,the country to which the author belongs. However, in the case of works of ar-chitecture, or other artistic works incorporated in a building, the country of the

370 Appendix

Union where these works have been built or incorporated in a building shall beconsidered as the country of origin.

article 5

Authors who are nationals of one of the countries of the Union, and who first pub-lish their works in another country of the Union, shall have in the latter countrythe same rights as authors who are nationals of that country.

article 6

(1) Authors who are not nationals of one of the countries of the Union, who firstpublish their works in one of those countries, shall enjoy in that country thesame rights as authors who are nationals of that country, and in the other coun-tries of the Union the rights granted by this Convention.

(2) Nevertheless, where any country outside the Union fails to protect in an adequatemanner the works of authors who are nationals of one of the countries of theUnion, the latter country may restrict the protection given to the works of au-thors who are, at the date of the first publication thereof, nationals of the othercountry and are not effectively domiciled in one of the countries of the Union. Ifthe country of first publication avails itself of this right, the other countries of theUnion shall not be required to grant to works thus subjected to special treatmenta wider protection than that granted to them in the country of first publication.

(3) No restrictions introduced by virtue of the preceding paragraph shall affect therights which an author may have acquired in respect of a work published in acountry of the Union before such restrictions were put into force.

(4) The countries of the Union which restrict the grant of copyright in accordancewith this Article shall give notice thereof to the Government of the Swiss Con-federation by a written declaration specifying the countries in regard to whichprotection is restricted, and the restrictions to which rights of authors whoare nationals of those countries are subjected. The Government of the SwissConfederation shall immediately communicate this declaration to all the coun-tries of the Union.

article 6bis

(1) Independently of the author’s economic rights, and even after the transfer ofthe said rights, the author shall have the right, during his lifetime, to claim au-thorship of the work, and to object to any distortion, mutilation or other modi-fication of, or any other derogatory action in relation to, the said work, whichwould be prejudicial to his honor or reputation.

(2) In so far as the legislation of the countries of the Union permits, the rightsgranted to the author in accordance with the preceding paragraph shall, afterhis death, be maintained, at least until the expiry of the economic rights, andshall be exercisable by the persons or institutions authorized by the said legis-lation. It shall be a matter for the national legislation of the countries of theUnion to determine the conditions under which the rights mentioned in thisparagraph shall be exercised.

(3) The means of redress for safeguarding the rights granted by this Article shall begoverned by the legislation of the country where protection is claimed.

Appendix 371

article 7

(1) The term of protection granted by this Convention shall be the life of the au-thor and fifty years after his death.

(2) However, where one or more countries of the Union grant a term of protectionin excess of that provided by paragraph (1), the term shall be governed by thelegislation of the country where protection is claimed, but shall not exceed theterm fixed in the country of origin of the work.

(3) In the case of cinematographic and photographic works, as well as works pro-duced by a process analogous to cinematography or photography, and in thecase of works of applied art, the term of protection shall be governed by the leg-islation of the country where protection is claimed, but shall not exceed the termfixed in the country of origin of the work.

(4) In the case of anonymous and pseudonymous works, the term of protection shallbe fixed at fifty years from the date of their publication. However, when thepseudonym adopted by the author leaves no doubt as to his identity, the termof protection shall be that provided in paragraph (1). If the author of an anony-mous or pseudonymous work discloses his identity during the above-mentionedperiod, the term of protection applicable shall be that provided in paragraph (1).

(5) In the case of posthumous works which do not fall within the categories of worksincluded in paragraphs (3) and (4) above, the term of protection afforded to theheirs and other successors in title of the author shall end fifty years after thedeath of the author.

(6) The term of protection subsequent to the death of the author and the terms pro-vided by paragraphs (3), (4), and (5) shall run from the date of death or of pub-lication, but such terms shall always be deemed to begin on the first of Januaryof the year following the event which gives rise to them.

article 7bis

In the case of a work of joint authorship the term of protection shall be calculatedfrom the date of the death of the last surviving author.

article 8

Authors of literary and artistic works protected by this Convention shall have theexclusive right of making and of authorizing the translation of their works through-out the term of protection of their rights in the original works.

article 9

(1) Serial novels, short stories and all other works, whether literary, scientific, orartistic, whatever their purpose, and which are published in the newspapers orperiodicals of one of the countries of the Union shall not be reproduced in theother countries without the consent of the authors.

(2) Articles on current economic, political or religious topics may be reproducedby the press unless the reproduction thereof is expressly reserved. Nevertheless,the source must always be clearly indicated; the legal consequences of a breachof this obligation shall be determined by the legislation of the country whereprotection is claimed.

372 Appendix

(3) The protection of this Convention shall not apply to news of the day or to mis-cellaneous facts having the character of mere items of press information.

article 10

(1) It shall be permissible in all the countries of the Union to make short quota-tions from newspaper articles and periodicals, as well as to include them inpress summaries.

(2) The right to include excerpts from literary or artistic works in educational orscientific publications, or in chrestomathies, to the extent justified by the pur-pose, shall be a matter for legislation in the countries of the Union, and for spe-cial arrangements existing or to be concluded between them.

(3) Quotations and excerpts shall be accompanied by a mention of the source andthe name of the author, if it appears thereon.

article 10bis

It shall be a matter for legislation in the countries of the Union to determine the con-ditions under which recording, reproduction, and public communication of shortextracts from literary and artistic works may be made for the purpose of reportingcurrent events by means of photography or cinematography or by broadcasting.

article 11

(1) Authors of dramatic, dramatico-musical and musical works shall enjoy theexclusive right of authorizing:(i) the public performance of their works;

(ii) any communication to the public of the performance of their works. Theapplication of the provisions of Articles 11bis and 13 is, however, reserved.

(2) Authors of dramatic or dramatico-musical works shall enjoy, during the fullterm of their rights in the original works, the same rights with respect to trans-lations thereof.

(3) In order to enjoy the protection of this Article, authors shall not be bound, whenpublishing their works, to forbid the public performance thereof.

article 11bis

(1) Authors of literary and artistic works shall have the exclusive right of authorizing:(i) the broadcasting of their works or the communication thereof to the public

by any other means of wireless diffusion of signs, sounds or images;(ii) any communication to the public, by wire or by rebroadcasting of the broad-

cast of the work, when this communication is made by an organizationother than the original one;

(iii) the public communication by loudspeaker or any other analogous instru-ment transmitting, by signs, sounds or images, the broadcast of the work.

(2) It shall be a matter for legislation in the countries of the Union to determinethe conditions under which the rights mentioned in the preceding paragraphmay be exercised, but these conditions shall apply only in the countries wherethey have been prescribed. They shall not in any circumstances be prejudi-cial to the moral rights of the author, nor to his right to obtain equitable re-

Appendix 373

muneration which, in the absence of agreement, shall be fixed by competentauthority.

(3) In the absence of any contrary stipulation, permission granted in accordancewith paragraph (1) of this Article shall not imply permission to record, by meansof instruments recording sounds or images, the work broadcast. It shall, how-ever, be a matter for legislation in the countries of the Union to determine theregulations for ephemeral recordings made by a broadcasting organization bymeans of its own facilities and used for its own broadcasts. The preservation ofthese recordings in official archives may, on the ground of their exceptionaldocumentary character, be authorized by such legislation.

article 11ter

Authors of literary works shall enjoy the exclusive right of authorizing the publicrecitation of their works.

article 12

Authors of literary, scientific or artistic works shall enjoy the exclusive right ofauthorizing adaptations, arrangements and other alterations of their works.

article 13

(1) Authors of musical works shall enjoy the exclusive right of authorizing:(i) the recording of such works by instruments capable of reproducing them

mechanically;(ii) the public performance by means of such instruments of works thus recorded.

(2) Reservations and conditions relating to the application of the rights mentionedin the preceding paragraph may be determined by legislation in each countryof the Union, in so far as it may be concerned; but all such reservations and con-ditions shall apply only in the countries which have imposed them and shallnot, in any circumstances, be prejudicial to the rights of these authors to ob-tain equitable remuneration which, in the absence of agreement, shall be fixedby competent authority.

(3) The provisions of paragraph (1) of this Article shall not be retroactive, and con-sequently shall not be applicable in a country of the Union to works which, inthat country, may have been lawfully adapted to mechanical instruments be-fore the coming into force of the Convention signed at Berlin on November 13,1908, and in the case of a country which has acceded to the Union since thatdate, or accedes in the future, before the date of its accession.

(4) Recordings made in accordance with paragraphs (2) and (3) of this Article, andimported without permission from the parties concerned into a country wherethey are treated as infringing recordings, shall be liable to seizure.

article 14

(1) Authors of literary, scientific or artistic works shall have the exclusive right ofauthorizing:(i) the cinematographic adaptation and reproduction of these works, and the

distribution of the works thus adapted or reproduced;(ii) the public performance of the works thus adapted or reproduced.

374 Appendix

(2) Without prejudice to the copyright in the work reproduced or adapted, a cine-matographic work shall be protected as an original work.

(3) The adaptation into any other artistic form of cinematographic production de-rived from literary, scientific or artistic works shall, without prejudice to the au-thorization of the author of the cinematographic production, remain subjectto the authorization of the author of the original work.

(4) Cinematographic adaptations of literary, scientific or artistic works shall notbe subject to the reservations and conditions contained in Article 13, para-graph (2).

(5) The preceding provisions shall apply to reproduction or production effected byany other process analogous to cinematography.

article 14bis

(1) The author, or after his death the persons or institutions authorized by nationallegislation, shall, with respect to original works of art and original manuscriptsof writers and composers, enjoy the inalienable right to an interest in any saleof the work subsequent to the first transfer by the author of the work.

(2) The protection provided by the preceding paragraph may be claimed in a coun-try of the Union only if legislation in the country to which the author belongsso permits, and to the extent permitted by the country where this protection isclaimed.

(3) The procedure for collection and the amounts shall be matters for determina-tion by national legislation.

article 15

(1) In order that the author of a literary or artistic work protected by this Con-vention shall, in the absence of proof to the contrary, be regarded as such, andconsequently be entitled to institute infringement proceedings in the coun-tries of the Union, it shall be sufficient for his name to appear on the work inthe usual manner. This paragraph shall be applicable even if this name is apseudonym, where the pseudonym adopted by the author leaves no doubt asto his identity.

(2) In the case of anonymous or pseudonymous works, other than those referredto in the preceding paragraph, the publisher whose name appears on the workshall, in the absence of proof to the contrary, be deemed to represent theauthor, and in this capacity he shall be entitled to protect and to enforce theauthor’s rights. The provisions of this paragraph shall cease to apply whenthe author reveals his identity and establishes his claim to authorship of thework.

article 16

(1) Infringing copies of a work shall be liable to seizure by the competent authori-ties of any country of the Union where the work enjoys legal protection.

(2) In these countries the seizure may also apply to reproductions coming from acountry where the work is not protected, or has ceased to be protected.

(3) The seizure shall take place in accordance with the legislation of each country.

Appendix 375

article 17

The provisions of this Convention cannot in any way affect the right of the Govern-ment of each country of the Union to permit, to control, or to prohibit, by legisla-tion or regulation, the circulation, presentation, or exhibition of any work or pro-duction in regard to which the competent authority may find it necessary to exercisethat right.

article 18

(1) This Convention shall apply to all works which, at the moment of its cominginto force, have not yet fallen into the public domain in the country of originthrough the expiry of the term of protection.

(2) If, however, through the expiry of the term of protection which was previouslygranted, a work has fallen into the public domain of the country where protec-tion is claimed, that work shall not be protected anew.

(3) The application of this principle shall be subject to any provisions contained inspecial conventions to that effect existing or to be concluded between countriesof the Union. In the absence of such provisions, the respective countries shalldetermine, each in so far as it is concerned, the conditions of application of thisprinciple.

(4) The preceding provisions shall also apply in the case of new accessions to theUnion, and to cases in which the term of protection is extended by the applica-tion of Article 7 or by abandonment of reservations.

article 19

The provisions of this Convention shall not preclude the making of a claim to the bene-fit of any greater protection which may be granted by legislation in a country of theUnion.

article 20

The Governments of the countries of the Union reserve the right to enter into spe-cial agreements among themselves, in so far as such agreements grant to authorsmore extensive rights than those granted by the Convention, or contain other pro-visions not contrary to this Convention. The provisions of existing agreements whichsatisfy these conditions shall remain applicable.

article 21

(1) The international office established under the name of the “Bureau of theInternational Union for the Protection of Literary and Artistic Works” shallbe maintained.

(2) That Bureau shall be placed under the high authority of the Government of theSwiss Confederation, which shall regulate its organization and supervise itsworking.

(3) The official language of the Bureau shall be the French language.

376 Appendix

article 22

(1) The International Bureau shall collect information of every kind relating to theprotection of the rights of authors over their literary and artistic works. It shallcoordinate and publish such information. It shall conduct studies of generalutility concerning the Union and, by the aid of documents placed at its disposalby the different Administrations, it shall edit a periodical publication in theFrench language on questions relating to the objects of the Union. The Govern-ments of the countries of the Union reserve the right to authorize, by commonagreement, the publication by the Bureau of an edition in one or more otherlanguages, if experience should show this to be necessary.

(2) The International Bureau shall always place itself at the disposal of members ofthe Union in order to provide them with any special information which theymay require relating to the protection of literary and artistic works.

(3) The Director of the International Bureau shall make an annual report on hisadministration, which shall be communicated to all the members of the Union.

article 23

(1) The expenses of the Bureau of the International Union shall be shared by thecountries of the Union. Until a fresh arrangement is made, they shall not ex-ceed the amount of 120,000 gold francs a year. This amount may be increased,if necessary, by unanimous decision of the countries of the Union or of one ofthe conferences provided for in Article 24.

(2) The share of the total expense to be paid by each country shall be determinedby the division of the countries of the Union and those subsequently adheringto the Union into six classes, each of which shall contribute in the proportionof a certain number of units, viz.: Class I: 25 units; Class II: 20 units; Class III:15 units; Class IV: 10 units; Class V: 5 units; Class VI: 3 units.

(3) These coefficients shall be multiplied by the number of countries of each class,and the total product thus obtained will give the number of units by which thetotal expense is to be divided. The quotient will give the amount of the unit ofexpense.

(4) Each country shall declare, at the time of its accession, in which of the saidclasses it wishes to belong, but it may subsequently declare that it wishes to beplaced in another class.

(5) The Swiss Administration shall prepare the budget of the Bureau, supervise itsexpenditure, make the necessary advances, and draw up the annual account,which shall be communicated to all the other Administrations.

article 24

(1) This Convention may be submitted to revision with a view to the introductionof amendments designed to improve the system of the Union.

(2) Questions of this kind, as well as those which in other respects concern the de-velopment of the Union, shall be considered in conferences to be held succes-sively in the countries of the Union among the delegates of the said countries.The administration of the country where a conference is to meet shall prepare,with the assistance of the International Bureau, the program of the conference.

Appendix 377

The Director of the Bureau shall attend the sessions of the conferences, and shallparticipate in the discussions without the right to vote.

(3) No amendment to this Convention shall be binding on the Union except by theunanimous consent of the countries which are members of it.

article 25

(1) Countries outside the Union which make provision for the legal protection ofthe rights forming the object of this Convention may accede thereto uponrequest.

(2) Such accession shall be notified in writing to the Government of the Swiss Con-federation, which shall communicate it to all the other countries of the Union.

(3) Such accession shall automatically entail acceptance of all the provisions andadmission to all the advantages of this Convention, and shall take effect one monthafter the date of the notification made by the Government of the Swiss Confed-eration to the other countries of the Union, unless a subsequent date has beenindicated by the acceding country. It may, however, contain an indication thatthe acceding country wishes to substitute, temporarily at least, for Article 8, con-cerning translations, the provisions of Article 5 of the Union Convention of 1886as revised at Paris in 1896, on the clear understanding that the said provisionsare applicable only to translations into the language or languages of that country.

article 26

(1) Any country of the Union may at any time in writing notify the Government ofthe Swiss Confederation that this Convention shall be applicable to its overseasterritories, colonies, protectorates, territories under its trusteeship, or to any otherterritory for the external relations of which it is responsible, and the Conventionshall thereupon apply to all the territories named in such notification, as from adate determined in accordance with Article 25, paragraph (3). In the absence ofsuch notification, the Convention shall not be applicable to such territories.

(2) Any country of the Union may at any time in writing notify the Government ofthe Swiss Confederation that this Convention shall cease to apply to all or partof the territories which have been made the subject of a notification under thepreceding paragraph, and the Convention shall cease to apply in the territoriesnamed in such notification twelve months after its receipt by the Governmentof the Swiss Confederation.

(3) All notifications given to the Government of the Swiss Confederation in accor-dance with the provisions of paragraphs (1) and (2) of this Article shall be com-municated by that Government to all the countries of the Union.

article 27

(1) This Convention shall, as regards relations between the countries of the Union,replace the Berne Convention of September 9, 1886, and the subsequent revi-sions thereof. The Acts previously in force shall continue to be applicable inrelations with countries which do not ratify this Convention.

(2) The countries on whose behalf this Convention is signed may retain the benefitof the reservations which they have previously formulated, on condition that theymake a declaration to that effect at the time of the deposit of their ratifications.

378 Appendix

(3) Countries which are at present members of the Union, but on whose behalf thisConvention is not signed, may accede to it at any time, in the manner providedfor in Article 25. In that event they shall enjoy the benefit of the provisions ofthe preceding paragraph.

article 27bis

Any dispute between two or more countries of the Union concerning the interpre-tation or application of this Convention, not settled by negotiation, shall be broughtbefore the International Court of Justice for determination by it, unless the coun-tries concerned agree on some other method of settlement. The country bringingthe dispute before the Court shall inform the International Bureau; the Bureau shallbring the matter to the attention of the other countries of the Union.

article 28

(1) This Convention shall be ratified, and the ratifications deposited at Brussels, notlater than July 1, 1951. The ratifications, with the date thereof and all declara-tions which may accompany them, shall be communicated by the Belgian Gov-ernment to the Government of the Swiss Confederation, which shall notify theother countries of the Union thereof.

(2) This Convention shall enter into force, between the countries which haveratified it, one month after July 1, 1951. However, if before that date it has beenratified by at least six countries of the Union, it shall enter into force betweenthose countries one month after the notification to them by the Governmentof the Swiss Confederation of the deposit of the sixth ratification and, in thecase of countries which ratify thereafter, one month after the notification ofeach of such ratifications.

(3) Until July 1, 1951, countries outside the Union may join it by acceding either tothe Convention signed at Rome on June 2, 1928, or to this Convention. On orafter July 1, 1951, they may accede only to this Convention. The countries of theUnion which shall not have ratified this Convention by July 1, 1951, may accedethereto in accordance with the procedure provided by Article 25. In this eventthey shall be entitled to the benefit of the provisions of Article 27, paragraph (2).

article 29

(1) This Convention shall remain in force without limitation as to time. Never-theless, each country of the Union shall be entitled to denounce it at any time,by means of a notification in writing addressed to the Government of the SwissConfederation.

(2) This denunciation, which shall be communicated by the Government of theSwiss Confederation to all the other countries of the Union, shall take effect onlyin respect of the country making it, and twelve months after the receipt of thenotification of denunciation addressed to the Government of the Swiss Confed-eration, the Convention remaining in full force and effect for the other coun-tries of the Union.

(3) The right of denunciation provided by this Article shall not be exercised byany country before the expiration of five years from the date of its ratificationor accession.

Appendix 379

article 30

(1) Countries which introduce into their legislation the term of protection of fiftyyears provided by Article 7, paragraph (1), of this Convention, shall give noticethereof in writing to the Government of the Swiss Confederation, which shallimmediately communicate it to all the other countries of the Union.

(2) The same procedure shall be followed in the case of the countries withdrawingthe reservations made or maintained by them in accordance with Articles 25and 27.

article 31

The official Acts of the Conferences shall be established in French. An equivalenttext shall be established in English. In case of differences of opinion on the interpre-tation of the Acts, the French text shall always prevail. Any country or group ofcountries of the Union shall be entitled to have established by the InternationalBureau an authoritative text of the said Acts in the language of its choice, and byagreement with the Bureau. These texts shall be published in the Acts of the Con-ferences, annexed to the French and English texts.

In faith whereof the respective Plenipotentiaries have signed this Convention.Done at Brussels the 26th day of June 1948, in a single copy, which shall be de-

posited in the archives of the Department of Foreign Affairs and Foreign Trade ofBelgium. A copy, duly certified, shall be transmitted by the diplomatic channel toeach Country of the Union.

380 Appendix

380



[ROME TEXT, 1928]

article 1

The countries to which the present Convention applies are constituted into a Unionfor the protection of the rights of authors over their literary and artistic works.

article 2

(1) The term “literary and artistic works” shall include every production in theliterary, scientific and artistic domain, whatever may be the mode or form ofits expression, such as books, pamphlets and other writings; lectures, addresses,sermons and other works of the same nature; dramatic or dramatico-musicalworks, choreographic works and entertainments in dumb show, the acting formof which is fixed in writing or otherwise; musical compositions with or withoutwords; works of drawing, painting, architecture, sculpture, engraving andlithography; illustrations, geographical charts, plans, sketches, and plasticworks relative to geography, topograpiy, architecture or science.

(2) Translations, adaptations, arrangements of music and other reproductions inan altered form of a literary or artistic work, as well as collections of differentworks, shall be protected original works without prejudice to the rights of theauthor of the original work.

(3) The countries of the Union shall be bound to make provision for the protectionof the above-mentioned works.

(4) Works of art applied to industrial purposes shall be protected so far as the do-mestic legislation of each country allows.

article 2bis

(1) The right of partially or wholly excluding political speeches and speeches de-livered in legal proceedings from the protection provided by the preceding Ar-ticle is reserved for the domestic legislation of each country of the Union.

(2) The right of fixing the conditions under which lectures, addresses, sermons andother works of the same nature may be reproduced by the press is also reservedfor the domestic legislation of each country of the Union. Nevertheless the au-thor shall have the sole right of making a collection of the said works.

article 3

The present Convention shall apply to photographic works and to works producedby a process analogous to photography. The countries of the Union shall be boundto make provision for their protection.

Appendix 381

article 4

(1) Authors who are nationals of any of the countries of the Union shall enjoy incountries other than the country of origin of the work, for their works, whetherunpublished or first published in a country of the Union, the rights which therespective laws do now or may hereafter grant to natives, as well as the rightsspecially granted by the present Convention.

(2) The enjoyment and the exercise of these rights shall not be subject to the per-formance of any formality; such enjoyment and such exercise are independentof the existence of protection in the country of origin of the work. Consequently,apart from the express stipulations of the present Convention, the extent of pro-tection, as well as the means of redress secured to the author to safeguard hisrights, shall be governed exclusively by the laws of the country where protec-tion is claimed.

(3) The country of origin of the work shall be considered to be: in the case of un-published works, the country to which the author belongs; in the case of pub-lished works, the country of first publication; and in the case of works publishedsimultaneously in several countries of the Union, the country the laws of whichgrant the shortest term of protection. In the case of works published simulta-neously in a country outside the Union and in a country of the Union, the lat-ter country shall be considered exclusively as the country of origin.

(4) By “published works” must be understood, for the purposes of the present Con-vention, works copies of which have been issued to the public. The representa-tion of a dramatic or dramatico-musical work, the performance of a musicalwork, the exhibition of a work of art, and the construction of a work of archi-tecture shall not constitute a publication.

article 5

Authors who are nationals of one of the countries of the Union and who first pub-lish their works in another country of the Union shall have in the latter country thesame rights as native authors.

article 6

(1) Authors who are not nationals of one of the countries of the Union, and whofirst publish their works in one of those countries, shall enjoy in that countrythe same rights as native authors, and in the other countries of the Union therights granted by the present Convention.

(2) Nevertheless, where any country outside the Union fails to protect in an ade-quate manner the works of authors who are nationals of one of the countriesof the Union, the latter country may restrict the protection given to the worksof authors who are at the date of the first publication thereof nationals of theother country and are not effectively domiciled in one of the countries of theUnion.

(3) No restrictions introduced by virtue of the preceding paragraph shall in any wayaffect the rights which an author may have acquired in respect of a work pub-lished in a country of the Union before such restrictions were put in force.

(4) The countries of the Union which restrict the grant of copyright in accordancewith the present Article, shall give notice thereof to the Government of the Swiss

382 Appendix

Confederation by a written declaration specifying the countries in regard towhich protection is restricted, and the restrictions to which rights of authorswho are nationals of those countries are subjected. The Government of the SwissConfederation will immediately communicate this declaration to all the coun-tries of the Union.

article 6bis

(1) Independently of the author’s copyright, and even after transfer of the said copy-right, the author shall have the right to claim authorship of the work, as wellas the right to object to any distortion, mutilation or other modification of thesaid work which would be prejudicial to his honour or reputation.

(2) The determination of the conditions under which these rights shall be exercisedis reserved for the national legislation of the countries of the Union. The meansof redress for safeguarding these rights shall be regulated by the legislation ofthe country where protection is claimed.

article 7

(1) The term of protection granted by the present Convention shall be the life of theauthor and fifty years after his death.

(2) Nevertheless, in case such term of protection should not be uniformly adoptedby all the countries of the Union, the term shall be regulated by the law of thecountry where protection is claimed, and must not exceed the term fixed in thecountry of origin of the work. Consequently the countries of the Union shall onlybe bound to apply the provisions of the preceding paragraph in so far as suchprovisions are consistent with their domestic laws.

(3) For photographic works and works produced by a process analogous to photog-raphy, for posthumous works, for anonymous or pseudonymous works, the termof protection shall be regulated by the law of the country where protection isclaimed, provided that the said term shall not exceed the term fixed in the coun-try of origin of the work.

article 7bis

(1) The term of copyright protection belonging in common to joint authors of a workshall be calculated according to the date of the death of the author who dies last.

(2) Authors who are nationals of the countries which grant a term of protectionshorter than that mentioned in paragraph (1) cannot claim a longer term of pro-tection in the other countries of the Union.

(3) In no case may the term of protection expire before the death of the author whodies last.

article 8

The authors of unpublished works, who are nationals of one of the countries ofthe Union, and the authors of works first published in one of those countries, shallenjoy, in the other countries of the Union, during the whole term of the right inthe original work, the exclusive right of making or authorising a translation oftheir works.

Appendix 383

article 9

(1) Serial stories, tales, and all other works, whether literary, scientific or artistic,whatever their object, published in the newspapers or periodicals of one of thecountries of the Union may not be reproduced in the other countries withoutthe consent of the authors.

(2) Articles on current economic, political or religious topics may be reproducedby the press unless the reproduction thereof is expressly reserved. Nevertheless,the source must always be clearly indicated; the legal consequences of the breachof this obligation shall be determined by the laws of the country where protec-tion is claimed.

(3) The protection of the present Convention shall not apply to news of the day orto miscellaneous information which is simply of the nature of items of news.

article 10

As regards the liberty of extracting portions from literary or artistic works for use inpublications destined for educational purposes, or having a scientific character, orfor chrestomathies, the effect of the legislation of the countries of the Union and ofspecial arrangements existing, or to be concluded, between them is not affected bythe present Convention.

article 11

(1) The stipulations of the present Convention shall apply to the public representa-tion of dramatico-musical works and to the public performance of musical works,whether such works be published or not.

(2) Authors of dramatic or dramatico-musical works shall be protected during theexistence of their right over the original work against the unauthorised publicrepresentation of translations of their works.

(3) In order to enjoy the protection of the present Article, authors shall not be boundin publishing their works to forbid the public representation or performancethereof.

article 11bis

(1) Authors of literary and artistic works shall enjoy the exclusive right of authorisingthe communication of their works to the public by radio communication.

(2) The national legislations of the countries of the Union may regulate the condi-tions under which the right mentioned in the preceding paragraph shall be ex-ercised, but the effect of those conditions will be strictly limited to the countrieswhich have put them in force. Such conditions shall not in any case prejudicethe moral right (droit moral) of the author, nor the right which belongs to theauthor to obtain an equitable remuneration which shall be fixed, failing agree-ment, by the competent authority.

article 12

The following shall be specially included among the unlawful reproductions towhich the present Convention applies; Unauthorised indirect appropriations of a

384 Appendix

literary or artistic work, such as adaptations, musical arrangements, transforma-tions of a novel, tale, or piece of poetry, into a dramatic piece and vice versa, &c., whenthey are only the reproduction of that work, in the same form or in another form,without essential alterations, additions, or abridgments and do not present the char-acter of a new original work.

article 13

(1) The authors of musical works shall have the exclusive right of authorising(1) the adaptation of those works to instruments which can reproduce themmechanically; (2) the public performance of the said works by means of theseinstruments.

(2) Reservations and conditions relating to the application of this Article may bedetermined by the domestic legislation of each country in so far as it is con-cerned; but the effect of any such reservations and conditions will be strictlylimited to the country which has put them in force.

(3) The provisions of paragraph (1) shall not be retroactive, and consequently shallnot be applicable in any country of the Union to works which have been law-fully adapted in that country to mechanical instruments before the coming intoforce of the Convention signed at Berlin on the 13 November, 1908, and in thecase of a country which has acceded to the Union since that date, or accedes inthe future, before the date of its accession.

(4) Adaptations made in virtue of paragraphs (2) and (3) of the present Article, andimported without the authority of the interested parties into a country wherethey would not be lawful, shall be liable to seizure in that country.

article 14

(1) Authors of literary, scientific or artistic works shall have the exclusive right ofauthorising the reproduction, adaptation and public presentation of their worksby cinematography.

(2) Cinematographic productions shall be protected as literary or artistic worksif the author has given the work an original character. If this character isabsent, the cinematographic production shall enjoy protection as a photo-graphic work.

(3) Without prejudice to the rights of the author of the work reproduced or adapted,a cinematographic work shall be protected as an original work.

(4) The above provisions apply to reproduction or production effected by any otherprocess analogous to cinematography.

article 15

(1) In order that the authors of works protected by the present Convention shall,in the absence of proof to the contrary, be considered as such, and be conse-quently admitted to institute proceedings against pirates before the courts of thevarious countries of the Union, it will be sufficient that their name be indicatedon the work in the accustomed manner.

(2) For anonymous or pseudonymous works, the publisher whose name is indicatedon the work shall be entitled to protect the rights belonging to the author. He

Appendix 385

shall be, without other proof, deemed to be the legal representative of the anony-mous or pseudonymous author.

article 16

(1) Pirated works may be seized by the competent authorities of any country of theUnion where the original work enjoys legal protection.

(2) In such a country the seizure may also apply to reproductions imported from acountry where the work is not protected, or has ceased to be protected.

(3) The seizure shall take place in accordance with the domestic legislation of eachcountry.

article 17

The provisions of the present Convention cannot in any way derogate from the rightbelonging to the Government of each country of the Union to permit, to control, orto prohibit, by measures of domestic legislation or police, the circulation, represen-tation, or exhibition of any works or productions in regard to which the competentauthority may find it necessary to exercise that right.

article 18

(1) The present Convention shall apply to all works which at the moment of itscoming into force have not yet fallen into the public domain in the country oforigin through the expiration of the term of protection.

(2) If, however, through the expiration of the term of protection which was previ-ously granted, a work has fallen into the public domain of the country whereprotection is claimed, that work shall not be protected anew in that country.

(3) The application of this principle shall take effect according to the stipulationscontained in special Conventions existing, or to be concluded, to that effect be-tween countries of the Union. In the absence of such stipulations, the respec-tive countries shall regulate, each in so far as it is concerned, the manner inwhich the said principle is to be applied.

(4) The above provisions shall apply equally in case of new accessions to the Union,and also in the event of the term of protection being extended by the applica-tion of Article 7 or by abandonment of reservations.

article 19

The provisions of the present Convention shall not prevent a claim being made forthe application of any wider provisions which may be made by the legislation of acountry of the Union in favour of foreigners in general.

article 20

The Governments of the countries of the Union reserve to themselves the right toenter into special arrangements between each other, provided always that sucharrangements confer upon authors more extended rights than those granted by the

386 Appendix

Union, or embody other stipulations not contrary to the present Convention. Theprovisions of existing arrangements which answer to the above-mentioned condi-tions shall remain applicable.

article 21

(1) The International Office established under the name of the “Office of the Inter-national Union for the Protection of Literary and Artistic Works” shall bemaintained.

(2) That Office is placed under the high authority of the Government of the SwissConfederation, which regulates its organisation and supervises its working.

(3) The official language of the Office shall be French.

article 22

(1) The International Office collects every kind of information relative to the protec-tion of the rights of authors over their literary and artistic works. It arranges andpublishes such information. It undertakes the study of questions of general interestconcerning the Union, and, by the aid of documents placed at its disposal by thedifferent Administrations, edits a periodical publication in the French languageon the questions which concern the objects of the Union. The Governments ofthe countries of the Union reserve to themselves the power to authorise by com-mon accord the publication by the Office of an edition in one or more other lan-guages, if experience should show this to be requisite.

(2) The International Office will always hold itself at the disposal of members of theUnion with the view to furnish them with any special information which theymay require relative to the protection of literary and artistic works.

(3) The Director of the International Office shall make an annual report on his ad-ministration, which shall be communicated to all the members of the Union.

article 23

(1) The expenses of the Office of the International Union shall be shared by the coun-tries of the Union. Until a fresh arrangement be made, they cannot exceed thesum of one hundred and twenty thousand Swiss francs a year. This sum maybe increased, if necessary, by the unanimous decision of one of the Conferencesprovided for in Article 24.

(2) The share of the total expense to be paid by each country shall be determinedby the division of the countries of the Union and those subsequently accedingto the Union into six classes, each of which shall contribute in the proportionof a certain number of units, viz.:1st class 25 Units 3rd class 15 Units 5th class 5 Units

2nd class 20 " 4th class 10 " 6th class 3 "(3) These coefficients are multiplied by the number of countries of each class, and

the total product thus obtained gives the number of units by which the totalexpense is to be divided. The quotient gives the amount of the unit of expense.

(4) Each country shall declare, at the time of its accession, in which of the saidclasses it desires to be placed, but it may subsequently declare that it wishes tobe placed in another class.

(5) The Swiss Administration prepares the Budget of the Office, superintends its

Appendix 387

expenditure, makes the necessary advances, and draws up the annual accountwhich shall be communicated to all the other Administrations.

article 24

(1) The present Convention may be submitted to revisions in order to introducetherein amendments calculated to perfect the system of the Union.

(2) Questions of this kind, as well as those which are of interest to the Union in otherrespects, shall be considered in Conferences to be held successively in the coun-tries of the Union by delegates of the said countries. The Administration of thecountry where a Conference is to meet prepares, with the assistance of the In-ternational Office, the programme of the Conference. The Director of the Officeshall attend at the sittings of the Conferences, and shall take part in the discus-sions without the right to vote.

(3) No alteration in the present Convention shall be binding on the Union exceptby the unanimous consent of the countries composing it.

article 25

(1) Countries outside the Union which make provision for the legal protection ofthe rights forming the object of the present Convention may accede thereto onrequest to that effect.

(2) Such accession shall be notified in writing to the Government of the Swiss Con-federation, who will communicate it to all the other countries of the Union.

(3) Such accession shall imply full adhesion to all the clauses and admission to allthe advantages provided by the present Convention, and shall take effect onemonth after the date of the notification made by the Government of the Swiss Con-federation to the other countries of the Union, unless some later date has beenindicated by the adhering country. It may, nevertheless, contain an indicationthat the adhering country wishes to substitute, provisionally at least, for Article8, which relates to translations, the provisions of Article 5 of the Convention of1886 revised at Paris in 1896, on the understanding that those provisions shallapply only to translations into the language or languages of that country.

article 26

(1) Any country of the Union may at any time notify in writing to the Govern-ment of the Swiss Confederation that the present Convention shall apply toall or any of its Colonies, Protectorates, territories under mandate or any otherterritories subject to its sovereignty or to its authority, or any territories undersuzerainty, and the Convention shall thereupon apply to all the territoriesnamed in such notification. Failing such notification, the Convention shallnot apply to any such territories.

(2) Any country of the Union may at any time notify in writing to the Government ofthe Swiss Confederation that the present Convention shall cease to apply to all orany of the territories which have been made the subject of a notification underthe preceding paragraph, and the Convention shall cease to apply in the territoriesnamed in the notification given under this paragraph twelve months after thereceipt of the latter notification by the Government of the Swiss Confederation.

(3) All notifications given to the Government of the Swiss Confederation in accor-

388 Appendix

dance with the provisions of paragraphs (1) and (2) of the present Article shallbe communicated by that Government to all the countries of the Union.

article 27

(1) The present Convention shall replace, in regard to the relations between thecountries of the Union, the Convention of Berne of the 9 September, 1886, andthe subsequent revisions thereof. The instruments previously in force shall con-tinue to be applicable in regard to relations with countries which do not ratifythe present Convention.

(2) The countries on whose behalf the present Convention is signed may retainthe benefit of the reservations which they have previously formulated on con-dition that they make a declaration to that effect at the time of the deposit oftheir ratifications.

(3) The countries which are actually members of the Union, but on whose behalf thepresent Convention is not signed, may adhere to the Convention at any time. Inthat event they may enjoy the benefit of the provisions of the preceding paragraph.

article 28

(1) The present Convention shall be ratified, and the ratifications deposited at Rome,not later than the 1 July, 1931.

(2) It shall come into force between the countries which have ratified it, one monthafter that date; nevertheless, if before that date, it has been ratified by at leastsix countries of the Union, it shall come into force between those countries onemonth after the deposit of the sixth ratification has been notified to them by theGovernment of the Swiss Confederation and, in the case of countries which ratifythereafter, one month after the notification of each of such ratifications.

(3) Until the 1 August, 1931, countries outside the Union may accede to the Unionby adhering either to the Convention signed at Berlin on the 13 November, 1908,or to the present Convention. On or after the 1 August, 1931, they may adhereonly to the present Convention.

article 29

(1) The present Convention shall remain in force for an indefinite period until thetermination of a year from the day on which it may have been denounced.

(2) Such denunciation shall be made to the Government of the Swiss Confedera-tion. It shall only take effect in regard to the country making it, the Conventionremaining in full force and effect for the other countries of the Union.

article 30

(1) The countries which shall introduce in their legislation the duration of pro-tection for fifty years contemplated by Article 7, paragraph (1), of the presentConvention, shall give notice thereof in writing to the Government of the SwissConfederation, who will communicate it at once to all the other countries ofthe Union.

(2) The same procedure shall be followed in the case of the countries renouncingthe reservations made or maintained by them in virtue of Articles 25 and 27.

Appendix 389

389

A5. PARTIES TO THE BERNE CONVENTION FOR THE

PROTECTION OF LITERARY AND ARTISTIC WORKS*

Status on July 15, 1999

[Berne Convention (1886), completed at Paris (1896), revised at Berlin (1908), com-pleted at Berne (1914), revised at Rome (1928), at Brussels (1948), at Stockholm(1967) and at Paris (1971), and amended in 1979.]

Date on which State Latest Act1 of the Convention to whichbecame party to the State is party and date on which State

State Convention became party to that Act

Albania March 6, 1994 Paris: March 6, 1994Algeria April 19, 1998 Paris: April 19, 19982,3

Argentina June 10, 1967 Brussels: June 10, 1967Paris, Articles 22 to 38:

October 8, 1980Australia April 14, 1928 Paris: March 1, 1978Austria October 1, 1920 Paris: August 21, 1982Azerbaijan June 4, 1999 Paris: June 4, 1999Bahamas July 10, 1973 Brussels: July 10, 1973

Paris, Articles 22 to 38:January 8, 19772

Bahrain March 2, 1997 Paris: March 2, 19973

Bangladesh May 4, 1999 Paris: May 4, 19993

Barbados July 30, 1983 Paris: July 30, 1983Belarus December 12, 1997 Paris: December 12, 1997Belgium December 5, 1887 Paris: September 29, 1999Benin January 3, 19614 Paris: March 12, 1975Bolivia November 4, 1993 Paris: November 4, 1993Bosnia and Herzegovina March 1, 1992 Paris: March 1, 19925

Botswana April 15, 1998 Paris: April 15, 1998Brazil February 9, 1922 Paris: April 20, 1975Bulgaria December 5, 1921 Paris: December 4, 1974Burkina Faso August 19, 19636 Paris: January 24, 1976Cameroon September 21, 19644 Paris, Articles 1 to 21:

October 10, 1974Paris, Articles 22 to 38:

November 10, 1973Canada April 10, 1928 Paris: June 26, 1998Cape Verde July 7, 1997 Paris: July 7, 1997

(continued)

*Published with the permission of the World Intellectual Property Organization.

390 Appendix

(continued)



Central African Republic September 3, 1977 Paris: September 3, 1977Chad November 25, 1971 Brussels: November 25, 19717,8

Stockholm, Articles 22 to 38:November 25, 1971

Chile June 5, 1970 Paris: July 10, 1975China9 October 15, 1992 Paris: October 15, 1992Colombia March 7, 1988 Paris: March 7, 1988Congo May 8, 19624 Paris: December 5, 1975Costa Rica June 10, 1978 Paris: June 10, 1978Côte d’Ivoire January 1, 1962 Paris, Articles 1 to 21:


May 4, 1974Croatia October 8, 1991 Paris: October 8, 19915

Cuba February 20, 1997 Paris: February 20, 19972,3

Cyprus February 24, 19644 Paris: July 27, 19835

Czech Republic January 1, 1993 Paris: January 1, 1993Democratic Republic

of the Congo October 8, 19634 Paris: January 31, 1975Denmark July 1, 1903 Paris: June 30, 1979Dominica August 7, 1999 Paris: August 7, 1999Dominican Republic December 24, 1997 Paris: December 24, 1997Ecuador October 9, 1991 Paris: October 9, 1991Egypt June 7, 1977 Paris: June 7, 19772

El Salvador February 19, 1994 Paris: February 19, 1994Equatorial Guinea June 26, 1997 Paris: June 26, 1997Estonia October 26, 199410 Paris: October 26, 1994Fiji December 1, 19714 Brussels: December 1, 1971

Stockholm, Articles 22 to 38:March 15, 1972

Finland April 1, 1928 Paris: November 1, 1986France December 5, 1887 Paris, Articles 1 to 21:


December 15, 1972Gabon March 26, 1962 Paris: June 10, 1975Gambia March 7, 1993 Paris: March 7, 1993Georgia May 16, 1995 Paris: May 16, 1995Germany December 5, 1887 Paris, Articles 1 to 21:

October 10, 197411


Ghana October 11, 1991 Paris: October 11, 1991Greece November 9, 1920 Paris: March 8, 1976Grenada September 22, 1998 Paris: September 22, 1998Guatemala July 28, 1997 Paris: July 28, 19972

Guinea November 20, 1980 Paris: November 20, 1980

(continued)

Appendix 391

(continued)



Guinea-Bissau July 22, 1991 Paris: July 22, 1991Guyana October 25, 1994 Paris: October 25, 1994Haiti January 11, 1996 Paris: January 11, 1996Holy See September 12, 1935 Paris: April 24, 1975Honduras January 25, 1990 Paris: January 25, 1990Hungary February 14, 1922 Paris, Articles 1 to 21:


December 15, 1972Iceland September 7, 1947 Paris, Article 1 to 21:

August 25, 1999Paris, Articles 22 to 38:

December 28, 1984India April 1, 1928 Paris, Articles 1 to 21:

May 6, 198412,13


Indonesia September 5, 1997 Paris: September 5, 19972

Ireland October 5, 1927 Brussels: July 5, 1959Stockholm, Articles 22 to 38:

December 21, 1970Israel March 24, 1950 Brussels: August 1, 1951

Stockholm, Articles 22 to 38:January 29 orFebruary 26, 197014

Italy December 5, 1887 Paris: November 14, 1979Jamaica January 1, 1994 Paris: January 1, 1994Japan July 15, 1899 Paris: April 24, 1975Jordan July 28, 1999 Paris: July 28, 19992,3

Kazakhstan April 12, 1999 Paris: April 12, 1999Kenya June 11, 1993 Paris: June 11, 1993Kyrgyzstan July 8, 1999 Paris: July 8, 1999Latvia August 11, 199515 Paris: August 11, 1995Lebanon September 30, 1947 Rome: September 30, 1947Lesotho September 28, 1989 Paris: September 28, 19892

Liberia March 8, 1989 Paris: March 8, 19892

Libyan Arab Jamahiriya September 28, 1976 Paris: September 28, 19762

Liechtenstein July 30, 1931 Paris: September 23, 1999Lithuania December 14, 1994 Paris: December 14, 19942

Luxembourg June 20, 1888 Paris: April 20, 1975Madagascar January 1, 1966 Brussels: January 1, 1966Malawi October 12, 1991 Paris: October 12, 1991Malaysia October 1, 1990 Paris: October 1, 1990Mali March 19, 19624 Paris: December 5, 1977Malta September 21, 1964 Rome: September 21, 1964

Paris, Articles 22 to 38:December 12, 19772

(continued)

392 Appendix

(continued)



Mauritania February 6, 1973 Paris: September 21, 1976Mauritius May 10, 1989 Paris: May 10, 19892

Mexico June 11, 1967 Paris: December 17, 1974Monaco May 30, 1889 Paris: November 23, 1974Mongolia March 12, 1998 Paris March 12, 19982,3

Morocco June 16, 1917 Paris: May 17, 1987Namibia March 21, 1990 Paris: December 24, 1993Netherlands November 1, 1912 Paris, Articles 1 to 21:

January 30, 198616


New Zealand April 24, 1928 Rome: December 4, 1947Niger May 2, 19624 Paris: May 21, 1975Nigeria September 14, 1993 Paris: September 14, 1993Norway April 13, 1896 Paris, Articles 1 to 21:

October 11, 199511

Paris, Articles 22 to 38:June 13, 1974

Oman July 14, 1999 Paris: July 14, 19992

Pakistan July 5, 1948 Rome: July 5, 19487

Stockholm, Articles 22 to 38:January 29 orFebruary 26, 197014

Panama June 8, 1996 Paris: June 8, 1996Paraguay January 2, 1992 Paris: January 2, 1992Peru August 20, 1988 Paris: August 20, 1988Philippines August 1, 1951 Paris, Articles 1 to 21:

June 18, 19973

Paris, Articles 22 to 38:July 16, 1980

Poland January 28, 1920 Paris, Articles 1 to 21:October 22, 1994

Paris, Articles 22 to 38:August 4, 1990

Portugal18 March 29, 1911 Paris: January 12, 197919

Republic of Korea August 21, 1996 Paris: August 21, 1996Republic of Moldova November 2, 1995 Paris: November 2, 1995Romania January 1, 1927 Paris: September 9, 1998Russian Federation March 13, 1995 Paris: March 13, 1995Rwanda March 1, 1984 Paris: March 1, 1984Saint Kitts and Nevis April 9, 1995 Paris: April 9, 1995Saint Lucia August 24, 1993 Paris: August 24, 19932

Saint Vincent andthe Grenadines August 29, 1995 Paris: August 29, 1995

Senegal August 25, 1962 Paris: August 12, 1975Singapore December 21, 1998 Paris: December 21, 19983

Slovakia January 1, 1993 Paris: January 1, 1993Slovenia June 25, 1991 Paris: June 25, 19915

(continued)

Appendix 393

(continued)



South Africa October 3, 1928 Brussels: August 1, 1951Paris, Articles 22 to 38:

March 24, 19752

Spain December 5, 1887 Paris, Articles 1 to 21:October 10, 1974

Paris, Articles 22 to 38:February 19, 1974

Sri Lanka July 20, 19594 Rome: July 20, 1959Paris, Articles 22 to 38:

September 23, 1978Suriname February 23, 1977 Paris: February 23, 1977Swaziland December 14, 1998 Paris: December 14, 1998Sweden August 1, 1904 Paris, Articles 1 to 21:


September 20, 1973Switzerland December 5, 1887 Paris: September 25, 1993Thailand July 17, 1931 Paris, Articles 1 to 21:

September 2, 199520


The former YugoslavRepublic ofMacedonia September 8, 1991 Paris: September 8, 1991

Togo April 30, 1975 Paris: April 30, 1975Trinidad and Tobago August 16, 1988 Paris: August 16, 1988Tunisia December 5, 1887 Paris: August 16, 19752

Turkey January 1, 1952 Paris: January 1, 1996Ukraine October 25, 1995 Paris: October 25, 1995United Kingdom21 December 5, 1887 Paris: January 2, 199011

United Republicof Tanzania July 25, 1994 Paris: July 25, 19942

United States of America March 1, 1989 Paris: March 1, 1989Uruguay July 10, 1967 Paris: December 28, 1979Venezuela December 30, 1982 Paris: December 30, 19822

Yugoslavia June 17, 1930 Paris: September 2, 19755

Zambia January 2, 1992 Paris: January 2, 1992Zimbabwe April 18, 1980 Rome: April 18, 1980


(Total: 140 States)

1”Paris” means the Berne Convention for the Protection of Literary and Artistic Works as revisedat Paris on July 24, 1971 (Paris Act); “Stockholm” means the said Convention as revised at Stockholmon July 14, 1967 (Stockholm Act); “Brussels” means the said Convention as revised at Brussels onJune 26, 1948 (Brussels Act); “Rome” means the said Convention as revised at Rome on June 2, 1928(Rome Act); “Berlin” means the said Convention as revised at Berlin on November 13, 1908 (Berlin Act).2With the declaration provided for in Article 33(2) relating to the International Court of Justice.3Pursuant to Article I of the Appendix of the Paris Act, this State availed itself of the faculties provided forin Articles II and III of the said Appendix. The relevant declaration is effective until October 10, 2004.

394 Appendix

4Date on which the declaration of continued adherence was sent, after the accession of the State toindependence.5Subject to the reservation concerning the right of translation.6Burkina Faso, which had acceded to the Berne Convention (Brussels Act) as from August 19, 1963, de-nounced the said Convention as from September 20, 1970. Later on, Burkina Faso acceded again to theBerne Convention (Paris Act); this accession took effect on January 24, 1976.7This State deposited its instrument of ratification of (or of accession to) the Stockholm Act in its entirety;however, Articles 1 to 21 (substantive clauses) of the said Act have not entered into force.8In accordance with the provision of Article 29 of the Stockholm Act applicable to the States outside theUnion which accede to the said Act, this State is bound by Articles 1 to 20 of the Brussels Act.9The Paris Act applies also to the Hong Kong Special Administrative Region with effect from July 1, 1997.10Estonia acceded to the Berne Convention (Berlin Act, 1908) with effect from June 9, 1927. It lost itsindependence on August 6, 1940, and regained it on August 20, 1991.11This State has declared that it admits the application of the Appendix of the Paris Act to works of whichit is the State of origin by States which have made a declaration under Article VI(1)(i) of the Appendix or anotification under Article I of the Appendix. The declarations took effect on October 18, 1973, for Ger-many, on March 8, 1974, for Norway, and on September 27, 1971, for the United Kingdom.12This State declared that its ratification shall not apply to the provisions of Article 14bis(2)(b) of the ParisAct (presumption of legitimation for some authors who have brought contributions to the making of thecinematographic work).13This State notified the designation of the competent authority provided by Article 15(4) of the Paris Act.14These are the alternative dates of entry into force which the Director General of WIPO communicated tothe States concerned.15Latvia acceded to the Berne Convention (Rome Act, 1928) with effect from May 15, 1937. It lost its in-dependence on July 21, 1940, and regained it on August 21, 1991.16Ratification for the Kingdom in Europe.17Ratification for the Kingdom in Europe. Articles 22 to 38 of the Paris Act apply also to the NetherlandsAntilles and Aruba.18Portugal extended the application of the Paris Act to Macau with effect from August 12, 1999.19Pursuant to the provisions of Article 14bis(2)(c) of the Paris Act, this State has made a declaration to theeffect that the undertaking by authors to bring contributions to the making of a cinematographic workmust be in a written agreement. This declaration was received on November 5, 1986.20Pursuant to Article I of the Appendix of the Paris Act, this State availed itself of the faculty provided forin Article II of the said Appendix. The relevant declaration is effective until October 10, 2004.21The United Kingdom extended the application of the Paris Act to the Isle of Man with effect from March 18,1996.

Appendix 395

395

A6. UNIVERSAL COPYRIGHT CONVENTION

[PARIS TEXT, 1971]

The Contracting States,

Moved by the desire to ensure in all countries copyright protection of literary, sci-entific and artistic works,

Convinced that a system of copyright protection appropriate to all nations of theworld and expressed in a universal convention, additional to, and without impair-ing international systems already in force, will ensure respect for the rights of theindividual and encourage the development of literature, the sciences and the arts,

Persuaded that such a universal copyright system will facilitate a wider dissemina-tion of works of the human mind and increase international understanding,

Have resolved to revise the Universal Copyright Convention as signed at Geneva on6 September 1952 (hereinafter called “the 1952 Convention”), and consequently,

Have agreed as follows:

article i

Each Contracting State undertakes to provide for the adequate and effective protec-tion of the rights of authors and other copyright proprietors in literary, scientificand artistic works, including writings, musical, dramatic and cinematographicworks, and paintings, engravings and sculpture.

article ii

1. Published works of nationals of any Contracting State and works first publishedin that State shall enjoy in each other Contracting State the same protection asthat other State accords to works of its nationals first published in its own terri-tory, as well as the protection specially granted by this Convention.

2. Unpublished works of nationals of each Contracting State shall enjoy in eachother Contracting State the same protection as that other State accords to un-published works of its own nationals, as well as the protection specially grantedby this Convention.

3. For the purpose of this Convention any Contracting State may, by domestic leg-islation, assimilate to its own nationals any person domiciled in that State.

article iii

1. Any Contracting State which, under its domestic law, requires as a conditionof copyright, compliance with formalities such as deposit, registration, notice,

396 Appendix

notarial certificates, payment of fees or manufacture or publication in that Con-tracting State, shall regard these requirements as satisfied with respect to allworks protected in accordance with this Convention and first published out-side its territory and the author of which is not one of its nationals, if from thetime of the first publication all the copies of the work published with the au-thority of the author or other copyright proprietor bear the symbol © accom-panied by the name of the copyright proprietor and the year of first publica-tion placed in such manner and location as to give reasonable notice of claimof copyright.

2. The provisions of paragraph 1 shall not preclude any Contracting State fromrequiring formalities or other conditions for the acquisition and enjoyment ofcopyright in respect of works first published in its territory or works of its nation-als wherever published.

3. The provisions of paragraph 1 shall not preclude any Contracting State fromproviding that a person seeking judicial relief must, in bringing the action, com-ply with procedural requirements, such as that the complainant must appearthrough domestic counsel or that the complainant must deposit with the courtor an administrative office, or both, a copy of the work involved in the litigation;provided that failure to comply with such requirements shall not affect the va-lidity of the copyright, nor shall any such requirement be imposed upon a na-tional of another Contracting State if such requirement is not imposed on na-tionals of the State in which protection is claimed.

4. In each Contracting State there shall be legal means of protecting without for-malities the unpublished works of nationals of other Contracting States.

5. If a Contracting State grants protection for more than one term of copyright andthe first term is for a period longer than one of the minimum periods prescribedin Article IV, such State shall not be required to comply with the provisions ofparagraph 1 of this Article in respect of the second or any subsequent term ofcopyright.

article iv

1. The duration of protection of a work shall be governed, in accordance with theprovisions of Article II and this Article, by the law of the Contracting State inwhich protection is claimed.

2. (a) The term of protection for works protected under this Convention shall notbe less than the life of the author and twenty-five years after his death. How-ever, any Contracting State which, on the effective date of this Conventionin that State, has limited this term for certain classes of works to a periodcomputed from the first publication of the work, shall be entitled to main-tain these exceptions and to extend them to other classes of works. For allthese classes the term of protection shall not be less than twenty-five yearsfrom the date of first publication.

(b) Any Contracting State which, upon the effective date of this Convention inthat State, does not compute the term of protection upon the basis of the lifeof the author, shall be entitled to compute the term of protection from thedate of the first publication of the work or from its registration prior to pub-lication, as the case may be, provided the term of protection shall not be lessthan twenty-five years from the date of first publication or from its registra-tion prior to publication, as the case may be.

Appendix 397

(c) If the legislation of a Contracting State grants two or more successive termsof protection, the duration of the first term shall not be less than one of theminimum periods specified in sub-paragraphs (a) and (b).

3. The provisions of paragraph 2 shall not apply to photographic works or to worksof applied art; provided, however, that the term of protection in those Contract-ing States which protect photographic works, or works of applied art in so far asthey are protected as artistic works, shall not be less than ten years for each ofsaid classes of works.

4. (a) No Contracting State shall be obliged to grant protection to a work for aperiod longer than that fixed for the class of works to which the work inquestion belongs, in the case of unpublished works by the law of the Con-tracting State of which the author is a national, and in the case of publishedworks by the law of the Contracting State in which the work has been firstpublished.

(b) For the purposes of the application of subparagraph (a), if the law of any Con-tracting State grants two or more successive terms of protection, the periodof protection of that State shall be considered to be the aggregate of thoseterms. However, if a specified work is not protected by such State during thesecond or any subsequent term for any reason, the other Contracting Statesshall not be obliged to protect it during the second or any subsequent term.

5. For the purposes of the application of paragraph 4, the work of a national of aContracting State, first published in a non-Contracting State, shall be treated asthough first published in the Contracting State of which the author is a national.

6. For the purposes of the application of paragraph 4, in case of simultaneous pub-lication in two or more Contracting States, the work shall be treated as thoughfirst published in the State which affords the shortest term; any work publishedin two or more Contracting States within thirty days of its first publication shallbe considered as having been published simultaneously in said ContractingStates.

article ivbis

1. The rights referred to in Article I shall include the basic rights ensuring theauthor’s economic interests, including the exclusive right to authorize reproduc-tion by any means, public performance and broadcasting. The provisions of thisArticle shall extend to works protected under this Convention either in their origi-nal form or in any form recognizably derived from the original.

2. However, any Contracting State may, by its domestic legislation, make excep-tions that do not conflict with the spirit and provisions of this Convention, to therights mentioned in paragraph 1 of this Article. Any State whose legislation soprovides, shall nevertheless accord a reasonable degree of effective protection toeach of the rights to which exception has been made.

article v

1. The rights referred to in Article I shall include the exclusive right of the authorto make, publish and authorize the making and publication of translations ofworks protected under this Convention.

2. However, any Contracting State may, by its domestic legislation, restrict the rightof translation of writings, but only subject to the following provisions:

398 Appendix

(a) If, after the expiration of a period of seven years from the date of the first pub-lication of a writing, a translation of such writing has not been published in alanguage in general use in the Contracting State, by the owner of the right oftranslation or with his authorization, any national of such Contracting Statemay obtain a non-exclusive licence from the competent authority thereof totranslate the work into that language and publish the work so translated.

(b) Such national shall in accordance with the procedure of the State concerned,establish either that he has requested, and been denied, authorization by theproprietor of the right to make and publish the translation, or that, after duediligence on his part, he was unable to find the owner of the right. A licencemay also be granted on the same conditions if all previous editions of a trans-lation in a language in general use in the Contracting State are out of print.

(c) If the owner of the right of translation cannot be found, then the applicantfor a licence shall send copies of his application to the publisher whose nameappears on the work and, if the nationality of the owner of the right of trans-lation is known, to the diplomatic or consular representative of the State ofwhich such owner is a national, or to the organization which may have beendesignated by the government of that State. The licence shall not be grantedbefore the expiration of a period of two months from the date of the dispatchof the copies of the application.

(d) Due provision shall be made by domestic legislation to ensure to the ownerof the right of translation a compensation which is just and conforms to in-ternational standards, to ensure payment and transmittal of such compen-sation, and to ensure a correct translation of the work.

(e) The original title and the name of the author of the work shall be printed onall copies of the published translation. The licence shall be valid only for pub-lication of the translation in the territory of the Contracting State where ithas been applied for. Copies so published may be imported and sold in an-other Contracting State if a language in general use in such other State isthe same language as that into which the work has been so translated, andif the domestic law in such other State makes provision for such licences anddoes not prohibit such importation and sale. Where the foregoing conditionsdo not exist, the importation and sale of such copies in a Contracting Stateshall be governed by its domestic law and its agreements. The licence shallnot be transferred by the licensee.

(f) The licence shall not be granted when the author has withdrawn from cir-culation all copies of the work.

article vbis

1. Any Contracting State regarded as a developing country in conformity with theestablished practice of the General Assembly of the United Nations may, by a no-tification deposited with the Director-General of the United Nations Educational,Scientific and Cultural Organization (hereinafter called “the Director-General”)at the time of its ratification, acceptance or accession or thereafter, avail itself ofany or all of the exceptions provided for in Articles Vter and Vquater.

2. Any such notification shall be effective for ten years from the date of coming intoforce of this Convention, or for such part of that ten-year period as remains atthe date of deposit of the notification, and may be renewed in whole or in partfor further periods of ten years each if, not more than fifteen or less than three

Appendix 399

months before the expiration of the relevant ten-year period, the ContractingState deposits a further notification with the Director-General. Initial notifica-tions may also be made during these further periods of ten years in accordancewith the provisions of this Article.

3. Notwithstanding the provisions of paragraph 2, a Contracting State that hasceased to be regarded as a developing country as referred to in paragraph 1 shallno longer be entitled to renew its notification made under the provisions of para-graph 1 or 2, and whether or not it formally withdraws the notification such Stateshall be precluded from availing itself of the exceptions provided for in ArticlesVter and Vquater at the end of the current ten-year period, or at the end of threeyears after it has ceased to be regarded as a developing country, whichever pe-riod expires later.

4. Any copies of a work already made under the exceptions provided for in ArticlesVter and Vquater may continue to be distributed after the expiration of the pe-riod for which notifications under this Article were effective until their stock isexhausted.

5. Any Contracting State that has deposited a notification in accordance with ArticleXIII with respect to the application of this Convention to a particular country orterritory, the situation of which can be regarded as analogous to that of the Statesreferred to in paragraph 1 of this Article, may also deposit notifications and renewthem in accordance with the provisions of this Article with respect to any suchcountry or territory. During the effective period of such notifications, the provi-sions of Articles Vter and Vquater may be applied with respect to such country orterritory. The sending of copies from the country or territory to the ContractingState shall be considered as export within the meaning of articles Vter and Vquater.

article vter

1. (a) Any Contracting State to which Article Vbis (1) applies may substitute forthe period of seven years provided for in Article V (2) a period of three yearsor any longer period prescribed by its legislation. However, in the case of atranslation into a language not in general use in one or more developed coun-tries that are party to this Convention or only the 1952 Convention, the pe-riod shall be one year instead of three.

(b) A Contracting State to which Article Vbis (1) applies may, with the unani-mous agreement of the developed countries party to this Convention or onlythe 1952 Convention and in which the same language is in general use, sub-stitute, in the case of translation into that language, for the period of threeyears provided for in sub-paragraph (a) another period as determined by suchagreement but not shorter than one year. However, this sub-paragraph shallnot apply where the language in question is English, French or Spanish.Notification of any such agreement shall be made to the Director-General.

(c) The licence may only be granted if the applicant, in accordance with the pro-cedure of the State concerned, establishes either that he has requested, andbeen denied, authorization by the owner of the right of translation, or that,after due diligence on his part, he was unable to find the owner of the right.At the same time as he makes his request he shall inform either the Interna-tional Copyright Information Centre established by the United Nations Edu-cational, Scientific and Cultural Organization or any national or regionalinformation centre which may have been designated in a notification to that

400 Appendix

effect deposited with the Director-General by the government of the State inwhich the publisher is believed to have his principal place of business.

(d) If the owner of the right of translation cannot be found, the applicant for alicence shall send, by registered airmail, copies of his application to the pub-lisher whose name appears on the work and to any national or regional in-formation centre as mentioned in sub-paragraph (c ). If no such centre is no-tified he shall also send a copy to the international copyright informationcentre established by the United Nations Educational, Scientific and CulturalOrganization.

2. (a) Licences obtainable after three years shall not be granted under this Articleuntil a further period of six months has elapsed and licences obtainableafter one year until a further period of nine months has elapsed. The furtherperiod shall begin either from the date of the request for permission to trans-late mentioned in paragraph 1(c) or, if the identity or address of the ownerof the right of translation is not known, from the date of dispatch of the cop-ies of the application for a licence mentioned in paragraph 1(d).

(b) Licences shall not be granted if a translation has been published by the ownerof the right of translation or with his authorization during the said period ofsix or nine months.

3. Any licence under this Article shall be granted only for the purpose of teaching,scholarship or research.

4. (a) Any licence granted under this Article shall not extend to the export of cop-ies and shall be valid only for publication in the territory of the ContractingState where it has been applied for.

(b) Any copy published in accordance with a licence granted under this Articleshall bear a notice in the appropriate language stating that the copy is avail-able for distribution only in the Contracting State granting the licence. If thewriting bears the notice specified in Article III(1) the copies shall bear thesame notice.

(c) The prohibition of export provided for in sub-paragraph (a) shall not applywhere a governmental or other public entity of a State which has granted alicence under this Article to translate a work into a language other thanEnglish, French or Spanish sends copies of a translation prepared under suchlicence to another country if:

(i) the recipients are individuals who are nationals of the Contracting Stategranting the licence, or organizations grouping such individuals;

(ii) the copies are to be used only for the purpose of teaching, scholarshipor research;

(iii) the sending of the copies and their subsequent distribution to recipientsis without the object of commercial purpose; and

(iv) the country to which the copies have been sent has agreed with the Con-tracting State to allow the receipt, distribution or both and the Director-General has been notified of such agreement by any one of the govern-ments which have concluded it.

5. Due provision shall be made at the national level to ensure:(a) that the licence provides for just compensation that is consistent with stan-

dards of royalties normally operating in the case of licences freely negotiatedbetween persons in the two countries concerned; and

(b) payment and transmittal of the compensation; however, should national cur-rency regulations intervene, the competent authority shall make all efforts,

Appendix 401

by the use of international machinery, to ensure transmittal in internation-ally convertible currency or its equivalent.

6. Any licence granted by a Contracting State under this Article shall terminate ifa translation of the work in the same language with substantially the same con-tent as the edition in respect of which the licence was granted is published in thesaid State by the owner of the right of translation or with his authorization, at aprice reasonably related to that normally charged in the same State for compa-rable works. Any copies already made before the licence is terminated may con-tinue to be distributed until their stock is exhausted.

7. For works which are composed mainly of illustrations a licence to translate thetext and to reproduce the illustrations may be granted only if the conditions ofArticle Vquater are also fulfilled.

8. (a) A licence to translate a work protected under this Convention, published inprinted or analogous forms of reproduction, may also be granted to a broad-casting organization having its headquarters in a Contracting State to whichArticle Vbis (1) applies, upon an application made in that State by the saidorganization under the following conditions:

(i) the translation is made from a copy made and acquired in accordancewith the laws of the Contracting State;

(ii) the translation is for use only in broadcasts intended exclusively forteaching: or for the dissemination of the results of specialized technicalor scientific research to experts in a particular profession;

(iii) the translation is used exclusively for the purposes set out in condition(ii), through broadcasts lawfully made which are intended for recipientson the territory of the Contracting State, including broadcasts madethrough the medium of sound or visual recordings lawfully and exclu-sively made for the purpose of such broadcasts;

(iv) sound or visual recordings of the translation may be exchanged onlybetween broadcasting organizations having their headquarters in theContracting State granting the licence; and

(v) all uses made of the translation are without any commercial purpose.(b) Provided all of the criteria and conditions set out in sub-paragraph (a) are

met, a licence may also be granted to a broadcasting organization to trans-late any text incorporated in an audio-visual fixation which was itself pre-pared and published for the sole purpose of being used in connexion withsystematic instructional activities.

(c) Subject to sub-paragraphs (a) and (b), the other provisions of this Article shallapply to the grant and exercise of the licence.

9. Subject to the provisions of this Article, any licence granted under this Articleshall be governed by the provisions of Article V, and shall continue to be gov-erned by the provisions of Article V and of this Article, even after the seven-yearperiod provided for in Article V(2) has expired. However, after the said period hasexpired, the licensee shall be free to request that the said licence be replaced bya new licence governed exclusively by the provisions of Article V.

article vquater

1. Any Contracting State to which Article Vbis (1) applies may adopt the followingprovisions:

402 Appendix

(a) If, after the expiration of (i) the relevant period specified in sub-paragraph(c) commencing from the date of first publication of a particular edition ofa literary, scientific or artistic work referred to in paragraph 3, or (ii) anylonger period determined by national legislation of the State, copies of suchedition have not been distributed in that State to the general public or inconnexion with systematic instructional activities at a price reasonably re-lated to that normally charged in the State for comparable works, by theowner of the right of reproduction or with his authorization, any nationalof such State may obtain a non-exclusive licence from the competent au-thority to publish such edition at that or a lower price for use in connexionwith systematic instructional activities. The licence may only be grantedif such national, in accordance with the procedure of the State concerned,establishes either that he has requested, and been denied, authorizationby the proprietor of the right to publish such work, or that, after due dili-gence on his part, he was unable to find the owner of the right. At the sametime as he makes his request he shall inform either the international copy-right information centre established by the United Nations Educational,Scientific and Cultural Organization or any national or regional informa-tion centre referred to in sub-paragraph (d).

(b) A licence may also be granted on the same conditions if, for a period of sixmonths, no authorized copies of the edition in question have been on sale inthe State concerned to the general public or in connexion with systematicinstructional activities at a price reasonably related to that normally chargedin the State for comparable works.

(c) The period referred to in sub-paragraph (a) shall be five years except that:(i) for works of the natural and physical sciences, including mathematics,

and of technology, the period shall be three years;(ii) for works of fiction, poetry, drama and music, and for art books, the pe-

riod shall be seven years.(d) If the owner of the right of reproduction cannot be found, the applicant for a

licence shall send, by registered air mail, copies of his application to the pub-lisher whose name appears on the work and to any national or regionalinformation centre identified as such in a notification deposited with theDirector-General by the State in which the publisher is believed to have hisprincipal place of business. In the absence of any such notification, he shallalso send a copy to the international copyright information centre establishedby the United Nations Educational, Scientific and Cultural Organization. Thelicence shall not be granted before the expiration of a period of three monthsfrom the date of dispatch of the copies of the application.

(e) Licences obtainable after three years shall not be granted under this Article:(i) until a period of six months has elapsed from the date of the request for

permission referred to in sub-paragraph (a) or, if the identity or addressof the owner of the right of reproduction is unknown, from the date ofthe dispatch of the copies of the application for a licence referred to insub-paragraph (d);

(ii) if any such distribution of copies of the edition as is mentioned in sub-paragraph (a) has taken place during that period.

(f) The name of the author and the title of the particular edition of the work shallbe printed on all copies of the published reproduction. The licence shall notextend to the export of copies and shall be valid only for publication in the

Appendix 403

territory of the Contracting State where it has been applied for. The licenceshall not be transferable by the licensee.

(g) Due provision shall be made by domestic legislation to ensure an accuratereproduction of the particular edition in question.

(h) A licence to reproduce and publish a translation of a work shall not be grantedunder this Article in the following cases:(i) where the translation was not published by the owner of the right of

translation or with his authorization;(ii) where the translation is not in a language in general use in the State with

power to grant the licence.2. The exceptions provided for in paragraph 1 are subject to the following additional

provisions:(a) Any copy published in accordance with a licence granted under this Article

shall bear a notice in the appropriate language stating that the copy is avail-able for distribution only in the Contracting State to which the said licenceapplies. If the edition bears the notice specified in Article III(1), the copiesshall bear the same notice.

(b) Due provision shall be made at the national level to ensure:(i) that the licence provides for just compensation that is consistent with

standards of royalties normally operating in the case of licences freelynegotiated between persons in the two countries concerned; and

(ii) payment and transmittal of the compensation; however, should nationalcurrency regulations intervene, the competent authority shall make allefforts, by the use of international machinery, to ensure transmittal ininternationally convertible currency or its equivalent.

(c) Whenever copies of an edition of a work are distributed in the Contracting Stateto the general public or in connexion with systematic instructional activities,by the owner of the right of reproduction or with his authorization, at a pricereasonably related to that normally charged in the State for comparable works,any licence granted under this Article shall terminate if such edition is in thesame language and is substantially the same in content as the edition publishedunder the licence. Any copies already made before the licence is terminatedmay continue to be distributed until their stock is exhausted.

(d) No licence shall be granted when the author has withdrawn from circula-tion all copies of the edition in question.

3. (a) Subject to sub-paragraph (b), the literary, scientific or artistic works to whichthis Article applies shall be limited to works published in printed or analo-gous forms of reproduction.

(b) The provisions of this Article shall also apply to reproduction in audio-visual formof lawfully made audio-visual fixations including any protected works incorpo-rated therein and to the translation of any incorporated text into a language ingeneral use in the State with power to grant the licence; always provided thatthe audio-visual fixations in question were prepared and published for the solepurpose of being used in connexion with systematic instructional activities.

article vi

“Publication,” as used in this Convention, means the reproduction in tangible formand the general distribution to the public of copies of a work from which it can beread or otherwise visually perceived.

404 Appendix

article vii

This Convention shall not apply to works or rights in works which, at the effectivedate of this Convention in a Contracting State where protection is claimed, are per-manently in the public domain in the said Contracting State.

article viii

1. This Convention, which shall bear the date of 24 July 1971, shall be depositedwith the Director-General and shall remain open for signature by all States partyto the 1952 Convention for a period of 120 days after the date of this Conven-tion. It shall be subject to ratification or acceptance by the signatory States.

2. Any State which has not signed this Convention may accede thereto.3. Ratification, acceptance or accession shall be effected by the deposit of an instru-

ment to that effect with the Director-General.

article ix

1. This Convention shall come into force three months after the deposit of twelveinstruments of ratification, acceptance or accession.

2. Subsequently, this Convention shall come into force in respect of each State threemonths after that State has deposited its instrument of ratification, acceptanceor accession.

3. Accession to this Convention by a State not party to the 1952 Convention shallalso constitute accession to that Convention; however, if its instrument of ac-cession is deposited before this Convention comes into force, such State may makeits accession to the 1952 Convention conditional upon the coming into force ofthis Convention. After the coming into force of this Convention, no State mayaccede solely to the 1952 Convention.

4. Relations between States party to this Convention and States that are party onlyto the 1952 Convention shall be governed by the 1952 Convention. However, anyState party only to the 1952 Convention may, by a notification deposited withthe Director-General, declare that it will admit the application of the 1971 Con-vention to works of its nationals or works first published in its territory by allStates party to this Convention.

article x

1. Each Contracting State undertakes to adopt, in accordance with its Constitution,such measures as are necessary to ensure the application of this Convention.

2. It is understood that at the date this Convention comes into force in respect ofany State, that State must be in a position under its domestic law to give effect tothe terms of this Convention.

article xi

1. An Intergovernmental Committee is hereby established with the followingduties:(a) to study the problems concerning the application and operation of the Uni-

versal Copyright Convention;

Appendix 405

(b) to make preparation for periodic revisions of this Convention;(c) to study any other problems concerning the international protection of copy-

right, in co-operation with the various interested international organiza-tions, such as the United Nations Educational, Scientific and Cultural Orga-nization, the International Union for the Protection of Literary and ArtisticWorks and the Organization of American States;

(d) to inform States party to the Universal Copyright Convention as to its activities.2. The Committee shall consist of the representatives of eighteen States party to this

Convention or only to the 1952 Convention.3. The Committee shall be selected with due consideration to a fair balance of na-

tional interests on the basis of geographical location, population, languages andstage of development.

4. The Director-General of the United Nations Educational, Scientific and CulturalOrganization, the Director-General of the World Intellectual Property Organi-zation and the Secretary-General of the Organization of American States, ortheir representatives, may attend meetings of the Committee in an advisorycapacity.

article xii

The Intergovernmental Committee shall convene a conference for revision wheneverit deems necessary, or at the request of at least ten States party to this Convention.

article xiii

1. Any Contracting State may, at the time of deposit of its instrument of ratifica-tion, acceptance or accession, or at any time thereafter, declare by notificationaddressed to the Director-General that this Convention shall apply to all or anyof the countries or territories for the international relations of which it is respon-sible and this Convention shall thereupon apply to the countries or territoriesnamed in such notification after the expiration of the term of three months pro-vided for in Article IX. In the absence of such notification, this Convention shallnot apply to any such country or territory.

2. However, nothing in this Article shall be understood as implying the recogni-tion or tacit acceptance by a Contracting State of the factual situation concern-ing a country or territory to which this Convention is made applicable by anotherContracting State in accordance with the provisions of this Article.

article xiv

1. Any Contracting State may denounce this Convention in its own name or onbehalf of all or any of the countries or territories with respect to which a notifi-cation has been given under Article XIII. The denunciation shall be made by no-tification addressed to the Director-General. Such denunciation shall also con-stitute denunciation of the 1952 Convention.

2. Such denunciation shall operate only in respect of the State or of the country orterritory on whose behalf it was made and shall not take effect until twelvemonths after the date of receipt of the notification.

406 Appendix

article xv

A dispute between two or more Contracting States concerning the interpretationor application of this Convention, not settled by negotiation, shall, unless the Statesconcerned agree on some other method of settlement, be brought before the Inter-national Court of Justice for determination by it.

article xvi

1. This Convention shall be established in English, French and Spanish. The threetexts shall be signed and shall be equally authoritative.

2. Official texts of this Convention shall be established by the Director-General, afterconsultation with the governments concerned, in Arabic, German, Italian andPortuguese.

3. Any Contracting State or group of Contracting States shall be entitled to haveestablished by the Director-General other texts in the language of its choice byarrangement with the Director-General.

4. All such texts shall be annexed to the signed texts of this Convention.

article xvii

1. This Convention shall not in any way affect the provisions of the Berne Conven-tion for the Protection of Literary and Artistic Works or membership in the Unioncreated by that Convention.

2. In application of the foregoing paragraph, a declaration has been annexed tothe present Article. This declaration is an integral part of this Convention forthe States bound by the Berne Convention on 1 January 1951, or which haveor may become bound to it at a later date. The signature of this Convention bysuch States shall also constitute signature of the said declaration, and ratifi-cation, acceptance or accession by such States shall include the declaration,as well as this Convention.

article xviii

This Convention shall not abrogate multilateral or bilateral copyright conventionsor arrangements that are or may be in effect exclusively between two or more Ameri-can Republics. In the event of the difference either between the provisions of suchexisting conventions or arrangements and the provisions of this Convention, orbetween the provisions of this Convention and those of any new convention or ar-rangement which may be formulated between two or more American Republics afterthis Convention comes into force, the convention or arrangement most recentlyformulated shall prevail between the parties thereto. Rights in works acquired inany Contracting State under existing conventions or arrangements before the datethis Convention comes into force in such State shall not be affected.

article xix

This Convention shall not abrogate multilateral or bilateral conventions or arrange-ments in effect between two or more Contracting States. In the event of any differencebetween the provisions of such existing conventions or arrangements and the provi-sions of this Convention, the provisions of this Convention shall prevail. Rights in

Appendix 407

works acquired in any Contracting State under existing conventions or arrangementsbefore the date on which this Convention comes into force in such State shall not beaffected. Nothing in this Article shall affect the provisions of Articles XVII and XVIII.

article xx

Reservations to this Convention shall not be permitted.

article xxi

1. The Director-General shall send duly certified copies of this Convention to the Statesinterested and to the Secretary-General of the United Nations for registration byhim.

2. He shall also inform all interested States of the ratifications, acceptances andaccessions which have been deposited, the date on which this Convention comesinto force, the notifications under this Convention and denunciations underArticle XIV.

appendix declaration relating to article xvii

The States which are members of the International Union for the Protection of Lit-erary and Artistic Works (hereinafter called “the Berne Union”) and which are signa-tories to this Convention,

Desiring to reinforce their mutual relations on the basis of the said Union and toavoid any conflict which might result from the co-existence of the Berne Conven-tion and the Universal Copyright Convention,

Recognizing the temporary need of some States to adjust their level of copy-right protection in accordance with their stage of cultural, social and economicdevelopment,

Have, by common agreement, accepted the terms of the following declaration:(a) Except as provided by paragraph (b), works which, according to the Berne Con-

vention, have as their country of origin a country which has withdrawn fromthe Berne Union after 1 January 1951, shall not be protected by the UniversalCopyright Convention in the countries of the Berne Union;

(b) Where a Contracting State is regarded as a developing country in conformity withthe established practice of the General Assembly of the United Nations, and hasdeposited with the Director-General of the United Nations Educational, Scientificand Cultural Organization, at the time of its withdrawal from the Berne Union, anotification to the effect that it regards itself as a developing country, the provi-sions of paragraph (a) shall not be applicable as long as such State may avail itselfof the exceptions provided for by this Convention in accordance with Article Vbis;

(c) The Universal Copyright Convention shall not be applicable to the relationshipsamong countries of the Berne Union in so far as it relates to the protection ofworks having as their country of origin, within the meaning of the Berne Con-vention, a country of the Berne Union.

resolution concerning article xi

The Conference for Revision of the Universal Copyright Convention,Having considered the problems relating to the Intergovernmental Committee

provided for in Article XI of this Convention, to which this resolution is annexed,

408 Appendix

Resolves that:1. At its inception, the Committee shall include representatives of the twelve

States members of the Intergovernmental Committee established under ArticleXI of the 1952 Convention and the resolution annexed to it, and, in addition,representatives of the following States: Algeria, Australia, Japan, Mexico, Senegaland Yugoslavia.

2. Any States that are not party to the 1952 Convention and have not acceded tothis Convention before the first ordinary session of the Committee following theentry into force of this Convention shall be replaced by other States to be selectedby the Committee at its first ordinary session in conformity with the provisionsof Article XI (2) and (3).

3. As soon as this Convention comes into force the Committee as provided for inparagraph 1 shall be deemed to be constituted in accordance with Article XI ofthis Convention.

4. A session of the Committee shall take place within one year after the coming intoforce of this Convention; thereafter the Committee shall meet in ordinary ses-sion at intervals of not more than two years.

5. The Committee shall elect its Chairman and two Vice-Chairmen. It shall estab-lish its Rules of Procedure having regard to the following principles:(a) The normal duration of the term of office of the members represented on the

Committee shall be six years with one-third retiring every two years, it beinghowever understood that, of the original terms of office, one-third shall ex-pire at the end of the Committee’s second ordinary session which will followthe entry into force of this Convention, a further third at the end of its thirdordinary session, and the remaining third at the end of its fourth ordinarysession;

(b) The rules governing the procedure whereby the Committee shall fill vacan-cies, the order in which terms of membership expire, eligibility for re-election,and election procedures, shall be based upon a balancing of the needs forcontinuity of membership and rotation of representation, as well as the con-siderations set out in Article XI (3).

Expresses the wish that the United Nations Educational, Scientific and Cultural Or-ganization provide its Secretariat.

In faith whereof the undersigned, having deposited their respective full powers, havesigned this Convention.

Done at Paris, this twenty-fourth day of July 1971, in a single copy.

Protocol 1: Annexed to the Universal Copyright Convention as revisedat Paris on 24 July 1971 concerning the application of thatConvention to works of Stateless persons and refugees

The States party hereto, being also party to the Universal Copyright Convention asrevised at Paris on 24 July 1971 (hereinafter called “the 1971 Convention”),

Have accepted the following provisions:1. Stateless persons and refugees who have their habitual residence in a State party

to this Protocol shall, for the purposes of the 1971 Convention, be assimilated tothe nationals of that State.

Appendix 409

2. (a) This Protocol shall be signed and shall be subject to ratification or accep-tance, or may be acceded to, as if the provisions of Article VIII of the 1971Convention applied hereto.

(b) This Protocol shall enter into force in respect of each State, on the date ofdeposit of the instrument of ratification, acceptance or accession of the Stateconcerned or on the date of entry into force of the 1971 Convention withrespect to such State, whichever is the later.

(c) On the entry into force of this Protocol in respect of a State not party to Pro-tocol 1 annexed to the 1952 Convention, the latter Protocol shall be deemedto enter into force in respect of such State.

In faith whereof the undersigned, being duly authorized thereto, have signed thisProtocol.

Done at Paris this twenty-fourth day of July 1971, in the English, French and Span-ish languages, the three texts being equally authoritative, in a single copy which shallbe deposited with the Director-General of the United Nations Educational, Scientificand Cultural Organization. The Director-General shall send certified copies to the sig-natory States, and to the Secretary-General of the United Nations for registration.

Protocol 2: Annexed to the Universal Copyright Convention asrevised at Paris on 24 July 1971 concerning theapplication of that Convention to the works of certaininternational organizations

The States party hereto, being also party to the Universal Copyright Convention asrevised at Paris on 24 July 1971 (hereinafter called “the 1971 Convention”),

Have accepted the following provisions:1. (a) The protection provided for in Article II (1) of the 1971 Convention shall

apply to works published for the first time by the United Nations, by the Spe-cialized Agencies in relationship therewith, or by the Organization of Ameri-can States.

(b) Similarly, Article II (2) of the 1971 Convention shall apply to the said orga-nization or agencies.

2. (a) This Protocol shall be signed and shall be subject to ratification or acceptance,or may be acceded to, as if the provisions of Article VIII of the 1971 Conven-tion applied hereto.

(b) This Protocol shall enter into force for each State on the date of deposit ofthe instrument of ratification, acceptance or accession of the State concernedor on the date of entry into force of the 1971 Convention with respect to suchState, whichever is the later.


Done at Paris, this twenty-fourth day of July 1971, in the English, French andSpanish languages, the three texts being equally authoritative, in a single copywhich shall be deposited with the Director-General of the United Nations Educa-tional, Scientific and Cultural Organization. The Director-General shall send certi-fied copies to the signatory States, and to the Secretary-General of the United Na-tions for registration.

410 Appendix

410

A7. UNIVERSAL COPYRIGHT CONVENTION

[GENEVA TEXT, 1952]


Moved by the desire to assure in all countries copyright protection of literary, sci-entific and artistic works,

Convinced that a system of copyright protection appropriate to all nations of theworld and expressed in a universal convention, additional to, and without impair-ing international systems already in force, will ensure respect for the rights of theindividual and encourage the development of literature, the sciences and the arts,

Persuaded that such a universal copyright system will facilitate a wider dissemina-tion of works of the human mind and increase international understanding,


article i

Each Contracting State undertakes to provide for the adequate and effective protec-tion of the rights of authors and other copyright proprietors in literary, scientificand artistic works, including writings, musical, dramatic and cinematographicworks, and paintings, engravings and sculpture.

article ii

1. Published works of nationals of any Contracting State and works first publishedin that State shall enjoy in each other Contracting State the same protection asthat other State accords to works of its nationals first published in its own territory.

2. Unpublished works of nationals of each Contracting State shall enjoy in eachother Contracting State the same protection as that other State accords to un-published works of its own nationals.

3. For the purpose of this Convention any Contracting State may, by domestic leg-islation, assimilate to its own nationals any person domiciled in that State.

article iii

1. Any Contracting State which, under its domestic law, requires as a condition ofcopyright, compliance with formalities such as deposit, registration, notice, no-tarial certificates, payment of fees or manufacture or publication in that Con-tracting State, shall regard these requirements as satisfied with respect to allworks protected in accordance with this Convention and first published outsideits territory and the author of which is not one of its nationals, if from the time ofthe first publication all the copies of the work published with the authority of the

Appendix 411

author or other copyright proprietor bear the symbol © accompanied by the nameof the copyright proprietor and the year of first publication placed in such man-ner and location as to give reasonable notice of claim of copyright.

2. The provisions of paragraph 1 of this Article shall not preclude any ContractingState from requiring formalities or other conditions for the acquisition and en-joyment of copyright in respect of works first published in its territory or worksof its nationals wherever published.

3. The provisions of paragraph 1 of this Article shall not preclude any ContractingState from providing that a person seeking judicial relief must, in bringing theaction, comply with procedural requirements, such as that the complainant mustappear through domestic counsel or that the complainant must deposit with thecourt or an administrative office, or both, a copy of the work involved in the liti-gation; provided that failure to comply with such requirements shall not affectthe validity of the copyright, nor shall any such requirement be imposed upon anational of another Contracting State if such requirement is not imposed onnationals of the State in which protection is claimed.

4. In each Contracting State there shall be legal means of protecting without for-malities the unpublished works of nationals of other Contracting States.

5. If a Contracting State grants protection for more than one term of copyright andthe first term is for a period longer than one of the minimum periods prescribedin Article IV, such State shall not be required to comply with the provisions ofparagraph 1 of this Article III in respect of the second or any subsequent term ofcopyright.

article iv

1. The duration of protection of a work shall be governed, in accordance with theprovisions of Article II and this Article, by the law of the Contracting State inwhich protection is claimed.

2. The term of protection for works protected under this Convention shall not beless than the life of the author and 25 years after his death.

However, any Contracting State which, on the effective date of this Conven-tion in that State, has limited this term for certain classes of works to a periodcomputed from the first publication of the work, shall be entitled to maintainthese exceptions and to extend them to other classes of works. For all theseclasses the term of protection shall not be less than 25 years from the date offirst publication.

Any Contracting State which, upon the effective date of this Convention in thatState, does not compute the term of protection upon the basis of the life of theauthor, shall be entitled to compute the term of protection from the date of the firstpublication of the work or from its registration prior to publication, as the casemay be, provided the term of protection shall not be less than 25 years from thedate of first publication or from its registration prior to publication, as the casemay be.

If the legislation of a Contracting State grants two or more successive terms ofprotection, the duration of the first term shall not be less than one of the mini-mum periods specified above.

3. The provisions of paragraph 2 of this Article shall not apply to photographicworks or to works of applied art; provided, however, that the term of protectionin those Contracting States which protect photographic works, or works of ap-

412 Appendix

plied art in so far as they are protected as artistic works, shall not be less than10 years for each of said classes of works.

4. No Contracting State shall be obliged to grant protection to a work for a periodlonger than that fixed for the class of works to which the work in question be-longs, in the case of unpublished works by the law of the Contracting State ofwhich the author is a national, and in the case of published works by the law ofthe Contracting State in which the work has been first published.

For the purposes of the application of the preceding provision, if the law of anyContracting State grants two or more successive terms of protection, the periodof protection of that State shall be considered to be the aggregate of those terms.However, if a specified work is not protected by such State during the second orany subsequent term for any reason, the other Contracting States shall not beobliged to protect it during the second or any subsequent term.

5. For the purposes of the application of paragraph 4 of this Article, the work of anational of a Contracting State, first published in a non-Contracting State, shallbe treated as though first published in the Contracting State of which the authoris a national.

6. For the purposes of the application of paragraph 4 of this Article, in case ofsimultaneous publication in two or more Contracting States, the work shall betreated as though first published in the State which affords the shortest term;any work published in two or more Contracting States within 30 days of its firstpublication shall be considered as having been published simultaneously in saidContracting States.

article v

1. Copyright shall include the exclusive right of the author to make, publish, andauthorize the making and publication of translations of works protected underthis Convention.

2. However, any Contracting State may, by its domestic legislation, restrict the rightof translation of writings, but only subject to the following provisions:

If, after the expiration of a period of seven years from the date of the first publi-cation of a writing, a translation of such writing has not been published in the na-tional language or languages, as the case may be, of the Contracting State, by theowner of the right of translation or with his authorization, any national of suchContracting State may obtain a non-exclusive licence from the competent author-ity thereof to translate the work and publish the work so translated in any of thenational languages in which it has not been published; provided that such national,in accordance with the procedure of the State concerned, establishes either thathe has requested, and been denied, authorization by the proprietor of the right tomake and publish the translation, or that, after due diligence on his part, he wasunable to find the owner of the right. A licence may also be granted on the sameconditions if all previous editions of a translation in such language are out of print.

If the owner of the right of translation cannot be found, then the applicantfor a licence shall send copies of his application to the publisher whose nameappears on the work and, if the nationality of the owner of the right of transla-tion is known, to the diplomatic or consular representative of the State of whichsuch owner is a national, or to the organization which may have been desig-nated by the government of that State. The licence shall not be granted before

Appendix 413

the expiration of a period of two months from the date of the dispatch of thecopies of the application.

Due provision shall be made by domestic legislation to assure to the owner ofthe right of translation a compensation which is just and conforms to interna-tional standards, to assure payment and transmittal of such compensation, andto assure a correct translation of the work.

The original title and the name of the author of the work shall be printed on allcopies of the published translation. The licence shall be valid only for publicationof the translation in the territory of the Contracting State where it has been ap-plied for. Copies so published may be imported and sold in another Contracting Stateif one of the national languages of such other State is the same language as thatinto which the work has been so translated, and if the domestic law in such otherState makes provision for such licences and does not prohibit such importation andsale. Where the foregoing conditions do not exist, the importation and sale of suchcopies in a Contracting State shall be governed by its domestic law and its agree-ments. The licence shall not be transferred by the licencee.

The licence shall not be granted when the author has withdrawn from circu-lation all copies of the work.

article vi

“Publication,” as used in this Convention, means the reproduction in tangible formand the general distribution to the public of copies of a work from which it can beread or otherwise visually perceived.

article vii

This Convention shall not apply to works or rights in works which, at the effectivedate of the Convention in a Contracting State where protection is claimed, are per-manently in the public domain in the said Contracting State.

article viii

1. This Convention, which shall bear the date of 6 September 1952, shall be depos-ited with the Director-General of the United Nations Educational, Scientific andCultural Organization and shall remain open for signature by all States for aperiod of 120 days after that date. It shall be subject to ratification or acceptanceby the signatory States.

2. Any State which has not signed this Convention may accede thereto.3. Ratification, acceptance or accession shall be effected by the deposit of an instru-

ment to that effect with the Director-General of the United Nations Educational,Scientific and Cultural Organization.

article ix

1. This Convention shall come into force three months after the deposit of twelveinstruments of ratification, acceptance or accession, among which there shallbe those of four States which are not members of the international Union for theProtection of Literary and Artistic Works.

414 Appendix

2. Subsequently, this Convention shall come into force in respect of each State threemonths after that State has deposited its instrument of ratification, acceptanceor accession.

article x

1. Each State party to this Convention undertakes to adopt, in accordance with itsConstitution, such measures as are necessary to ensure the application of thisConvention.

2. It is understood, however, that at the time an instrument of ratification, acceptanceor accession is deposited on behalf of any State, such State must be in a positionunder its domestic law to give effect to the terms of this Convention.

article xi

1. An Inter-governmental Committee is hereby established with the followingduties:(a) to study the problems concerning the application and operation of this

Convention;(b) to make preparation for periodic revisions of this Convention;(c) to study any other problems concerning the international protection of

copyright, in co-operation with the various interested international orga-nizations, such as the United Nations Educational, Scientific and CulturalOrganization, the International Union for the Protection of Literary and Ar-tistic Works and the Organization of American States;

(d) to inform the Contracting States as to its activities.2. The Committee shall consist of the representatives of twelve Contracting States to

be selected with due consideration to fair geographical representation and in con-formity with the Resolution relating to this article, annexed to this Convention.

The Director-General of the United Nations Educational, Scientific and Cul-tural Organization, the Director of the Bureau of the International Union for theProtection of Literary and Artistic Works and the Secretary-General of the Or-ganization of American States, or their representatives, may attend meetings ofthe Committee in an advisory capacity.

article xii

The Inter-governmental Committee shall convene a conference for revision of thisConvention whenever it deems necessary, or at the request of at least ten Contract-ing States, or of a majority of the Contracting States if there are less than twentyContracting States.

article xiii

Any Contracting State may, at the time of deposit of its instrument of ratification,acceptance or accession, or at any time thereafter declare by notification addressedto the Director-General of the United Nations Educational, Scientific and CulturalOrganization that this Convention shall apply to all or any of the countries or territo-ries for the international relations of which it is responsible and this Convention shallthereupon apply to the countries or territories named in such notification after the

Appendix 415

expiration of the term of three months provided for in Article IX. In the absence of suchnotification, this Convention shall not apply to any such country or territory.

article xiv

1. Any Contracting State may denounce this Convention in its own name or onbehalf of all or any of the countries or territories as to which a notification hasbeen given under Article XIII. The denunciation shall be made by notificationaddressed to the Director-General of the United Nations Educational, Scientificand Cultural Organization.

2. Such denunciation shall operate only in respect of the State or of the country orterritory on whose behalf it was made and shall not take effect until twelve monthsafter the date of receipt of the notification.

article xv

A dispute between two or more Contracting States concerning the interpretationor application of this Convention, not settled by negotiation, shall, unless the Statesconcerned agree on some other method of settlement, be brought before the Inter-national Court of Justice for determination by it.

article xvi

1. This Convention shall be established in English, French and Spanish. The threetexts shall be signed and shall be equally authoritative.

2. Official texts of this Convention shall be established in German, Italian and Por-tuguese.

Any Contracting State or group of Contracting States shall be entitled to haveestablished by the Director-General of the United Nations Educational, Scientificand Cultural Organization other texts in the language of its choice by arrange-ment with the Director-General.

All such texts shall be annexed to the signed texts of this Convention.

article xvii

1. This Convention shall not in any way affect the provisions of the Berne Conven-tion for the Protection of Literary and Artistic Works or membership in the Unioncreated by that Convention.

2. In application of the foregoing paragraph, a Declaration has been annexed to thepresent article. This Declaration is an integral part of this Convention for theStates bound by the Berne Convention on January 1, 1951, or which have or maybecome bound to it at a later date. The signature of this Convention by such Statesshall also constitute signature of the said Declaration, and ratification, accep-tance or accession by such States shall include the Declaration as well as theConvention.

article xviii

This Convention shall not abrogate multilateral or bilateral copyright conventionsor arrangements that are or may be in effect exclusively between two or more Ameri-

416 Appendix

can Republics. In the event of any difference either between the provisions of suchexisting conventions or arrangements and the provisions of this Convention, orbetween the provisions of this Convention and those of any new convention or ar-rangement which may be formulated between two or more American Republics afterthis Convention comes into force, the convention or arrangement most recentlyformulated shall prevail between the parties thereto. Rights in works acquired inany Contracting State under existing conventions or arrangements before the datethis Convention comes into force in such State shall not be affected.

article xix

This Convention shall not abrogate multilateral or bilateral conventions or arrange-ments in effect between two or more Contracting States. In the event of any differ-ence between the provisions of such existing conventions or arrangements and theprovisions of this Convention, the provisions of this Convention shall prevail. Rightsin works acquired in any Contracting State under existing conventions or arrange-ments before the date on which this Convention comes into force in such State shallnot be affected. Nothing in this article shall affect the provisions of Articles XVII andXVIII of this Convention.

article xx

Reservations to this Convention shall not be permitted.

article xxi

The Director-General of the United Nations Educational, Scientific and CulturalOrganization shall send duly certified copies of this Convention to the States inter-ested, to the Swiss Federal Council and to the Secretary-General of the United Na-tions for registration by him.

He shall also inform all interested States of the ratifications, acceptances and ac-cessions which have been deposited, the date on which this Convention comes intoforce, the notifications under Article XIII of this Convention, and denunciationsunder Article XIV.

appendix declaration relating to article xvii

The States which are members of the International Union for the Protection of Lit-erary and Artistic Works, and which are signatories to the Universal CopyrightConvention,

Desiring to reinforce their mutual relations on the basis of the said Union and toavoid any conflict which might result from the co-existence of the Convention ofBerne and the Universal Convention,

Have, by common agreement, accepted the terms of the following declaration:(a) Works which, according to the Berne Convention, have as their country of ori-

gin a country which has withdrawn from the International Union created bythe said Convention, after January 1, 1951, shall not be protected by the Uni-versal Copyright Convention in the countries of the Berne Union;

(b) The Universal Copyright Convention shall not be applicable to the relationshipsamong countries of the Berne Union insofar as it relates to the protection of

Appendix 417

works having as their country of origin, within the meaning of the Berne Con-vention, a country of the International Union created by the said Convention.

resolution concerning article xi

The Inter-governmental Copyright ConferenceHaving considered the problems relating to the Inter-governmental Committee

provided for in Article XI of the Universal Copyright Convention, resolves1. The first members of the Committee shall be representatives of the following

twelve States, each of those States designating one representative and an alter-nate: Argentina, Brazil, France, Germany, India, Italy, Japan, Mexico, Spain,Switzerland, United Kingdom, and United States of America.

2. The Committee shall be constituted as soon as the Convention comes into forcein accordance with Article XI of this Convention.

3. The Committee shall elect its chairman and one vice-chairman. It shall estab-lish its rules of procedure having regard to the following principles:(a) The normal duration of the term of office of the representatives shall be six

years; with one-third retiring every two years;(b) Before the expiration of the term of office of any members, the Committee

shall decide which States shall cease to be represented on it and whichStates shall be called upon to designate representatives; the representativesof those States which have not ratified, accepted or acceded shall be thefirst to retire;

(c) The different parts of the world shall be fairly represented;and expresses the wish that the United Nations Educational, Scientific and Cul-tural Organization provide its secretariat.

In faith whereof the undersigned, having deposited their respective full powers, havesigned this Convention.

Done at Geneva, this sixth day of September 1952 in a single copy.

Protocol I: Annexed to the Universal Copyright Conventionconcerning the application of that Conventionto the works of stateless persons and refugees

The States parties hereto, being also parties to the Universal Copyright Convention(hereinafter referred to as the “Convention”),

Have accepted the following provisions:1. Stateless persons and refugees who have their habitual residence in a State party

to this Protocol shall, for the purposes of the Convention, be assimilated to thenationals of that State.

2. (a) This Protocol shall be signed and shall be subject to ratification or accep-tance, or may be acceded to, as if the provisions of Article VIII of the Con-vention applied hereto.

(b) This Protocol shall enter into force in respect of each State, on the date ofdeposit of the instrument of ratification, acceptance or accession of the Stateconcerned or on the date of entry into force of the Convention with respectto such State, whichever is the later.

418 Appendix


Done at Geneva this sixth day of September 1952, in the English, French and Span-ish languages, the three texts being equally authoritative, in a single copy whichshall be deposited with the Director-General of Unesco. The Director-General shallsend certified copies to the signatory States, to the Swiss Federal Council, and to theSecretary-General of the United Nations for registration.

Protocol 2: Annexed to the Universal Copyright Convention,concerning the application of that Convention to theworks of certain international organizations

The States parties hereto, being also parties to the Universal Copyright Convention(hereinafter referred to as the “Convention”),

Have accepted the following provisions:1. (a) The protection provided for in Article II (1) of the Convention shall apply

to works published for the first time by the United Nations, by the Special-ized Agencies in relationship therewith, or by the Organization of AmericanStates;

(b) Similarly, Article II (2) of the Convention shall apply to the said organiza-tion or agencies.

2. (a) This Protocol shall be signed and shall be subject to ratification or accep-tance, or may be acceded to, as if the provisions of Article VIII of the Con-vention applied hereto.

(b) This Protocol shall enter into force for each State on the date of deposit ofthe instrument of ratification, acceptance or accession of the State concernedor on the date of entry into force of the Convention with respect to such State,whichever is the later.


Done at Geneva, this sixth day of September 1952, in the English, French andSpanish languages, the three texts being equally authoritative, in a single copywhich shall be deposited with the Director-General of Unesco.

The Director-General shall send certified copies to the signatory States, to theSwiss Federal Council, and to the Secretary-General of the United Nations forregistration.

Protocol 3: Annexed to the Universal Copyright Conventionconcerning the effective date of instruments ofratification or acceptance of or accession to thatConvention

States parties hereto, recognizing that the application of the Universal CopyrightConvention (hereinafter referred to as the “Convention”) to States participating inall the international copyright systems already in force will contribute greatly tothe value of the Convention;

Appendix 419

Have agreed as follows:1. Any State party hereto may, on depositing its instrument of ratification or ac-

ceptance of or accession to the Convention, notify the Director-General of theUnited Nations Educational, Scientific and Cultural Organization (hereinafter re-ferred to as “Director-General”) that that instrument shall not take effect for thepurposes of Article IX of the Convention until any other State named in such no-tification shall have deposited its instrument.

2. The notification referred to in paragraph 1 above shall accompany the instru-ment to which it relates.

3. The Director-General shall inform all States signatory or which have then accededto the Convention of any notifications received in accordance with this Protocol.

4. This Protocol shall bear the same date and shall remain open for signature forthe same period as the Convention.

5. It shall be subject to ratification or acceptance by the signatory States. Any Statewhich has not signed this Protocol may accede thereto.

6. (a) Ratification or acceptance or accession shall be effected by the deposit of aninstrument to that effect with the Director-General.

(b) This Protocol shall enter into force on the date of deposit of not less than fourinstruments of ratification or acceptance or accession. The Director-Generalshall inform all interested States of this date. Instruments deposited after suchdate shall take effect on the date of their deposit.


Done at Geneva, the sixth day of September 1952, in the English, French and Span-ish languages, the three texts being equally authoritative, in a single copy whichshall be annexed to the original copy of the Convention. The Director-General shallsend certified copies to the signatory States, to the Swiss Federal Council, and to theSecretary-General of the United Nations for registration.

420 Appendix

420

A8. PARTIES TO THE UNIVERSAL COPYRIGHT

CONVENTION (1952), REVISED AT PARIS (1971)*

Status on January 1, 1999

Date on which State became partyto the Convention

State Text of 1952 Text of 1971

Algeria2 August 28, 1973 July 10, 1974Andorra September 16, 1955 —Argentina February 13, 1958 —Australia May 1, 1969 February 28, 1978Austria July 2, 1957 August 14, 1982Azerbaijan May 27, 1973Bahamas October 13, 1976 December 27, 1976Bangladesh2 August 5, 1975 August 5, 1975Barbados June 18, 1983 June 18, 1983Belarus May 27, 1973 —Belgium August 31, 1960 —Belize March 1, 1982 —Bolivia March 22, 1990 March 22, 1990Bosnia and

Herzegovina May 11, 1966 July 10, 1974Brazil January 13, 1960 December 11, 1975Bulgaria June 7, 1975 June 7, 1975Cambodia September 16, 1955 —Cameroon May 1, 1973 July 10, 1974Canada August 10, 1962 —Chile September 16, 1955 —China2 October 30, 1992 October 30, 1992Colombia June 18, 1976 June 18, 1976Costa Rica September 16, 1955 March 7, 1980Croatia May 11, 1966 July 10, 1974Cuba June 18, 1957 —Cyprus December 19, 1990 December 19, 1990Czech Republic January 6, 1960 April 17, 1980Denmark February 9, 1962 July 11, 1979Dominican

Republic May 8, 1983 May 8, 1983Ecuador June 5, 1957 September 6, 1991El Salvador March 29, 1979 March 29, 1979Fiji March 13, 1972 —

(continued)


Appendix 421

(continued)



Finland April 16, 1963 November 1, 1986France January 14, 1956 July 10, 1974Germany September 16, 1955 July 10, 1974Ghana August 22, 1962 —Greece August 24, 1963 —Guatemala October 28, 1964 —Guinea November 13, 1981 November 13, 1981Haiti September 16, 1955 —Holy See October 5, 1955 May 6, 1980Hungary January 23 1971 July 10, 1974Iceland December 18, 1956 —India January 21, 1958 April 7, 1988Ireland January 20, 1959 —Israel September 16, 1955 —Italy January 24, 1957 January 25, 1980Japan April 28, 1956 October 21, 1977Kazakstan May 27, 1973 —Kenya September 7, 1966 July 10, 1974Laos September 16, 1955 —Lebanon October 17, 1959 —Liberia July 27, 1956 —Liechtenstein January 22, 1959 —Luxembourg October 15, 1955 —Malawi October 26, 1965 —Malta November 19, 1968 —Mauritius March 12, 1968 —Mexico2 May 12, 1957 October 31, 1975Monaco September 16, 1955 December 13, 1974Morocco May 8, 1972 January 28, 1976Netherlands June 22, 1967 November 30, 1985New Zealand September 11, 1964 —Nicaragua August 16, 1961 —Niger May 15, 1989 May 15, 1989Nigéria February 14, 1962 —Norway January 23, 1963 August 7, 1974Pakistan September 16, 1955 —Panama October 17, 1962 September 3, 1980Paraguay March 11, 1962 —Peru October 16, 1963 July 22, 1985Poland March 9, 1977 March 9, 1977Portugal December 25, 1956 July 30, 1981Republic of

Korea2 October 1, 1987 October 1, 1987Republic of May 27, 1973

MoldovaRussianFederation May 27, 1973 March 9, 1995

(continued)

422 Appendix

(continued)



Rwanda November 10, 1989 November 10, 1989Saint Vincent and

the Grenadines April 22, 1985 April 22, 1985Saudi Arabia July 13, 1994 July 13, 1994Senegal July 9, 1974 July 10, 1974Slovakia January 6, 1960 April 17, 1980Slovenia May 11, 1966 July 10, 1974Spain September 16, 1955 July 10, 1974Sri Lanka January 25, 1984 January 25, 1984Sweden July 1, 1961 July 10, 1974Switzerland March 30, 1956 September 21, 1993Tajikistan May 27, 1973 —The former

Yugoslav Republicof Macedonia November 17, 1991 November 17, 1991

Trinidad andTobago August 19, 1988 August 19, 1988

Tunisia2 June 19, 1969 June 10, 1975Ukraine May 27, 1973 —United Kingdom September 27, 1957 July 10, 1974United States

of America September 16, 1955 July 10, 1974Uruguay April 12, 1993 April 12, 1993Venezuela September 30, 1966 April 11, 1996Yugoslavia May 11, 1966 July 10, 1974Zambia June 1, 1965 —

(Total: 97 States)

1Acccording to the information received by the International Bureau.2Pursuant to Article Vbis of the Convention as revised in 1971, this State hasavailed itself of the exceptions provided for in Articles Vter and Vquater in favorof developing countries.

Editor’s Note: The three Protocols annexed to the Convention were ratified,accepted or acceded to separately; they concern: (1) the application of the Con-vention to the works of stateless persons and refugees. (2) the application ofthe Convention to the works of certain international organizations, and (3) theeffective date of instruments of ratification or acceptance of or accession to theConvention. For detailed information in this respect, and as to notificationsmade by governments of certain Contracting States concerning the territorialapplication of the Convention and the Protocols, see Copyright Bulletin, quar-terly review published by Unesco.

Appendix 423

423

A9. WIPO COPYRIGHT TREATY [WITH AGREED

STATEMENTS CONCERNING THE WIPO

COPYRIGHT TREATY]

[Adopted by the Diplomatic Conference on December 20, 1996 (Geneva)]

Contents

PreambleArticle 1: Relation to the Berne ConventionArticle 2: Scope of Copyright ProtectionArticle 3: Application of Articles 2 to 6 of the Berne ConventionArticle 4: Computer ProgramsArticle 5: Compilations of Data (Databases)Article 6: Right of DistributionArticle 7: Right of RentalArticle 8: Right of Communication to the PublicArticle 9: Duration of the Protection of Photographic WorksArticle 10: Limitations and ExceptionsArticle 11: Obligations concerning Technological MeasuresArticle 12: Obligations concerning Rights Management InformationArticle 13: Application in TimeArticle 14: Provisions on Enforcement of RightsArticle 15: AssemblyArticle 16: International BureauArticle 17: Eligibility for Becoming Party to the TreatyArticle 18: Rights and Obligations under the TreatyArticle 19: Signature of the TreatyArticle 20: Entry into Force of the TreatyArticle 21: Effective Date of Becoming Party to the TreatyArticle 22: No Reservations to the TreatyArticle 23: Denunciation of the TreatyArticle 24: Languages of the TreatyArticle 25: Depositary

preamble

The Contracting Parties,

Desiring to develop and maintain the protection of the rights of authors in their lit-erary and artistic works in a manner as effective and uniform as possible,

Recognizing the need to introduce new international rules and clarify the interpre-tation of certain existing rules in order to provide adequate solutions to the ques-tions raised by new economic, social, cultural and technological developments,

424 Appendix

Recognizing the profound impact of the development and convergence of informationand communication technologies on the creation and use of literary and artistic works,

Emphasizing the outstanding significance of copyright protection as an incentive forliterary and artistic creation,

Recognizing the need to maintain a balance between the rights of authors and thelarger public interest, particularly education, research and access to information,as reflected in the Berne Convention,


article 1relation to the berne convention

(1) This Treaty is a special agreement within the meaning of Article 20 of the BerneConvention for the Protection of Literary and Artistic Works, as regards Contract-ing Parties that are countries of the Union established by that Convention. ThisTreaty shall not have any connection with treaties other than the Berne Conven-tion, nor shall it prejudice any rights and obligations under any other treaties.

(2) Nothing in this Treaty shall derogate from existing obligations that ContractingParties have to each other under the Berne Convention for the Protection ofLiterary and Artistic Works.

(3) Hereinafter, “Berne Convention” shall refer to the Paris Act of July 24, 1971, ofthe Berne Convention for the Protection of Literary and Artistic Works.

(4) Contracting Parties shall comply with Articles 1 to 21 and the Appendix of theBerne Convention.

article 2scope of copyright protection

Copyright protection extends to expressions and not to ideas, procedures, methodsof operation or mathematical concepts as such.

article 3application of articles 2 to 6

of the berne convention

Contracting Parties shall apply mutatis mutandis the provisions of Articles 2 to 6 ofthe Berne Convention in respect of the protection provided for in this Treaty.

article 4computer programs

Computer programs are protected as literary works within the meaning of Article 2of the Berne Convention. Such protection applies to computer programs, whatevermay be the mode or form of their expression.

article 5compilations of data (databases)

Compilations of data or other material, in any form, which by reason of the selec-tion or arrangement of their contents constitute intellectual creations, are protected

Appendix 425

as such. This protection does not extend to the data or the material itself and is with-out prejudice to any copyright subsisting in the data or material contained in thecompilation.

article 6right of distribution

(1) Authors of literary and artistic works shall enjoy the exclusive right of autho-rizing the making available to the public of the original and copies of their worksthrough sale or other transfer of ownership.

(2) Nothing in this Treaty shall affect the freedom of Contracting Parties to deter-mine the conditions, if any, under which the exhaustion of the right in para-graph (1) applies after the first sale or other transfer of ownership of the origi-nal or a copy of the work with the authorization of the author.

article 7right of rental

(1) Authors of(i) computer programs;

(ii) cinematographic works; and(iii) works embodied in phonograms, as determined in the national law of Con-

tracting Parties,shall enjoy the exclusive right of authorizing commercial rental to the public ofthe originals or copies of their works.

(2) Paragraph (1) shall not apply(i) in the case of computer programs, where the program itself is not the es-

sential object of the rental; and(ii) in the case of cinematographic works, unless such commercial rental has

led to widespread copying of such works materially impairing the exclu-sive right of reproduction.

(3) Notwithstanding the provisions of paragraph (1), a Contracting Party that,on April 15, 1994, had and continues to have in force a system of equitableremuneration of authors for the rental of copies of their works embodied inphonograms may maintain that system provided that the commercial rentalof works embodied in phonograms is not giving rise to the material impair-ment of the exclusive right of reproduction of authors.

article 8right of communication to the public

Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii),14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic worksshall enjoy the exclusive right of authorizing any communication to the public oftheir works, by wire or wireless means, including the making available to the pub-lic of their works in such a way that members of the public may access these worksfrom a place and at a time individually chosen by them.

426 Appendix

article 9duration of the protection of photographic works

In respect of photographic works, the Contracting Parties shall not apply the provi-sions of Article 7(4) of the Berne Convention.

article 10limitations and exceptions

(1) Contracting Parties may, in their national legislation, provide for limitations ofor exceptions to the rights granted to authors of literary and artistic works underthis Treaty in certain special cases that do not conflict with a normal exploita-tion of the work and do not unreasonably prejudice the legitimate interests ofthe author.

(2) Contracting Parties shall, when applying the Berne Convention, confine anylimitations of or exceptions to rights provided for therein to certain special casesthat do not conflict with a normal exploitation of the work and do not unrea-sonably prejudice the legitimate interests of the author.

article 11obligations concerning technological measures

Contracting Parties shall provide adequate legal protection and effective legal rem-edies against the circumvention of effective technological measures that are usedby authors in connection with the exercise of their rights under this Treaty or theBerne Convention and that restrict acts, in respect of their works, which are notauthorized by the authors concerned or permitted by law.

article 12obligations concerning rights

management information

(1) Contracting Parties shall provide adequate and effective legal remedies againstany person knowingly performing any of the following acts knowing, or withrespect to civil remedies having reasonable grounds to know, that it will induce,enable, facilitate or conceal an infringement of any right covered by this Treatyor the Berne Convention:(i) to remove or alter any electronic rights management information without

authority;(ii) to distribute, import for distribution, broadcast or communicate to the pub-

lic, without authority, works or copies of works knowing that electronicrights management information has been removed or altered withoutauthority.

(2) As used in this Article, “rights management information” means informationwhich identifies the work, the author of the work, the owner of any right in thework, or information about the terms and conditions of use of the work, andany numbers or codes that represent such information, when any of these itemsof information is attached to a copy of a work or appears in connection with thecommunication of a work to the public.

Appendix 427

article 13application in time

Contracting Parties shall apply the provisions of Article 18 of the Berne Conventionto all protection provided for in this Treaty.

article 14provisions on enforcement of rights

(1) Contracting Parties undertake to adopt, in accordance with their legal systems,the measures necessary to ensure the application of this Treaty.

(2) Contracting Parties shall ensure that enforcement procedures are availableunder their law so as to permit effective action against any act of infringementof rights covered by this Treaty, including expeditious remedies to prevent in-fringements and remedies which constitute a deterrent to further infringements.

article 15assembly

(1) (a) The Contracting Parties shall have an Assembly.(b) Each Contracting Party shall be represented by one delegate who may be

assisted by alternate delegates, advisors and experts.(c) The expenses of each delegation shall be borne by the Contracting Party that

has appointed the delegation. The Assembly may ask the World Intellec-tual Property Organization (hereinafter referred to as “WIPO”) to grant fi-nancial assistance to facilitate the participation of delegations of Contract-ing Parties that are regarded as developing countries in conformity with theestablished practice of the General Assembly of the United Nations or thatare countries in transition to a market economy.

(2) (a) The Assembly shall deal with matters concerning the maintenance and de-velopment of this Treaty and the application and operation of this Treaty.

(b) The Assembly shall perform the function allocated to it under Article 17(2)in respect of the admission of certain intergovernmental organizations tobecome party to this Treaty.

(c) The Assembly shall decide the convocation of any diplomatic conference forthe revision of this Treaty and give the necessary instructions to the Direc-tor General of WIPO for the preparation of such diplomatic conference.

(3) (a) Each Contracting Party that is a State shall have one vote and shall voteonly in its own name.

(b) Any Contracting Party that is an intergovernmental organization may par-ticipate in the vote, in place of its Member States, with a number of votesequal to the number of its Member States which are party to this Treaty. Nosuch intergovernmental organization shall participate in the vote if any oneof its Member States exercises its right to vote and vice versa.

(4) The Assembly shall meet in ordinary session once every two years upon con-vocation by the Director General of WIPO.

(5) The Assembly shall establish its own rules of procedure, including the convo-cation of extraordinary sessions, the requirements of a quorum and, subject tothe provisions of this Treaty, the required majority for various kinds of decisions.

428 Appendix

article 16international bureau

The International Bureau of WIPO shall perform the administrative tasks concern-ing the Treaty.

article 17eligibility for becoming party to the treaty

(1) Any Member State of WIPO may become party to this Treaty.(2) The Assembly may decide to admit any intergovernmental organization to be-

come party to this Treaty which declares that it is competent in respect of, andhas its own legislation binding on all its Member States on, matters covered bythis Treaty and that it has been duly authorized, in accordance with its inter-nal procedures, to become party to this Treaty.

(3) The European Community, having made the declaration referred to in the pre-ceding paragraph in the Diplomatic Conference that has adopted this Treaty,may become party to this Treaty.

article 18rights and obligations under the treaty

Subject to any specific provisions to the contrary in this Treaty, each ContractingParty shall enjoy all of the rights and assume all of the obligations under this Treaty.

article 19signature of the treaty

This Treaty shall be open for signature until December 31, 1997, by any MemberState of WIPO and by the European Community.

article 20entry into force of the treaty

This Treaty shall enter into force three months after 30 instruments of ratificationor accession by States have been deposited with the Director General of WIPO.

article 21effective date of becoming party to the treaty

This Treaty shall bind(i) the 30 States referred to in Article 20, from the date on which this Treaty has

entered into force;(ii) each other State from the expiration of three months from the date on which

the State has deposited its instrument with the Director General of WIPO;(iii) the European Community, from the expiration of three months after the deposit

of its instrument of ratification or accession if such instrument has been de-posited after the entry into force of this Treaty according to Article 20, or, threemonths after the entry into force of this Treaty if such instrument has beendeposited before the entry into force of this Treaty;

Appendix 429

(iv) any other intergovernmental organization that is admitted to become party tothis Treaty, from the expiration of three months after the deposit of its instru-ment of accession.

article 22no reservations to the treaty

No reservation to this Treaty shall be admitted.

article 23denunciation of the treaty

This Treaty may be denounced by any Contracting Party by notification addressedto the Director General of WIPO. Any denunciation shall take effect one year fromthe date on which the Director General of WIPO received the notification.

article 24languages of the treaty

(1) This Treaty is signed in a single original in English, Arabic, Chinese, French,Russian and Spanish languages, the versions in all these languages being equallyauthentic.

(2) An official text in any language other than those referred to in paragraph (1)shall be established by the Director General of WIPO on the request of an inter-ested party, after consultation with all the interested parties. For the purposesof this paragraph, “interested party” means any Member State of WIPO whoseofficial language, or one of whose official languages, is involved and the Euro-pean Community, and any other intergovernmental organization that maybecome party to this Treaty, if one of its official languages is involved.

article 25depositary

The Director General of WIPO is the depositary of this Treaty.

Agreed Statements Concerning the WIPO Copyright TreatyAdopted by the Diplomatic Conference on December 20, 1996

concerning article 1(4)

The reproduction right, as set out in Article 9 of the Berne Convention, and theexceptions permitted thereunder, fully apply in the digital environment, in particu-lar to the use of works in digital form. It is understood that the storage of a protectedwork in digital form in an electronic medium constitutes a reproduction within themeaning of Article 9 of the Berne Convention.

concerning article 3

It is understood that in applying Article 3 of this Treaty, the expression “country ofthe Union” in Articles 2 to 6 of the Berne Convention will be read as if it were a ref-

430 Appendix

erence to a Contracting Party to this Treaty, in the application of those Berne Ar-ticles in respect of protection provided for in this Treaty. It is also understood thatthe expression “country outside the Union” in those Articles in the Berne Conven-tion will, in the same circumstances, be read as if it were a reference to a countrythat is not a Contracting Party to this Treaty, and that “this Convention” in Articles2(8), 2bis(2), 3, 4 and 5 of the Berne Convention will be read as if it were a referenceto the Berne Convention and this Treaty. Finally, it is understood that a referencein Articles 3 to 6 of the Berne Convention to a “national of one of the countries ofthe Union” will, when these Articles are applied to this Treaty, mean, in regard toan intergovernmental organization that is a Contracting Party to this Treaty, a na-tional of one of the countries that is a member of that organization.


The scope of protection for computer programs under Article 4 of this Treaty, readwith Article 2, is consistent with Article 2 of the Berne Convention and on a parwith the relevant provisions of the TRIPs Agreement.


The scope of protection for compilations of data (databases) under Article 5 of thisTreaty, read with Article 2, is consistent with Article 2 of the Berne Convention andon a par with the relevant provisions of the TRIPs Agreement.

concerning articles 6 and 7

As used in these Articles, the expressions “copies” and “original and copies,” beingsubject 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 tangible objects.


It is understood that the obligation under Article 7(1) does not require a ContractingParty to provide an exclusive right of commercial rental to authors who, under thatContracting Party’s law, are not granted rights in respect of phonograms. It is under-stood that this obligation is consistent with Article 14(4) of the TRIPs Agreement.


It is understood that the mere provision of physical facilities for enabling or makinga communication does not in itself amount to communication within the meaningof this Treaty or the Berne Convention. It is further understood that nothing inArticle 8 precludes a Contracting Party from applying Article 11bis(2).


It is understood that the provisions of Article 10 permit Contracting Parties to carryforward and appropriately extend into the digital environment limitations and excep-tions in their national laws which have been considered acceptable under the BerneConvention. Similarly, these provisions should be understood to permit Contract-

Appendix 431

ing Parties to devise new exceptions and limitations that are appropriate in the digi-tal network environment.

It is also understood that Article 10(2) neither reduces nor extends the scope ofapplicability of the limitations and exceptions permitted by the Berne Convention.


It is understood that the reference to “infringement of any right covered by this Treatyor the Berne Convention” includes both exclusive rights and rights of remuneration.

It is further understood that Contracting Parties will not rely on this Article todevise or implement rights management systems that would have the effect of im-posing formalities which are not permitted under the Berne Convention or thisTreaty, prohibiting the free movement of goods or impeding the enjoyment of rightsunder this Treaty.

432

A10. PARTIES TO WIPO COPYRIGHT TREATY

[GENEVA, 1996]*

Status on April 15, 1999

RatificationsSignatories and Accessions

Argentina, Austria, Belarus, Belgium, Bolivia, Burkina Faso,Canada, Chile, Colombia, Costa Rica, Croatia, Denmark,Ecuador, Estonia, Finland, France, Germany, Ghana, Greece,Hungary, Indonesia, Ireland, Israel, Italy, Kazakhstan, Kenya,Kyrgyzstan, Luxembourg, Mexico, Monaco, Mongolia, Namibia,Netherlands, Nigeria, Panama, Portugal, Republic of Moldova,Romania, Senegal, Slovakia, Slovenia, South Africa, Spain,Sweden, Switzerland, Togo, United Kingdom, United States ofAmerica, Uruguay, Venezuela, European Communities (51).

BelarusEl SalvadorHungaryIndonesiaKyrgyzstanPanamaRepublic of Moldova (7)


Appendix 433

433

A11. WIPO PERFORMANCES AND PHONOGRAMS

TREATY [WITH AGREED STATEMENTS

CONCERNING THE WIPO PERFORMANCES

AND PHONOGRAMS TREATY]

[Adopted by the Diplomatic Conference on December 20, 1996 (Geneva)]

Contents

PreambleChapter I: General Provisions

Article 1: Relation to Other ConventionsArticle 2: DefinitionsArticle 3: Beneficiaries of Protection under this TreatyArticle 4: National Treatment

Chapter II: Rights of PerformersArticle 5: Moral Rights of PerformersArticle 6: Economic Rights of Performers in their Unfixed PerformancesArticle 7: Right of ReproductionArticle 8: Right of DistributionArticle 9: Right of RentalArticle 10: Right of Making Available of Fixed Performances

Chapter III: Rights of Producers of PhonogramsArticle 11: Right of ReproductionArticle 12: Right of DistributionArticle 13: Right of RentalArticle 14: Right of Making Available of Phonograms

Chapter IV: Common ProvisionsArticle 15: Right to Remuneration for Broadcasting and Communication tothe PublicArticle 16: Limitations and ExceptionsArticle 17: Term of ProtectionArticle 18: Obligations concerning Technological MeasuresArticle 19: Obligations concerning Rights Management InformationArticle 20: FormalitiesArticle 21: ReservationsArticle 22: Application in TimeArticle 23: Provisions on Enforcement of Rights

Chapter V: Administrative and Final ClausesArticle 24: AssemblyArticle 25: International BureauArticle 26: Eligibility for Becoming Party to the TreatyArticle 27: Rights and Obligations under the TreatyArticle 28: Signature of the Treaty

434 Appendix

Article 29: Entry into Force of the TreatyArticle 30: Effective Date of Becoming Party to the TreatyArticle 31: Denunciation of the TreatyArticle 32: Languages of the TreatyArticle 33: Depositary

Preamble

The Contracting Parties,

Desiring to develop and maintain the protection of the rights of performers and pro-ducers of phonograms in a manner as effective and uniform as possible,

Recognizing the need to introduce new international rules in order to provide ade-quate solutions to the questions raised by economic, social, cultural and techno-logical developments,

Recognizing the profound impact of the development and convergence of informa-tion and communication technologies on the production and use of performancesand phonograms,

Recognizing the need to maintain a balance between the rights of performers andproducers of phonograms and the larger public interest, particularly education,research and access to information,


Chapter I: General Provisions

article 1relation to other conventions

(1) Nothing in this Treaty shall derogate from existing obligations that Contract-ing Parties have to each other under the International Convention for the Pro-tection of Performers, Producers of Phonograms and Broadcasting Organiza-tions done in Rome, October 26, 1961 (hereinafter the “Rome Convention”).

(2) Protection granted under this Treaty shall leave intact and shall in no way af-fect the protection of copyright in literary and artistic works. Consequently, noprovision of this Treaty may be interpreted as prejudicing such protection.

(3) This Treaty shall not have any connection with, nor shall it prejudice any rightsand obligations under, any other treaties.

article 2definitions

For the purposes of this Treaty:(a) “performers” are actors, singers, musicians, dancers, and other persons who

act, sing, deliver, declaim, play in, interpret, or otherwise perform literary orartistic works or expressions of folklore;

Appendix 435

(b) “phonogram” means the fixation of the sounds of a performance or of othersounds, or of a representation of sounds, other than in the form of a fixation in-corporated in a cinematographic or other audiovisual work;

(c) “fixation” means the embodiment of sounds, or of the representations thereof,from which they can be perceived, reproduced or communicated through adevice;

(d) “producer of a phonogram” means the person, or the legal entity, who or whichtakes the initiative and has the responsibility for the first fixation of the soundsof a performance or other sounds, or the representations of sounds;

(e) “publication” of a fixed performance or a phonogram means the offering ofcopies of the fixed performance or the phonogram to the public, with the con-sent of the rightholder, and provided that copies are offered to the public in rea-sonable quantity;

(f) “broadcasting” means the transmission by wireless means for public receptionof sounds or of images and sounds or of the representations thereof; such trans-mission by satellite is also “broadcasting”; transmission of encrypted signals is“broadcasting” where the means for decrypting are provided to the public bythe broadcasting organization or with its consent;

(g) “communication to the public” of a performance or a phonogram means thetransmission to the public by any medium, otherwise than by broadcasting, ofsounds of a performance or the sounds or the representations of sounds fixed ina phonogram. For the purposes of Article 15, “communication to the public”includes making the sounds or representations of sounds fixed in a phonogramaudible to the public.

article 3beneficiaries of protection under this treaty

(1) Contracting Parties shall accord the protection provided under this Treaty tothe performers and producers of phonograms who are nationals of other Con-tracting Parties.

(2) The nationals of other Contracting Parties shall be understood to be those per-formers or producers of phonograms who would meet the criteria for eligibilityfor protection provided under the Rome Convention, were all the ContractingParties to this Treaty Contracting States of that Convention. In respect of thesecriteria of eligibility, Contracting Parties shall apply the relevant definitions inArticle 2 of this Treaty.

(3) Any Contracting Party availing itself of the possibilities provided in Article 5(3)of the Rome Convention or, for the purposes of Article 5 of the same Conven-tion, Article 17 thereof shall make a notification as foreseen in those provi-sions to the Director General of the World Intellectual Property Organization(WIPO).

article 4national treatment

(1) Each Contracting Party shall accord to nationals of other Contracting Parties,as defined in Article 3(2), the treatment it accords to its own nationals withregard to the exclusive rights specifically granted in this Treaty, and to the rightto equitable remuneration provided for in Article 15 of this Treaty.

436 Appendix

(2) The obligation provided for in paragraph (1) does not apply to the extent thatanother Contracting Party makes use of the reservations permitted by Article15(3) of this Treaty.

Chapter II: Rights of Performers

article 5moral rights of performers

(1) Independently of a performer’s economic rights, and even after the transfer ofthose rights, the performer shall, as regards his live aural performances or per-formances fixed in phonograms, have the right to claim to be identified as the per-former of his performances, except where omission is dictated by the manner ofthe use of the performance, and to object to any distortion, mutilation or othermodification of his performances that would be prejudicial to his reputation.

(2) The rights granted to a performer in accordance with paragraph (1) shall, afterhis death, be maintained, at least until the expiry of the economic rights, andshall be exercisable by the persons or institutions authorized by the legislationof the Contracting Party where protection is claimed. However, those Contract-ing Parties whose legislation, at the moment of their ratification of or accessionto this Treaty, does not provide for protection after the death of the performerof all rights set out in the preceding paragraph may provide that some of theserights will, after his death, cease to be maintained.

(3) The means of redress for safeguarding the rights granted under this Article shallbe governed by the legislation of the Contracting Party where protection isclaimed.

article 6economic rights of performersin their unfixed performances

Performers shall enjoy the exclusive right of authorizing, as regards theirperformances:(i) the broadcasting and communication to the public of their unfixed performances

except where the performance is already a broadcast performance; and(ii) the fixation of their unfixed performances.

article 7right of reproduction

Performers shall enjoy the exclusive right of authorizing the direct or indirect re-production of their performances fixed in phonograms, in any manner or form.


(1) Performers shall enjoy the exclusive right of authorizing the making availableto the public of the original and copies of their performances fixed in phonogramsthrough sale or other transfer of ownership.

Appendix 437

(2) Nothing in this Treaty shall affect the freedom of Contracting Parties to deter-mine the conditions, if any, under which the exhaustion of the right in para-graph (1) applies after the first sale or other transfer of ownership of the origi-nal or a copy of the fixed performance with the authorization of the performer.


(1) Performers shall enjoy the exclusive right of authorizing the commercial rentalto the public of the original and copies of their performances fixed in phonogramsas determined in the national law of Contracting Parties, even after distribu-tion of them by, or pursuant to, authorization by the performer.

(2) Notwithstanding the provisions of paragraph (1), a Contracting Party that, onApril 15, 1994, had and continues to have in force a system of equitable re-muneration of performers for the rental of copies of their performances fixed inphonograms, may maintain that system provided that the commercial rentalof phonograms is not giving rise to the material impairment of the exclusive rightof reproduction of performers.

article 10right of making available of fixed performances

Performers shall enjoy the exclusive right of authorizing the making available tothe public of their performances fixed in phonograms, by wire or wireless means, insuch a way that members of the public may access them from a place and at a timeindividually chosen by them.

Chapter III: Rights of Producers of Phonograms

article 11right of reproduction

Producers of phonograms shall enjoy the exclusive right of authorizing the director indirect reproduction of their phonograms, in any manner or form.


(1) Producers of phonograms shall enjoy the exclusive right of authorizing themaking available to the public of the original and copies of their phonogramsthrough sale or other transfer of ownership.

(2) Nothing in this Treaty shall affect the freedom of Contracting Parties to deter-mine the conditions, if any, under which the exhaustion of the right in para-graph (1) applies after the first sale or other transfer of ownership of the origi-nal or a copy of the phonogram with the authorization of the producer of thephonogram.

438 Appendix


(1) Producers of phonograms shall enjoy the exclusive right of authorizing the com-mercial rental to the public of the original and copies of their phonograms, evenafter distribution of them by or pursuant to authorization by the producer.

(2) Notwithstanding the provisions of paragraph (1), a Contracting Party that, onApril 15, 1994, had and continues to have in force a system of equitable remu-neration of producers of phonograms for the rental of copies of their phonograms,may maintain that system provided that the commercial rental of phonogramsis not giving rise to the material impairment of the exclusive rights of reproduc-tion of producers of phonograms.

article 14right of making available of phonograms

Producers of phonograms shall enjoy the exclusive right of authorizing the makingavailable to the public of their phonograms, by wire or wireless means, in such away that members of the public may access them from a place and at a time indi-vidually chosen by them.

Chapter IV: Common Provisions

article 15right to remuneration for broadcasting and

communication to the public

(1) Performers and producers of phonograms shall enjoy the right to a singleequitable remuneration for the direct or indirect use of phonograms publishedfor commercial purposes for broadcasting or for any communication to thepublic.

(2) Contracting Parties may establish in their national legislation that the singleequitable remuneration shall be claimed from the user by the performer orby the producer of a phonogram or by both. Contracting Parties may enactnational legislation that, in the absence of an agreement between the per-former and the producer of a phonogram, sets the terms according to whichperformers and producers of phonograms shall share the single equitableremuneration.

(3) Any Contracting Party may in a notification deposited with the Director Gen-eral of WIPO, declare that it will apply the provisions of paragraph (1) only inrespect of certain uses, or that it will limit their application in some other way,or that it will not apply these provisions at all.

(4) For the purposes of this Article, phonograms made available to the public bywire or wireless means in such a way that members of the public may accessthem from a place and at a time individually chosen by them shall be consid-ered as if they had been published for commercial purposes.

Appendix 439


(1) Contracting Parties may, in their national legislation, provide for the same kindsof limitations or exceptions with regard to the protection of performers and pro-ducers of phonograms as they provide for, in their national legislation, in con-nection with the protection of copyright in literary and artistic works.

(2) Contracting Parties shall confine any limitations of or exceptions to rights pro-vided for in this Treaty to certain special cases which do not conflict with a normalexploitation of the performance or phonogram and do not unreasonably preju-dice the legitimate interests of the performer or of the producer of the phonogram.

article 17term of protection

(1) The term of protection to be granted to performers under this Treaty shall last,at least, until the end of a period of 50 years computed from the end of the yearin which the performance was fixed in a phonogram.

(2) The term of protection to be granted to producers of phonograms under thisTreaty shall last, at least, until the end of a period of 50 years computed fromthe end of the year in which the phonogram was published, or failing such pub-lication within 50 years from fixation of the phonogram, 50 years from the endof the year in which the fixation was made.

article 18obligations concerning technological measures

Contracting Parties shall provide adequate legal protection and effective legal rem-edies against the circumvention of effective technological measures that are usedby performers or producers of phonograms in connection with the exercise of theirrights under this Treaty and that restrict acts, in respect of their performances orphonograms, which are not authorized by the performers or the producers ofphonograms concerned or permitted by law.

article 19obligations concerning rights

management information

(1) Contracting Parties shall provide adequate and effective legal remedies againstany person knowingly performing any of the following acts knowing, or withrespect to civil remedies having reasonable grounds to know, that it will induce,enable, facilitate or conceal an infringement of any right covered by this Treaty:(i) to remove or alter any electronic rights management information without

authority;(ii) to distribute, import for distribution, broadcast, communicate or make avail-

able to the public, without authority, performances, copies of fixed perfor-mances or phonograms knowing that electronic rights management infor-mation has been removed or altered without authority.

(2) As used in this Article, “rights management information” means informationwhich identifies the performer, the performance of the performer, the producer

440 Appendix

of the phonogram, the phonogram, the owner of any right in the performanceor phonogram, or information about the terms and conditions of use of the per-formance or phonogram, and any numbers or codes that represent such infor-mation, when any of these items of information is attached to a copy of a fixedperformance or a phonogram or appears in connection with the communica-tion or making available of a fixed performance or a phonogram to the public.

article 20formalities

The enjoyment and exercise of the rights provided for in this Treaty shall not besubject to any formality.

article 21reservations

Subject to the provisions of Article 15(3), no reservations to this Treaty shall bepermitted.


(1) Contracting Parties shall apply the provisions of Article 18 of the Berne Conven-tion, mutatis mutandis, to the rights of performers and producers of phonogramsprovided for in this Treaty.

(2) Notwithstanding paragraph (1), a Contracting Party may limit the applicationof Article 5 of this Treaty to performances which occurred after the entry intoforce of this Treaty for that Party.

article 23provisions on enforcement of rights

(1) Contracting Parties undertake to adopt, in accordance with their legal systems,the measures necessary to ensure the application of this Treaty.

(2) Contracting Parties shall ensure that enforcement procedures are availableunder their law so as to permit effective action against any act of infringementof rights covered by this Treaty, including expeditious remedies to prevent in-fringements and remedies which constitute a deterrent to further infringements.

Chapter V: Administrative and Final Clauses

article 24assembly

(1) (a) The Contracting Parties shall have an Assembly.(b) Each Contracting Party shall be represented by one delegate who may be

assisted by alternate delegates, advisors and experts.(c) The expenses of each delegation shall be borne by the Contracting Party that

has appointed the delegation. The Assembly may ask WIPO to grant finan-

Appendix 441

cial assistance to facilitate the participation of delegations of ContractingParties that are regarded as developing countries in conformity with theestablished practice of the General Assembly of the United Nations or thatare countries in transition to a market economy.

(2) (a) The Assembly shall deal with matters concerning the maintenance and de-velopment of this Treaty and the application and operation of this Treaty.

(b) The Assembly shall perform the function allocated to it under Article 26(2)in respect of the admission of certain intergovernmental organizations tobecome party to this Treaty.

(c) The Assembly shall decide the convocation of any diplomatic conference forthe revision of this Treaty and give the necessary instructions to the Direc-tor General of WIPO for the preparation of such diplomatic conference.

(3) (a) Each Contracting Party that is a State shall have one vote and shall vote onlyin its own name.

(b) Any Contracting Party that is an intergovernmental organization may par-ticipate in the vote, in place of its Member States, with a number of votesequal to the number of its Member States which are party to this Treaty. Nosuch intergovernmental organization shall participate in the vote if any oneof its Member States exercises its right to vote and vice versa.

(4) The Assembly shall meet in ordinary session once every two years upon con-vocation by the Director General of WIPO.

(5) The Assembly shall establish its own rules of procedure, including the con-vocation of extraordinary sessions, the requirements of a quorum and, sub-ject to the provisions of this Treaty, the required majority for various kinds ofdecisions.


The International Bureau of WIPO shall perform the administrative tasks concern-ing the Treaty.

article 26eligibility for becoming party to the treaty

(1) Any Member State of WIPO may become party to this Treaty.(2) The Assembly may decide to admit any intergovernmental organization to be-

come party to this Treaty which declares that it is competent in respect of, andhas its own legislation binding on all its Member States on, matters covered bythis Treaty and that it has been duly authorized, in accordance with its inter-nal procedures, to become party to this Treaty.

(3) The European Community, having made the declaration referred to in the pre-ceding paragraph in the Diplomatic Conference that has adopted this Treaty,may become party to this Treaty.

article 27rights and obligations under the treaty

Subject to any specific provisions to the contrary in this Treaty, each ContractingParty shall enjoy all of the rights and assume all of the obligations under this Treaty.

442 Appendix

article 28signature of the treaty

This Treaty shall be open for signature until December 31, 1997, by any MemberState of WIPO and by the European Community.


This Treaty shall enter into force three months after 30 instruments of ratificationor accession by States have been deposited with the Director General of WIPO.

article 30effective date of becoming party to the treaty

This Treaty shall bind(i) the 30 States referred to in Article 29, from the date on which this Treaty has

entered into force;(ii) each other State from the expiration of three months from the date on which

the State has deposited its instrument with the Director General of WIPO;(iii) the European Community, from the expiration of three months after the deposit

of its instrument of ratification or accession if such instrument has been de-posited after the entry into force of this Treaty according to Article 29, or, threemonths after the entry into force of this Treaty if such instrument has beendeposited before the entry into force of this Treaty;

(iv) any other intergovernmental organization that is admitted to become party tothis Treaty, from the expiration of three months after the deposit of its instru-ment of accession.


This Treaty may be denounced by any Contracting Party by notification addressedto the Director General of WIPO. Any denunciation shall take effect one year fromthe date on which the Director General of WIPO received the notification.

article 32languages of the treaty

(1) This Treaty is signed in a single original in English, Arabic, Chinese, French,Russian and Spanish languages, the versions in all these languages beingequally authentic.

(2) An official text in any language other than those referred to in paragraph (1)shall be established by the Director General of WIPO on the request of aninterested party, after consultation with all the interested parties. For thepurposes of this paragraph, “interested party” means any Member State ofWIPO whose official language, or one of whose official languages, is involvedand the European Community, and any other intergovernmental organiza-tion that may become party to this Treaty, if one of its official languages isinvolved.

Appendix 443

article 33depositary

The Director General of WIPO is the depositary of this Treaty.

Agreed Statements concerning the WIPO Performancesand Phonograms Treaty

Adopted by the Diplomatic Conference on December 20, 1996


It is understood that Article 1(2) clarifies the relationship between rights in phono-grams under this Treaty and copyright in works embodied in the phonograms. Incases where authorization is needed from both the author of a work embodied inthe phonogram and a performer or producer owning rights in the phonogram, theneed for the authorization of the author does not cease to exist because the autho-rization of the performer or producer is also required, and vice versa.

It is further understood that nothing in Article 1(2) precludes a Contracting Partyfrom providing exclusive rights to a performer or producer of phonograms beyondthose required to be provided under this Treaty.

concerning article 2(b)

It is understood that the definition of phonogram provided in Article 2(b) does notsuggest that rights in the phonogram are in any way affected through their incor-poration into a cinematographic or other audiovisual work.

concerning articles 2(e), 8, 9, 12, and 13

As used in these Articles, the expressions “copies” and “original and copies,” beingsubject 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 tangible objects.


It is understood that the reference in Articles 5(a) and 16(a)(iv) of the Rome Conven-tion to “national of another Contracting State” will, when applied to this Treaty, mean,in regard to an intergovernmental organization that is a Contracting Party to thisTreaty, a national of one of the countries that is a member of that organization.

concerning article 3(2)

For the application of Article 3(2), it is understood that fixation means the finaliza-tion of the master tape (“bande-mère”).

concerning articles 7, 11 and 16

The reproduction right, as set out in Articles 7 and 11, and the exceptions permit-ted thereunder through Article 16, fully apply in the digital environment, in par-

444 Appendix

ticular to the use of performances and phonograms in digital form. It is understoodthat the storage of a protected performance or phonogram in digital form in an elec-tronic medium constitutes a reproduction within the meaning of these Articles.


It is understood that Article 15 does not represent a complete resolution of the levelof rights of broadcasting and communication to the public that should be enjoyedby performers and phonogram producers in the digital age. Delegations were un-able to achieve consensus on differing proposals for aspects of exclusivity to be pro-vided in certain circumstances or for rights to be provided without the possibility ofreservations, and have therefore left the issue to future resolution.


It is understood that Article 15 does not prevent the granting of the right conferredby this Article to performers of folklore and producers of phonograms recording folk-lore where such phonograms have not been published for commercial gain.


The agreed statement concerning Article 10 (on Limitations and Exceptions) of theWIPO Copyright Treaty is applicable mutatis mutandis also to Article 16 (on Limi-tations and Exceptions) of the WIPO Performances and Phonograms Treaty.


The agreed statement concerning Article 12 (on Obligations Concerning RightsManagement Information) of the WIPO Copyright Treaty is applicable mutatismutandis also to Article 19 (on Obligations concerning Rights Management Infor-mation) of the WIPO Performances and Phonograms Treaty.

445

A12. PARTIES TO THE WIPO PERFORMANCES AND

PHONOGRAMS TREATY* [GENEVA, 1996]

Status on April 15, 1999


RatificationsSignatories and Accessions

Argentina, Austria, Belarus, Belgium, Bolivia, Burkina Faso,Canada, Chile, Colombia, Costa Rica, Croatia, Denmark,Ecuador, Estonia, Finland, France, Germany, Ghana, Greece,Hungary, Indonesia, Ireland, Israel, Italy, Kazakhstan, Kenya,Luxembourg, Mexico, Monaco, Mongolia, Namibia, Netherlands,Nigeria, Panama, Portugal, Republic of Moldova, Romania,Senegal, Slovakia, Slovenia, South Africa, Spain, Sweden,Switzerland, Togo, United Kingdom, United States of America,Uruguay, Venezuela, European Communities (50).

BelarusEl SalvadorHungaryPanamaRepublic of Moldova (5)

446 Appendix

446

A13. INTERNATIONAL CONVENTION FOR THE PROTECTION OF

PERFORMERS, PRODUCERS OF PHONOGRAMS AND

BROADCASTING ORGANISATIONS [ROME CONVENTION]

[Done at Rome on October 26, 1961]

The Contracting States, moved by the desire to protect the rights of performers, producersof phonograms, and broadcasting organisations,


article 1

Protection granted under this Convention shall leave intact and shall in no wayaffect the protection of copyright in literary and artistic works. Consequently, noprovision of this Convention may be interpreted as prejudicing such protection.

article 2

1. For the purposes of this Convention, national treatment shall mean the treat-ment accorded by the domestic law of the Contracting State in which protectionis claimed:(a) to performers who are its nationals, as regards performances taking place,

broadcast, or first fixed, on its territory;(b) to producers of phonograms who are its nationals, as regards phonograms

first fixed or first published on its territory;(c) to broadcasting organisations which have their headquarters on its territory,

as regards broadcasts transmitted from transmitters situated on its territory.2. National treatment shall be subject to the protection specifically guaranteed, and

the limitations specifically provided for, in this Convention.

article 3

For the purposes of this Convention:(a) “performers” means actors, singers, musicians, dancers, and other persons who

act, sing, deliver, declaim, play in, or otherwise perform literary or artistic works;(b) “phonogram” means any exclusively aural fixation of sounds of a performance

or of other sounds;(c) “producer of phonograms” means the person who, or the legal entity which,

first fixes the sounds of a performance or other sounds;(d) “publication” means the offering of copies of a phonogram to the public in rea-

sonable quantity;(e) “reproduction” means the making of a copy or copies of a fixation;

Appendix 447

(f) “broadcasting” means the transmission by wireless means for public receptionof sounds or of images and sounds;

(g) “rebroadcasting” means the simultaneous broadcasting by one broadcastingorganisation of the broadcast of another broadcasting organisation.

article 4

Each Contracting State shall grant national treatment to performers if any of thefollowing conditions is met:(a) the performance takes place in another Contracting State;(b) the performance is incorporated in a phonogram which is protected under Ar-

ticle 5 of this Convention;(c) the performance, not being fixed on a phonogram, is carried by a broadcast

which is protected by Article 6 of this Convention.

article 5

1. Each Contracting State shall grant national treatment to producers of phonogramsif any of the following conditions is met:(a) the producer of the phonogram is a national of another Contracting State

(criterion of nationality);(b) the first fixation of the sound was made in another Contracting State (crite-

rion of fixation);(c) the phonogram was first published in another Contracting State (criterion

of publication).2. If a phonogram was first published in a non-contracting State but if it was also

published, within thirty days of its first publication, in a Contracting State (si-multaneous publication), it shall be considered as first published in the Contract-ing State.

3. By means of a notification deposited with the Secretary-General of the United Na-tions, any Contracting State may declare that it will not apply the criterion of pub-lication or, alternatively, the criterion of fixation. Such notification may be depos-ited at the time of ratification, acceptance or accession, or at any time thereafter;in the last case, it shall become effective six months after it has been deposited.

article 6

1. Each Contracting State shall grant national treatment to broadcasting organi-sations if either of the following conditions is met:(a) the headquarters of the broadcasting organisation is situated in another Con-

tracting State;(b) the broadcast was transmitted from a transmitter situated in another Con-

tracting State.2. By means of a notification deposited with the Secretary-General of the United

Nations, any Contracting State may declare that it will protect broadcasts onlyif the headquarters of the broadcasting organisation is situated in another Con-tracting State and the broadcast was transmitted from a transmitter situated inthe same Contracting State. Such notification may be deposited at the time of rati-fication, acceptance or accession, or at any time thereafter; in the last case, itshall become effective six months after it has been deposited.

448 Appendix

article 7

1. The protection provided for performers by this Convention shall include the pos-sibility of preventing:(a) the broadcasting and the communication to the public, without their con-

sent, of their performance, except where the performance used in the broad-casting or the public communication is itself already a broadcast performanceor is made from a fixation;

(b) the fixation, without their consent, of their unfixed performance;(c) the reproduction, without their consent, of a fixation of their performance:

(i) if the original fixation itself was made without their consent;(ii) if the reproduction is made for purposes different from those for which

the performers gave their consent;(iii) if the original fixation was made in accordance with the provisions of

Article 15, and the reproduction is made for purposes different from thosereferred to in those provisions.

2. (1) If broadcasting was consented to by the performers, it shall be a matterfor the domestic law of the Contracting State where protection is claimedto regulate the protection against rebroadcasting, fixation for broadcastingpurposes and the reproduction of such fixation for broadcasting purposes.

(2) The terms and conditions governing the use by broadcasting organisationsof fixations made for broadcasting purposes shall be determined in accor-dance with the domestic law of the Contracting State where protection isclaimed.

(3) However, the domestic law referred to in sub-paragraphs (1) and (2) of thisparagraph shall not operate to deprive performers of the ability to control,by contract, their relations with broadcasting organisations.

article 8

Any Contracting State may, by its domestic laws and regulations, specify the man-ner in which performers will be represented in connexion with the exercise of theirrights if several of them participate in the same performance.

article 9

Any Contracting State may, by its domestic laws and regulations, extend the pro-tection provided for in this Convention to artists who do not perform literary or ar-tistic works.

article 10

Producers of phonograms shall enjoy the right to authorise or prohibit the direct orindirect reproduction of their phonograms.

article 11

If, as a condition of protecting the rights of producers of phonograms, or of per-formers, or both, in relation to phonograms, a Contracting State, under its domes-

Appendix 449

tic law, requires compliance with formalities, these shall be considered as fulfilled ifall the copies in commerce of the published phonogram or their containers bear anotice consisting of the symbol (P), accompanied by the year date of the first publi-cation, placed in such a manner as to give reasonable notice of claim of protection;and if the copies or their containers do not identify the producer or the licensee ofthe producer (by carrying his name, trade mark or other appropriate designation),the notice shall also include the name of the owner of the rights of the producer;and, furthermore, if the copies or their containers do not identify the principal per-formers, the notice shall also include the name of the person who, in the country inwhich the fixation was effected, owns the rights of such performers.

article 12

If a phonogram published for commercial purposes, or a reproduction of suchphonogram, is used directly for broadcasting or for any communication to the pub-lic, a single equitable remuneration shall be paid by the user to the performers, orto the producers of the phonograms, or to both. Domestic law may, in the absenceof agreement between these parties, lay down the conditions as to the sharing ofthis remuneration.

article 13

Broadcasting organisations shall enjoy the right to authorise or prohibit:(a) the rebroadcasting of their broadcasts;(b) the fixation of their broadcasts;(c) the reproduction:

(i) of fixations, made without their consent, of their broadcasts;(ii) of fixations, made in accordance with the provisions of Article 15, of their

broadcasts, if the reproduction is made for purposes different from those re-ferred to in those provisions;

(d) the communication to the public of their television broadcasts if such commu-nication is made in places accessible to the public against payment of an en-trance fee; it shall be a matter for the domestic law of the State where protec-tion of this right is claimed to determine the conditions under which it may beexercised.

article 14

The term of protection to be granted under this Convention shall last at least untilthe end of a period of twenty years computed from the end of the year in which:(a) the fixation was made—for phonograms and for performances incorporated

therein;(b) the performance took place—for performances not incorporated in phonograms;(c) the broadcast took place—for broadcasts.

article 15

1. Any Contracting State may, in its domestic laws and regulations, provide forexceptions to the protection guaranteed by this Convention as regards:

450 Appendix

(a) private use;(b) use of short excerpts in connexion with the reporting of current events;(c) ephemeral fixation by a broadcasting organisation by means of its own fa-

cilities and for its own broadcasts;(d) use solely for the purposes of teaching or scientific research.

2. Irrespective of paragraph 1 of this Article, any Contracting State may, in its do-mestic laws and regulations, provide for the same kinds of limitations with re-gard to the protection of performers, producers of phonograms and broadcast-ing organisations, as it provides for, in its domestic laws and regulations, inconnexion with the protection of copyright in literary and artistic works. How-ever, compulsory licenses may be provided for only to the extent to which theyare compatible with this Convention.

article 16

1. Any State, upon becoming party to this Convention, shall be bound by all theobligations and shall enjoy all the benefits thereof. However, a State may at anytime, in a notification deposited with the Secretary-General of the United Nations,declare that:(a) as regards Article 12:

(i) it will not apply the provisions of that Article;(ii) it will not apply the provisions of that Article in respect of certain uses;

(iii) as regards phonograms the producer of which is not a national of an-other Contracting State, it will not apply that Article;

(iv) as regards phonograms the producer of which is a national of anotherContracting State, it will limit the protection provided for by that Articleto the extent to which, and to the term for which, the latter State grantsprotection to phonograms first fixed by a national of the State makingthe declaration; however, the fact that the Contracting State of whichthe producer is a national does not grant the protection to the same ben-eficiary or beneficiaries as the State making the declaration shall not beconsidered as a difference in the extent of the protection;

(b) as regards Article 13, it will not apply item 13(d); if a Contracting State makessuch a declaration, the other Contracting States shall not be obliged to grantthe right referred to in Article 13(d), to broadcasting organisations whoseheadquarters are in that State.

2. If the notification referred to in paragraph 1 of this Article is made after the dateof the deposit of the instrument of ratification, acceptance or accession, the dec-laration will become effective six months after it has been deposited.

article 17

Any State which, on October 26, 1961, grants protection to producers of phonogramssolely on the basis of the criterion of fixation may, by a notification deposited withthe Secretary-General of the United Nations at the time of ratification, acceptanceor accession, declare that it will apply, for the purposes of Article 5, the criterion offixation alone and, for the purposes of paragraph 16.1(a)(iii) and 16.1(a)(iv), thecriterion of fixation instead of the criterion of nationality.

Appendix 451

article 18

Any State which has deposited a notification under Article 5.3, Article 6.2, Ar-ticle 16.1 or Article 17, may, by a further notification deposited with the Secretary-General of the United Nations, reduce its scope or withdraw it.

article 19

Notwithstanding anything in this Convention, once a performer has consented tothe incorporation of his performance in a visual or audio-visual fixation, Article 7shall have no further application.

article 20

1. This Convention shall not prejudice rights acquired in any Contracting Statebefore the date of coming into force of this Convention for that State.

2. No Contracting State shall be bound to apply the provisions of this Conventionto performances or broadcasts which took place, or to phonograms which werefixed, before the date of coming into force of this Convention for that State.

article 21

The protection provided for in this Convention shall not prejudice any protec-tion otherwise secured to performers, producers of phonograms and broadcastingorganisations.

article 22

Contracting States reserve the right to enter into special agreements among them-selves in so far as such agreements grant to performers, producers of phonogramsor broadcasting organisations more extensive rights than those granted by thisConvention or contain other provisions not contrary to this Convention.

article 23

This Convention shall be deposited with the Secretary-General of the United Nations.It shall be open until June 30, 1962, for signature by any State invited to the Dip-lomatic Conference on the International Protection of Performers, Producers ofPhonograms and Broadcasting Organisations which is a party to the UniversalCopyright Convention or a member of the International Union for the Protection ofLiterary and Artistic Works.

article 24

1. This Convention shall be subject to ratification or acceptance by the signatoryStates.

2. This Convention shall be open for accession by any State invited to the Conferencereferred to in Article 23, and by any State Member of the United Nations, providedthat in either case such State is a party to the Universal Copyright Convention or amember of the International Union for the Protection of Literary and Artistic Works.

452 Appendix

3. Ratification, acceptance or accession shall be effected by the deposit of an instru-ment to that effect with the Secretary-General of the United Nations.

article 25

1. This Convention shall come into force three months after the date of deposit ofthe sixth instrument of ratification, acceptance or accession.

2. Subsequently, this Convention shall come into force in respect of each State threemonths after the date of deposit of its instrument of ratification, acceptance oraccession.

article 26

1. Each Contracting State undertakes to adopt, in accordance with its Constitution,the measures necessary to ensure the application of this Convention.

2. At the time of deposit of its instrument of ratification, acceptance or accession,each State must be in a position under its domestic law to give effect to the termsof this Convention.

article 27

1. Any State may, at the time of ratification, acceptance or accession, or at any timethereafter, declare by notification addressed to the Secretary-General of theUnited Nations that this Convention shall extend to all or any of the territoriesfor whose international relations it is responsible, provided that the UniversalCopyright Convention or the International Convention for the Protection of Lit-erary and Artistic Works applies to the territory or territories concerned. Thisnotification shall take effect three months after the date of its receipt.

2. The notifications referred to in Article 5.3, Article 6.2, Article 16.1 and Articles17 and 18, may be extended to cover all or any of the territories referred to inparagraph 1 of this Article.

article 28

1. Any Contracting State may denounce this Convention, on its own behalf or onbehalf of all or any of the territories referred to in Article 27.

2. The denunciation shall be effected by a notification addressed to the Secretary-General of the United Nations and shall take effect twelve months after the dateof receipt of the notification.

3. The right of denunciation shall not be exercised by a Contracting State beforethe expiry of a period of five years from the date on which the Convention cameinto force with respect to that State.

4. A Contracting State shall cease to be a party to this Convention from that timewhen it is neither a party to the Universal Copyright Convention nor a memberof the International Union for the Protection of Literary and Artistic Works.

5. This Convention shall cease to apply to any territory referred to in Article 27 fromthat time when neither the Universal Copyright Convention nor the Interna-tional Convention for the Protection of Literary and Artistic Works applies to thatterritory.

Appendix 453

article 29

1. After this Convention has been in force for five years, any Contracting State may,by notification addressed to the Secretary-General of the United Nations, requestthat a conference be convened for the purpose of revising the Convention. TheSecretary-General shall notify all Contracting States of this request. If, within aperiod of six months following the date of notification by the Secretary-Generalof the United Nations, not less than one half of the Contracting States notify himof their concurrence with the request, the Secretary-General shall inform theDirector-General of the International Labour Office, the Director-General of theUnited Nations Educational, Scientific and Cultural Organization and the Direc-tor of the Bureau of the International Union for the Protection of Literary andArtistic Works, who shall convene a revision conference in co-operation withthe Intergovernmental Committee provided for in Article 32.

2. The adoption of any revision of this Convention shall require an affirmative voteby two-thirds of the States attending the revision conference, provided that thismajority includes two-thirds of the States which, at the time of the revision con-ference, are parties to the Convention.

3. In the event of adoption of a Convention revising this Convention in whole or inpart, and unless the revising Convention provides otherwise:(a) this Convention shall cease to be open to ratification, acceptance or acces-

sion as from the date of entry into force of the revising Convention;(b) this Convention shall remain in force as regards relations between or with Con-

tracting States which have not become parties to the revising Convention.

article 30

Any dispute which may arise between two or more Contracting States concern-ing the interpretation or application of this Convention and which is not settledby negotiation shall, at the request of any one of the parties to the dispute, be re-ferred to the International Court of Justice for decision, unless they agree to an-other mode of settlement.

article 31

Without prejudice to the provisions of Article 5.3, Article 6.2, Article 16.1 andArticle 17, no reservation may be made to this Convention.

article 32

1. An Intergovernmental Committee is hereby established with the following duties:(a) to study questions concerning the application and operation of this Conven-

tion; and(b) to collect proposals and to prepare documentation for possible revision of this

Convention.2. The Committee shall consist of representatives of the Contracting States, cho-

sen with due regard to equitable geographical distribution. The number of mem-bers shall be six if there are twelve Contracting States or less, nine if there arethirteen to eighteen Contracting States and twelve if there are more than eigh-teen Contracting States.

454 Appendix

3. The Committee shall be constituted twelve months after the Convention comesinto force by an election organised among the Contracting States, each of whichshall have one vote, by the Director-General of the International Labour Office,the Director-General of the United Nations Educational, Scientific and CulturalOrganization and the Director of the Bureau of the International Union for theProtection of Literary and Artistic Works, in accordance with rules previouslyapproved by a majority of all Contracting States.

4. The Committee shall elect its Chairman and officers. It shall establish its own rulesof procedure. These rules shall in particular provide for the future operation ofthe Committee and for a method of selecting its members for the future in such away as to ensure rotation among the various Contracting States.

5. Officials of the International Labour Office, the United Nations Educational, Sci-entific and Cultural Organization and the Bureau of the International Union forthe Protection of Literary and Artistic Works, designated by the Directors-Generaland the Director thereof, shall constitute the Secretariat of the Committee.

6. Meetings of the Committee, which shall be convened whenever a majority of itsmembers deems it necessary, shall be held successively at the headquarters ofthe International Labour Office, the United Nations Educational, Scientific andCultural Organization and the Bureau of the International Union for the Protec-tion of Literary and Artistic Works.

7. Expenses of members of the Committee shall be borne by their respectiveGovernments.

article 33

1. The present Convention is drawn up in English, French and Spanish, the threetexts being equally authentic.

2. In addition, official texts of the present Convention shall be drawn up in German,Italian and Portuguese.

article 34

1. The Secretary-General of the United Nations shall notify the States invited to theConference referred to in Article 23 and every State Member of the United Nations,as well as the Director-General of the International Labour Office, the Director-General of the United Nations Educational, Scientific and Cultural Organizationand the Director of the Bureau of the International Union for the Protection ofLiterary and Artistic Works:(a) of the deposit of each instrument of ratification, acceptance or accession;(b) of the date of entry into force of the Convention;(c) of all notifications, declarations or communications provided for in this

Convention;(d) if any of the situations referred to in paragraphs 28.4 and 28.5 arise.

2. The Secretary-General of the United Nations shall also notify the Director-General of the International Labour Office, the Director-General of the United Na-tions Educational, Scientific and Cultural Organization and the Director of theBureau of the International Union for the Protection of Literary and ArtisticWorks of the requests communicated to him in accordance with Article 29, aswell as of any communication received from the Contracting States concerningthe revision of the Convention.

Appendix 455

Japan1 ............................ October 26, 1989Latvia1 ........................... August 20, 1999Lebanon ........................ August 12, 1997Lesotho1 ......................... January 26, 1990Liechtenstein1 ............... October 12, 1999Lithuania1 ..................... July 22, 1999Luxembourg1 ................ February 25, 1976Mexico ........................... May 18, 1964Monaco1 ........................ December 6, 1985Netherlands1,2 ............... October 7, 1993Niger1 ............................ May 18, 1964Nigeria1 ......................... October 29, 1993Norway .......................... July 10, 1978Panama ......................... September 2, 1983Paraguay ....................... February 26, 1970Peru ............................... August 7, 1985Philippines .................... September 25, 1984Poland1 .......................... June 13, 1997Republic of Moldova1 .... December 5, 1995Romania1 ...................... October 22, 1998Saint Lucia1 ................... August 17, 1996Slovakia1 ....................... January 1, 1993Slovenia1 ....................... October 9, 1996Spain1 ............................ November 14, 1991Sweden1 ......................... May 18, 1964Switzerland1 .................. September 24, 1993The former ....................

Yugoslav Republicof Macedonia1 ........... March 2, 1998

United Kingdom1,3 ........ May 18, 1964Uruguay ........................ July 4, 1977Venezuela ...................... January 30, 1996

455

A14. PARTIES TO INTERNATIONAL CONVENTION FOR

THE PROTECTION OF PERFORMERS, PRODUCERS

OF PHONOGRAMS AND BROADCASTING

ORGANISATIONS* [ROME CONVENTION, 1961]

Status on July 15, 1999

Argentina ...................... March 2, 1992Australia ....................... September 30, 1992Austria1 ......................... June 9, 1973Barbados ....................... September 18, 1983Belgium1 ........................ October 2, 1999Bolivia ........................... November 24, 1993Brazil ............................. September 29, 1965Bulgaria ......................... August 31, 1995Burkina Faso ................. January 14, 1988Canada1 ......................... June 4, 1998Cape Verde .................... July 3, 1997Chile ............................... September 5, 1974Colombia ....................... September 17, 1976Congo1 ........................... May 18, 1964Costa Rica ..................... September 9, 1971Czech Republic1 ............ January 1, 1993Denmark1 ...................... September 23, 1965Dominica ....................... August 7, 1999Dominican Republic ..... January 27, 1987Ecuador ......................... May 18, 1964El Salvador .................... June 29, 1979Fiji1 ................................. April 11, 1972Finland1 ......................... October 21, 1983France1 .......................... July 3, 1987Germany1 ...................... October 21, 1966Greece ............................ January 6, 1993Guatemala ..................... January 14, 1977Honduras ...................... February 16, 1990Hungary ........................ February 10, 1995Iceland1 ......................... June 15, 1994Ireland1 .......................... September 19, 1979Italy1 .............................. April 8, 1975Jamaica ......................... January 27, 1994


(Total: 63 States)

1The instruments of ratification or accession deposited with the Secretary-General of the United Nations by the fol-lowing States contain declarations made under the articles mentioned hereafter (with reference to publication in Le

Date on which Date on whichState became party State became party

State to the Convention State to the Convention

456 Appendix

Droit d’auteur (Copyright) for the years 1962 to 1964, in Copyright for the years 1965 to 1994, in IndustrialProperty and Copyright until May 1998 and, in Intellectual Property Laws and Treaties since June 1998):Australia, Articles 5(3) (concerning Article 5(1)(c)), 6(2), 16(1)(a)(i) and 16(1)(b) [1992, p. 301];Austria, Article 16(1)(a)(iii) and (iv) and 1(b) [1973, p. 67];Belgium, Articles 5(3) (concerning Article 5(1)(c)), 6(2), 16(1)(a)(iii) and (iv) [1999];Bulgaria, Article 16(1)(a)(iii) and (iv) [1995, p. 262];Canada, Article 5(3) (concerning Articles 5(1)(b) and (c)), 6(2) (concerning Article 6(1)) and 16(1)(a)(iv)(concerning Article 12) [1998, p. 42]Congo, Articles 5(3) (concerning Article 5(1)(c)) and 16(1)(a)(i) [1964, p. 127];Czech Republic, Article 16(1)(a)(iii) and (iv) [1964, p. 110];Denmark, Articles 6(2), 16(1)(a)(ii) and (iv) and 17 [1965, p. 214];Fiji, Articles 5(3) (concerning Article 5(1)(b)), 6(2) and 16(1)(a)(i) [1972, pp. 88 and 178];Finland, Articles 16(1)(a)(i), (ii) and (iv) and 17 [1983, p. 287 and 1994, p. 152];France, Articles 5(3) (concerning Article 5(1)(c)) and 16(1)(a)(iii) and (iv) [1987, p. 184];Germany, Articles 5(3) (concerning Article 5(1)(b)) and 16(1)(a)(iv) [1966, p. 237];Iceland, Articles 5(3) (concerning Article 5(1)(b)), 6(2) and 16(1)(a)(i), (ii), (iii) and (iv) [1994, p. 152];Ireland, Articles 5(3) (concerning Article 5(1)(b)), 6(2) and 16(1)(a)(ii) [1979, p. 218];Italy, Articles 6(2), 16(1)(a)(ii), (iii) and (iv), 16(1)(b) and 17 [1975, p. 44];Japan, Articles 5(3) (concerning Article 5(1)(c)) and 16(1)(a)(ii) and (iv) [1989, p. 288];Latvia, Article 16(1) [1999];Lesotho, Article 16(1)(a)(ii) and (1)(b) [1990, p. 95];Liechtenstein, Article 5(3) (concerning Article 5(1)(b)) and Article 16(1)(a)(iii) and (iv) (concerning Ar-ticle 12) [1999]Lithuania, Article 16(1)(a)(iii) [1999];Luxembourg, Articles 5(3) (concerning Article 5(1)(c)), 16(1)(a)(i) and 16(1)(b) [1976, p. 24];Monaco, Articles 5(3) (concerning Article 5(1)(c)), 16(1)(a)(i) and 16(1)(b) [1985, p. 422];Netherlands, Article 16(1)(a)(iii) and (iv) [1993, p. 253];Niger, Articles 5(3) (concerning Article 5(1)(c)) and 16(1)(a)(i) [1963, p. 155];Nigeria, Articles 5(3) (concerning Article 5(1)(c)), 6(2) and 16(1)(a)(ii), (iii) and (iv) [1993, p. 253];Norway, Articles 6(2) and 16(1)(a)(ii), (iii) and (iv) [1978, p. 133; in respect of 16(1)(a)(ii) modified: 1989,p. 288];Poland, Articles 5(3) (concerning Article 5(1)(c)), 6(2), 16(1)(a)(i), (iii) and (iv) and 16(1)(b) [1997 p. 170]Republic of Moldova, Articles 5(3) (concerning Article 5(1)(b)), 6(2), 16(1)(a)(ii), (iii) and (iv) [1996, p. 40];Romania, Articles 5(3), 6(2), 16(1)(a)(iii) and (iv) [1998, p. 54];Saint Lucia, Articles 5(3) (concerning Article 5(1)(c)) and 16(1)(a)(iii);Slovakia, Article 16(1)(a)(iii) and (iv) [1964, p. 110];Slovenia, Articles 5(3) (concerning Article 5(1)(c)) and 16(1)(a)(i) [1996, p. 318];Spain, Articles 5(3) (concerning Article 5(1)(c)), 6(2) and 16(1)(a)(iii) and (iv) [1991, p. 221];Sweden, Article 16(1)(a)(iv) [1962, p. 211; 1986, p. 382];Switzerland, Articles 5(3) (concerning Article 5(1)(b)) and 16(1)(a)(iii) and (iv) [1993, p. 254];The former Yugoslav Republic of Macedonia, Articles 5(3) (concerning Article 5(1)(c)) and 16(1)(a)(i) [1998,p. 42];United Kingdom, Articles 5(3) (concerning Article 5(1)(b)), 6(2) and 16(1)(a)(ii), (iii) and (iv) [1963,p. 244]; the same declarations were made for Gibraltar and Bermuda [1967, p. 36; 1970, p. 108].2Accession for the Kingdom in Europe.3The United Kingdom extended the application of the Rome Convention to the Isle of Man with effect fromJuly 28, 1999.

Appendix 457

457

A15. CONVENTION FOR THE PROTECTION OF

PRODUCERS OF PHONOGRAMS AGAINST

UNAUTHORIZED DUPLICATION OF THEIR

PHONOGRAMS OF OCTOBER 29, 1971

[GENEVA PHONOGRAMS CONVENTION]


concerned at the widespread and increasing unauthorized duplication of phonograms andthe damage this is occasioning to the interests of authors, performers and producers ofphonograms;

convinced that the protection of producers of phonograms against such acts will also ben-efit the performers whose performances, and the authors whose works, are recorded onthe said phonograms;

recognizing the value of the work undertaken in this field by the United Nations Educational,Scientific and Cultural Organization and the World Intellectual Property Organization;

anxious not to impair in any way international agreements already in force and in par-ticular in no way to prejudice wider acceptance of the Rome Convention of October 26,1961, which affords protection to performers and to broadcasting organizations as well asto producers of phonograms;

have agreed as follows:

article 1

For the purposes of this Convention:(a) “phonogram” means any exclusively aural fixation of sounds of a performance

or of other sounds;(b) “producer of phonograms” means the person who, or the legal entity which,

first fixes the sounds of a performance or other sounds;(c) “duplicate” means an article which contains sounds taken directly or indirectly

from a phonogram and which embodies all or a substantial part of the soundsfixed in that phonogram;

(d) “distribution to the public” means any act by which duplicates of a phonogramare offered, directly or indirectly, to the general public or any section thereof.

article 2

Each Contracting State shall protect producers of phonograms who are nationalsof other Contracting States against the making of duplicates without the consent ofthe producer and against the importation of such duplicates, provided that any suchmaking or importation is for the purpose of distribution to the public, and againstthe distribution of such duplicates to the public.

458 Appendix

article 3

The means by which this Convention is implemented shall be a matter for the domes-tic law of each Contracting State and shall include one or more of the following: pro-tection by means of the grant of a copyright or other specific right; protection by meansof the law relating to unfair competition; protection by means of penal sanctions.

article 4

The duration of the protection given shall be a matter for the domestic law of eachContracting State. However, if the domestic law prescribes a specific duration forthe protection, that duration shall not be less than twenty years from the end ei-ther of the year in which the sounds embodied in the phonogram were first fixed orof the year in which the phonogram was first published.

article 5

If, as a condition of protecting the producers of phonograms, a Contracting State,under its domestic law, requires compliance with formalities, these shall be consid-ered as fulfilled if all the authorized duplicates of the phonogram distributed to thepublic or their containers bear a notice consisting of the symbol P, accompaniedby the year date of the first publication, placed in such manner as to give reason-able notice of claim of protection; and, if the duplicates or their containers do notidentify the producer, his successor in title or the exclusive licensee (by carrying hisname, trademark or other appropriate designation), the notice shall also include thename of the producer, his successor in title or the exclusive licensee.

article 6

Any Contracting State which affords protection by means of copyright or other spe-cific right, or protection by means of penal sanctions, may in its domestic law pro-vide, with regard to the protection of producers of phonograms, the same kinds oflimitations as are permitted with respect to the protection of authors of literary andartistic works. However, no compulsory licenses may be permitted unless all of thefollowing conditions are met:(a) the duplication is for use solely for the purpose of teaching or scientific research;(b) the license shall be valid for duplication only within the territory of the Con-

tracting State whose competent authority has granted the license and shall notextend to the export of duplicates;

(c) the duplication made under the license gives rise to an equitable remunerationfixed by the said authority taking into account, inter alia, the number of dupli-cates which will be made.

article 7

(1) This Convention shall in no way be interpreted to limit or prejudice the protectionotherwise secured to authors, to performers, to producers of phonograms or tobroadcasting organizations under any domestic law or international agreement.

(2) It shall be a matter for the domestic law of each Contracting State to determinethe extent, if any, to which performers whose performances are fixed in a pho-

Appendix 459

nogram are entitled to enjoy protection and the conditions for enjoying any suchprotection.

(3) No Contracting State shall be required to apply the provisions of this Conven-tion to any phonogram fixed before this Convention entered into force with re-spect to that State.

(4) Any Contracting State which, on October 29, 1971, affords protection to pro-ducers of phonograms solely on the basis of the place of first fixation may, by anotification deposited with the Director General of the World Intellectual Prop-erty Organization, declare that it will apply this criterion instead of the crite-rion of the nationality of the producer.

article 8

(1) The International Bureau of the World Intellectual Property Organization shallassemble and publish information concerning the protection of phonograms.Each Contracting State shall promptly communicate to the International Bu-reau all new laws and official texts on this subject.

(2) The International Bureau shall, on request, furnish information to any Con-tracting State on matters concerning this Convention, and shall conduct stud-ies and provide services designed to facilitate the protection provided for therein.

(3) The International Bureau shall exercise the functions enumerated in paragraph(1) and paragraph (2) above in cooperation, for matters within their respectivecompetence, with the United Nations Educational, Scientific and Cultural Or-ganization and the International Labour Organisation.

article 9

(1) This Convention shall be deposited with the Secretary-General of the UnitedNations. It shall be open until April 30, 1972, for signature by any State that isa member of the United Nations, any of the Specialized Agencies brought intorelationship with the United Nations, or the International Atomic Energy Agency,or is a party to the Statute of the International Court of Justice.

(2) This Convention shall be subject to ratification or acceptance by the signatoryStates. It shall be open for accession by any State referred to in paragraph (1) ofthis Article.

(3) Instruments of ratification, acceptance or accession shall be deposited with theSecretary-General of the United Nations.

(4) It is understood that, at the time a State becomes bound by this Convention, itwill be in a position in accordance with its domestic law to give effect to the pro-visions of the Convention.

article 10

No reservations to this Convention are permitted.

article 11

(1) This Convention shall enter into force three months after deposit of the fifthinstrument of ratification, acceptance or accession.

460 Appendix

(2) For each State ratifying, accepting or acceding to this Convention after the de-posit of the fifth instrument of ratification, acceptance or accession, the Con-vention shall enter into force three months after the date on which the Director-General of the World Intellectual Property Organization informs the States, inaccordance with Article 13(4), of the deposit of its instrument.

(3) Any State may, at the time of ratification, acceptance or accession or at any laterdate, declare by notification addressed to the Secretary-General of the UnitedNations that this Convention shall apply to all or any one of the territories forwhose international affairs it is responsible. This notification will take effectthree months after the date on which it is received.

(4) However, the preceding paragraph may in no way be understood as implyingthe recognition or tacit acceptance by a Contracting State of the factual situa-tion concerning a territory to which this Convention is made applicable by an-other Contracting State by virtue of the said paragraph.

article 12

(1) Any Contracting State may denounce this Convention, on its own behalf or onbehalf of any of the territories referred to in Article 11(3), by written notifica-tion addressed to the Secretary-General of the United Nations.

(2) Denunciation shall take effect twelve months after the date on which the Sec-retary-General of the United Nations has received the notification.

article 13

(1) This Convention shall be signed in a single copy in English, French, Russian andSpanish, the four texts being equally authentic.

(2) Official texts shall be established by the Director General of the World Intellec-tual Property Organization, after consultation with the interested Governments,in the Arabic, Dutch, German, Italian and Portuguese languages.

(3) The Secretary-General of the United Nations shall notify the Director-Generalof the World Intellectual Property Organization, the Director-General of theUnited Nations Educational, Scientific and Cultural Organization and theDirector-General of the International Labour Office of:(a) signatures to this Convention;(b) the deposit of instruments of ratification, acceptance or accession;(c) the date of entry into force of this Convention;(d) any declaration notified pursuant to Article 11(3);(e) the receipt of notifications of denunciation.

(4) The Director General of the World Intellectual Property Organization shall in-form the States referred to in Article 9(1), of the notifications received pursu-ant to the preceding paragraph and of any declarations made under Article 7(4).He shall also notify the Director-General of the United Nations Educational,Scientific and Cultural Organization and the Director-General of the Interna-tional Labour Office of such declarations.

(5) The Secretary-General of the United Nations shall transmit two certified copiesof this Convention to the States referred to in Article 9(1).

Appendix 461

461

A16. PARTIES TO THE CONVENTION FOR THE PROTECTION OF

PRODUCERS OF PHONOGRAMS AGAINST UNAUTHORIZED

DUPLICATION OF THEIR PHONOGRAMS*

[GENEVA PHONOGRAMS CONVENTION, 1971]

Status on September 21, 1999

Argentina ...................... June 30, 1973Australia ....................... June 22, 1974Austria .......................... August 21, 1982Barbados ....................... July 29, 1983Brazil ............................. November 28, 1975Bulgaria ......................... September 6, 1995Burkina Faso ................. January 30, 1988Chile ............................... March 24, 1977China1 ............................ April 30, 1993Colombia ....................... May 16, 1994Costa Rica ..................... June 17, 1982Cyprus ........................... September 30, 1993Czech Republic .............. January 1, 1993Democratic Republic

of the Congo .............. November 29, 1977Denmark ....................... March 24, 1977Ecuador ......................... September 14, 1974Egypt .............................. April 23, 1978El Salvador .................... February 9, 1979Fiji .................................. April 18, 1973Finland2 ........................ April 18, 1973France ........................... April 18, 1973Germany ....................... May 18, 1974Greece ............................ February 9, 1994Guatemala ..................... February 1, 1977Holy See ......................... July 18, 1977Honduras ...................... March 6, 1990Hungary ........................ May 28, 1975India .............................. February 12, 1975Israel .............................. May 1, 1978Italy2 .............................. March 24, 1977


Date on which State Date on which Statebecame party to the became party to the

State Convention State Convention

Jamaica ......................... January 11, 1994Japan ............................. October 14, 1978Kenya ............................ April 21, 1976Latvia ............................. August 23, 1997Liechtenstein ................. October 12, 1999Luxembourg .................. March 8, 1976Mexico ........................... December 21, 1973Monaco ......................... December 2, 1974Netherlands3 ............... October 12, 1993New Zealand ................. August 13, 1976Norway .......................... August 1, 1978Panama ......................... June 29, 1974Paraguay ....................... February 13, 1979Peru ............................... August 24, 1985Republic of Korea .......... October 10, 1987Romania ........................ October 1, 1998Russian Federation ....... March 13, 1995Slovakia ......................... January 1, 1993Slovenia ......................... October 15, 1996Spain .............................. August 24, 1974Sweden .......................... April 18, 1973Switzerland ................... September 30, 1993The former

Yugoslav Republicof Macedonia ............. March 2, 1998

Trinidad and Tobago .... October 1, 1988United Kingdom ............ April 18, 1973United States

of America ................. March 10, 1974Uruguay ........................ January 18, 1983Venezuela ...................... November 18, 1982

(Total: 58 States)

1The Phonograms Convention applies also to the Hong Kong Special Administrative Region with effect fromJuly 1, 1997.2This State has declared, in accordance with Article 7(4) of the Convention, that it will apply the criterion accord-ing to which it affords protection to producers of phonograms solely on the basis of the place of first fixation in-stead of the criterion of the nationality of the producer.3Accession for the Kingdom in Europe.

462 Appendix

462

A17. CONVENTION RELATING TO THE DISTRIBUTION

OF PROGRAMME-CARRYING SIGNALS TRANSMITTED

BY SATELLITE [BRUSSELS SATELLITE CONVENTION]

[Done at Brussels on May 21, 1974]


Aware that the use of satellites for the distribution of programme-carrying signals is rap-idly growing both in volume and geographical coverage;

Concerned that there is no world-wide system to prevent distributors from distributingprogramme-carrying signals transmitted by satellite which were not intended for thosedistributors, and that this lack is likely to hamper the use of satellite communications;

Recognizing, in this respect, the importance of the interests of authors, performers, pro-ducers of phonograms and broadcasting organizations;

Convinced that an international system should be established under which measures wouldbe provided to prevent distributors from distributing programme-carrying signals trans-mitted by satellite which were not intended for those distributors;

Conscious of the need not to impair in any way international agreements already in force,including the International Telecommunication Convention and the Radio Regulationsannexed to that Convention, and in particular in no way to prejudice wider acceptance ofthe Rome Convention of October 26, 1961, which affords protection to performers, pro-ducers of phonograms and broadcasting organizations,


article 1

For the purposes of this Convention:(i) “signal” is an electronically generated carrier capable of transmitting

programmes;(ii) “programme” is a body of live or recorded material consisting of images, sounds

or both, embodied in signals emitted for the purpose of ultimate distribution;(iii) “satellite” is any device in extraterrestrial space capable of transmitting signals;(iv) “emitted signal” or “signal emitted” is any programme-carrying signal that

goes to or passes through a satellite;(v) “derived signal” is a signal obtained by modifying the technical characteris-

tics of the emitted signal, whether or not there have been one or more inter-vening fixations;

(vi) “originating organization” is the person or legal entity that decides whatprogramme the emitted signals will carry;

(vii) “distributor” is the person or legal entity that decides that the transmission ofthe derived signals to the general public or any section thereof should take place;

Appendix 463

(viii) “distribution” is the operation by which a distributor transmits derived sig-nals to the general public or any section thereof.

article 2

(1) Each Contracting State undertakes to take adequate measures to prevent thedistribution on or from its territory of any programme-carrying signal by anydistributor for whom the signal emitted to or passing through the satellite is notintended. This obligation shall apply where the originating organization is anational of another Contracting State and where the signal distributed is aderived signal.

(2) In any Contracting State in which the application of the measures referred toin paragraph (1) is limited in time, the duration thereof shall be fixed by its do-mestic law. The Secretary-General of the United Nations shall be notified inwriting of such duration at the time of ratification, acceptance or accession, orif the domestic law comes into force or is changed thereafter, within six monthsof the coming into force of that law or of its modification.

(3) The obligation provided for in paragraph (1) shall not apply to the distributionof derived signals taken from signals which have already been distributed by adistributor for whom the emitted signals were intended.

article 3

This Convention shall not apply where the signals emitted by or on behalf of theoriginating organization are intended for direct reception from the satellite by thegeneral public.

article 4

No Contracting State shall be required to apply the measures referred to in Article2(1) where the signal distributed on its territory by a distributor for whom the emit-ted signal is not intended

(i) carries short excerpts of the programme carried by the emitted signal, consist-ing of reports of current events, but only to the extent justified by the informa-tory purpose of such excerpts, or

(ii) carries, as quotations, short excerpts of the programme carried by the emittedsignal, provided that such quotations are compatible with fair practice and arejustified by the informatory purpose of such quotations, or

(iii) carries, where the said territory is that of a Contracting State regarded as adeveloping country in conformity with the established practice of the GeneralAssembly of the United Nations, a programme carried by the emitted signal,provided that the distribution is solely for the purpose of teaching, includingteaching in the framework of adult education, or scientific research.

article 5

No Contracting State shall be required to apply this Convention with respect to anysignal emitted before this Convention entered into force for that State.

464 Appendix

article 6

This Convention shall in no way be interpreted to limit or prejudice the protectionsecured to authors, performers, producers of phonograms, or broadcasting organi-zations, under any domestic law or international agreement.

article 7

This Convention shall in no way be interpreted as limiting the right of any Contract-ing State to apply its domestic law in order to prevent abuses of monopoly.

article 8

(1) Subject to paragraph (2) and paragraph (3), no reservation to this Conventionshall be permitted.

(2) Any Contracting State whose domestic law, on May 21, 1974, so provides may,by a written notification deposited with the Secretary-General of the United Na-tions, declare that, for its purposes, the words “where the originating organi-zation is a national of another Contracting State” appearing in Article 2(1) shallbe considered as if they were replaced by the words “where the signal is emit-ted from the territory of another Contracting State.”

(3) (a) Any Contracting State which, on May 21, 1974, limits or denies protectionwith respect to the distribution of programme-carrying signals by meansof wires, cable or other similar communications channels to subscribingmembers of the public may, by a written notification deposited with theSecretary-General of the United Nations, declare that, to the extent that andas long as its domestic law limits or denies protection, it will not apply thisConvention to such distributions.

(b) Any State that has deposited a notification in notify the States referred to inArticle 9(1), as well as the accordance with subparagraph (a) shall notifythe Secretary-General of the United Nations in writing, within six monthsof their coming into force, of any changes in its domestic law whereby thereservation under that subparagraph becomes inapplicable or more limitedin scope.

article 9

(1) This Convention shall be deposited with the Secretary-General of the UnitedNations. It shall be open until March 31, 1975, for signature by any State thatis a member of the United Nations, any of the Specialized Agencies brought intorelationship with the United Nations, or the International Atomic Energy Agency,or is a party to the Statute of the International Court of Justice.

(2) This Convention shall be subject to ratification or acceptance by the signatoryStates. It shall be open for accession by any State referred to in paragraph (1).

(3) Instruments of ratification, acceptance or accession shall be deposited with theSecretary-General of the United Nations.

(4) It is understood that, at the time a State becomes bound by this Convention, itwill be in a position in accordance with its domestic law to give effect to the pro-visions of the Convention.

Appendix 465

article 10

(1) This Convention shall enter into force three months after the deposit of the fifthinstrument of ratification, acceptance or accession.

(2) For each State ratifying, accepting or acceding to this Convention after the de-posit of the fifth instrument of ratification, acceptance or accession, this Con-vention shall enter into force three months after the deposit of its instrument.

article 11

(1) Any Contracting State may denounce this Convention by written notificationdeposited with the Secretary-General of the United Nations.

(2) Denunciation shall take effect twelve months after the date on which the noti-fication referred to in paragraph (1) is received.

article 12

(1) This Convention shall be signed in a single copy in English, French, Russian andSpanish, the four texts being equally authentic.

(2) Official texts shall be established by the Director-General of the United NationsEducational, Scientific and Cultural Organization and the Director General ofthe World Intellectual Property Organization, after consultation with the in-terested Governments, in the Arabic, Dutch, German, Italian and Portugueselanguages.

(3) The Secretary-General of the United Nations shall notify the States referred toin Article 9(1), as well as the Director-General of the United Nations Edu-cational, Scientific and Cultural Organization, the Director General of the WorldIntellectual Property Organization, the Director-General of the InternationalLabour Office and the Secretary-General of the International Telecommunica-tion Union, of

(i) signatures to this Convention;(ii) the deposit of instruments of ratification, acceptance or accession;

(iii) the date of entry into force of this Convention under Article 10(1);(iv) the deposit of any notification relating to Article 2(2), Article 8(2) or

Article 8(3), together with its text;(v) the receipt of notifications of denunciation.

(4) The Secretary-General of the United Nations shall transmit two certified copiesof this Convention to all States referred to in Article 9(1).

466

A18. PARTIES TO THE CONVENTION RELATING TO

THE DISTRIBUTION OF PROGRAMME-CARRYING

SIGNALS TRANSMITTED BY SATELLITE*

[BRUSSELS SATELLITE CONVENTION, 1974]

Status on May 25, 1998


Date on which State Date on which Statebecame party to became party to

State the Convention State the Convention

Armenia ........................ December 13, 1993Australia ....................... October 26, 1990Austria .......................... August 6, 1982Bosnia and

Herzegovina .............. March 6, 1992Croatia ........................... October 8, 1991Germany1 ...................... August 25, 1979Greece ............................ October 22, 1991Italy1 .............................. July 7, 1981Kenya ............................ August 25, 1979Mexico ........................... August 25, 1979Morocco ........................ June 30, 1983Nicaragua ..................... August 25, 1979

Panama ......................... September 25, 1985Peru ............................... August 7, 1985Portugal ........................ March 11, 1996Russian Federation ....... January 20, 19892

Slovenia ......................... June 25, 1991Switzerland ................... September 24, 1993The former

Yugoslav Republic of Macedonia ............ November 17, 1991

Trinidad and Tobago3 .. November 1, 1996United States

of America ................. March 7, 1985Yugoslavia .................... August 25, 1979

(Total: 22 States)

1With a declaration, pursuant to Article 2(2) of the Convention, that the protection accorded under Article 2(1) isrestricted in its territory to a period of 25 years after the expiry of the calendar year in which the transmission bysatellite has occurred.2Date of accession by the Soviet Union, continued by the Russian Federation as from December 25, 1991.3With a declaration, pursuant to Article 2(2) of the Convention, that the protection accorded under Article 2(1) isrestricted in its territory to a period of 20 years after the expiry of the calendar year in which the transmission bysatellite has occurred.

467

A19. TREATY ON THE INTERNATIONAL REGISTRATION

OF AUDIOVISUAL WORKS [AND REGULATIONS]

[Adopted at Geneva, April 18, 1989]

Contents

PreambleChapter I: Substantive Provisions

Article 1: Establishment of the UnionArticle 2: “Audiovisual Work”Article 3: The International RegisterArticle 4: Legal Effect of the International Register

Chapter II: Administrative ProvisionsArticle 5: AssemblyArticle 6: International BureauArticle 7: FinancesArticle 8: Regulations

Chapter III: Revision and AmendmentArticle 9: Revision of the TreatyArticle 10: Amendment of Certain Provisions of the Treaty

Chapter IV: Final ProvisionsArticle 11: Becoming Party to the TreatyArticle 12: Entry Into Force of the TreatyArticle 13: Reservations to the TreatyArticle 14: Denunciation of the TreatyArticle 15: Signature and Languages of the TreatyArticle 16: Depositary FunctionsArticle 17: Notifications

The Contracting States

Desirous to increase the legal security in transactions relating to audiovisual worksand thereby

to enhance the creation of audiovisual works and the international flow of suchworks and

to contribute to the fight against piracy of audiovisual works and contributionscontained therein;


468 Appendix

Chapter I: Substantive Provisions

article 1establishment of the union

States party to this Treaty (hereinafter called “the Contracting States”) constitute aUnion for the international registration of audiovisual works (hereinafter referredto as “the Union”).

article 2“audiovisual work”

For the purposes of this Treaty, “audiovisual work” means any work that consistsof a series of fixed related images, with or without accompanying sound, suscep-tible of being made visible and, where accompanied by sound, susceptible of beingmade audible.

article 3the international register

(1) The International Register of Audiovisual Works (hereinafter referred to as “theInternational Register”) is hereby established for the purpose of the registra-tion of statements concerning audiovisual works and rights in such works, in-cluding, in particular, rights relating to their exploitation.

(2) The International Registry of Audiovisual Works (hereinafter referred to as “theInternational Registry”) is hereby set up for the purpose of keeping the Inter-national Register. It is an administrative unit of the International Bureau of theWorld Intellectual Property Organization (hereinafter referred to as “the Inter-national Bureau” and “the Organization,” respectively).

(3) The International Registry shall be located in Austria as long as a treaty to thateffect between the Republic of Austria and the Organization is in force. Other-wise, it shall be located in Geneva.

(4) The registration of any statement in the International Register shall be basedon an application filed to this effect, with the prescribed contents, in the pre-scribed form and subject to the payment of the prescribed fee, by a natural per-son or legal entity entitled to file an application.

(5) (a) Subject to subparagraph (b), the following shall be entitled to file an application:(i) any natural person who is a national of, is domiciled in, has his habitual

residence in, or has a real and effective industrial or commercial estab-lishment in, a Contracting State;

(ii) any legal entity which is organized under the laws of, or has a realand effective industrial or commercial establishment in, a ContractingState.

(b) If the application concerns a registration already effected, it may also be filedby a natural person or legal entity not satisfying the conditions referred toin subparagraph (a).

Appendix 469

article 4legal effect of the international register

(1) Each Contracting State undertakes to recognize that a statement recorded in theInternational Register shall be considered as true until the contrary is proved,except(i) where the statement cannot be valid under the copyright law, or any other

law concerning intellectual property rights in audiovisual works, of thatState, or

(ii) where the statement is contradicted by another statement recorded in theInternational Register.

(2) No provision of this Treaty shall be interpreted as affecting the copyright law,or any other law concerning intellectual property rights in audiovisual works,of any Contracting State or, if that State is party to the Berne Convention forthe Protection of Literary and Artistic Works or any other treaty concerningintellectual property rights in audiovisual works, the rights and obligations ofthe said State under the said Convention or treaty.

Chapter II: Administrative Provisions

article 5assembly

(1) (a) The Union shall have an Assembly that shall consist of the ContractingStates.

(b) The Government of each Contracting State shall be represented by onedelegate, who may be assisted by alternate delegates, advisors and experts.

(2) The expenses of each delegation shall be borne by the Government which hasappointed it, except for the travel expenses and the subsistence allowance of onedelegate for each Contracting State, which shall be paid from the funds of theUnion.

(3) (a) The Assembly shall:(i) deal with all matters concerning the maintenance and development

of the Union and the implementation of this Treaty;(ii) exercise such tasks as are specially assigned to it under this Treaty;

(iii) give directions to the Director General of the Organization (herein-after referred to as “the Director General”), concerning the prepara-tion for revision conferences;

(iv) review and approve the reports and activities of the Director Generalconcerning the Union, and give him all necessary instructions con-cerning matters within the competence of the Union;

(v) determine the program and adopt the biennial budget of the Union,and approve its final accounts;

(vi) adopt the financial regulations of the Union;(vii) establish, and decide from time to time the membership of, a consul-

tative committee consisting of representatives of interested non-governmental organizations and such other committees and working

470 Appendix

groups as it deems appropriate to facilitate the work of the Union andof its organs;

(viii) control the system and amounts of the fees determined by the DirectorGeneral;

(ix) determine which States other than Contracting States and which inter-governmental and non-governmental organizations shall be admittedto its meetings as observers;

(x) take any other appropriate action designed to further the objectives ofthe Union and perform such other functions as are appropriate underthis Treaty.

(b) With respect to matters which are of interest also to other Unions ad-ministered by the Organization, the Assembly shall make its decisionsafter having heard the advice of the Coordination Committee of theOrganization.

(4) A delegate may represent, and vote in the name of, one State only.(5) Each Contracting State shall have one vote.(6) (a) One-half of the Contracting States shall constitute a quorum.

(b) In the absence of the quorum, the Assembly may make decisions but, withthe exception of the decisions concerning its own procedure, all such deci-sions shall take effect only if the quorum and the required majority are at-tained through voting by correspondence.

(7) (a) Subject to Article 8(2)(b) and Article 10(2)(b), the decisions of the Assem-bly shall require a majority of the votes cast.

(b) Abstentions shall not be considered as votes.(8) (a) The Assembly shall meet once in every second calendar year in ordinary

session upon convocation by the Director General and, in the absence of ex-ceptional circumstances, during the same period and at the same place asthe General Assembly of the Organization.

(b) The Assembly shall meet in extraordinary session upon convocation by theDirector General, either at the request of one-fourth of the Contracting Statesor on the Director General’s own initiative.

(9) The Assembly shall adopt its own rules of procedure.


(1) The International Bureau shall:(i) perform, through the International Registry, all the tasks related to the

keeping of the International Register;(ii) provide the secretariat of revision conferences, of the Assembly, of the com-

mittees and working groups established by the Assembly, and of any othermeeting convened by the Director General and dealing with matters of con-cern to the Union;

(iii) perform all other tasks specially assigned to it under this Treaty and theRegulations referred to in Article 8 or by the Assembly.

(2) The Director General shall be the chief executive of the Union and shall repre-sent the Union.

(3) The Director General shall convene any committee and working group estab-lished by the Assembly and all other meetings dealing with matters of concernto the Union.

Appendix 471

(4) (a) The Director General and any staff member designated by him shall partici-pate, without the right to vote, in all meetings of the Assembly, the committeesand working groups established by the Assembly, and any other meeting con-vened by the Director General and dealing with matters of concern to theUnion.

(b) The Director General or a staff member designated by him shall be ex officiosecretary of the Assembly, and of the committees, working groups and othermeetings referred to in subparagraph (a).

(5) (a) The Director General shall, in accordance with the directions of the Assem-bly, make the preparations for revision conferences.

(b) The Director General may consult with intergovernmental and non-govern-mental organizations concerning the said preparations.

(c) The Director General and staff members designated by him shall take part,without the right to vote, in the discussions at revision conferences.

(d) The Director General or a staff member designated by him shall be ex officiosecretary of any revision conference.

article 7finances

(1) (a) The Union shall have a budget.(b) The budget of the Union shall include the income and expenses proper to

the Union, and its contribution to the budget of expenses common to theUnions administered by the Organization.

(c) Expenses not attributable exclusively to the Union but also to one or moreother Unions administered by the Organization shall be considered as ex-penses common to the Unions. The share of the Union in such commonexpenses shall be in proportion to the interest the Union has in them.

(2) The budget of the Union shall be established with due regard to the require-ments of coordination with the budgets of the other Unions administered bythe Organization.

(3) The budget of the Union shall be financed from the following sources:(i) fees due for registrations and other services rendered by the International

Registry;(ii) sale of, or royalties on, the publications of the International Registry;

(iii) donations, particularly by associations of rights holders in audiovisual works;(iv) gifts, bequests, and subventions;(v) rents, interests, and other miscellaneous income.

(4) The amounts of fees due to the International Registry and the prices of its publi-cations shall be so fixed that they, together with any other income, should be suffi-cient to cover the expenses connected with the administration of this Treaty.

(5) If the budget is not adopted before the beginning of a new financial period, itshall be at the same level as the budget of the previous period, as provided inthe financial regulations. If the income exceeds the expenses, the difference shallbe credited to a reserve fund.

(6) The Union shall have a working capital fund which shall be constituted fromthe income of the Union.

(7) The auditing of the accounts shall be effected by one or more of the Contract-ing States or by external auditors, as provided in the financial regulations. Theyshall be designated, with their agreement, by the Assembly.

472 Appendix

article 8regulations

(1) The Regulations adopted at the same time as this Treaty are annexed to thisTreaty.

(2) (a) The Assembly may amend the Regulations.(b) Any amendment of the Regulations shall require two-thirds of the votes cast.

(3) In the case of conflict between the provisions of this Treaty and those of theRegulations, the former shall prevail.

(4) The Regulations provide for the establishment of Administrative Instructions.

Chapter III: Revision and Amendment

article 9revision of the treaty

(1) This Treaty may be revised by a conference of the Contracting States.(2) The convocation of any revision conference shall be decided by the Assembly.(3) The provisions referred to in Article 10(1)(a) may be amended either by a revi-

sion conference or according to Article 10.

article 10amendment of certain provisions of the treaty

(1) (a) Proposals for the amendment of Article 5(6) and (8), Article 6(4) and (5) andArticle 7(1) to (3) and (5) to (7) may be initiated by any Contracting State orby the Director General.

(b) Such proposals shall be communicated by the Director General to the Con-tracting States at least six months in advance of their consideration by theAssembly.

(2) (a) Amendments to the provisions referred to in paragraph (1) shall be adoptedby the Assembly.

(b) Adoption shall require three-fourths of the votes cast.(3) (a) Any amendment to the provisions referred to in paragraph (1) shall enter

into force one month after written notifications of acceptance, effected inaccordance with their respective constitutional processes, have beenreceived by the Director General from three-fourths of the ContractingStates members of the Assembly at the time the Assembly adopted theamendment.

(b) Any amendment to the said Articles thus accepted shall bind all the Con-tracting States which were Contracting States at the time the amendmentwas adopted by the Assembly.

(c) Any amendment which has been accepted and which has entered into forcein accordance with subparagraph (a) shall bind all States which becomeContracting States after the date on which the amendment was adopted bythe Assembly.

Appendix 473

Chapter IV: Final Provisions

article 11becoming party to the treaty

(1) Any State member of the Organization may become party to this Treaty by:(i) signature followed by the deposit of an instrument of ratification, acceptance

or approval, or(ii) the deposit of an instrument of accession.

(2) The instruments referred to in paragraph (1) shall be deposited with the Direc-tor General.


(1) This Treaty shall enter into force, with respect to the first five States which havedeposited their instruments of ratification, acceptance, approval or accession,three months after the date on which the fifth instrument of ratification, accep-tance, approval or accession has been deposited.

(2) This Treaty shall enter into force with respect to any State not covered by para-graph (1) three months after the date on which that State has deposited its in-strument of ratification, acceptance, approval or accession unless a later datehas been indicated in the instrument of ratification, acceptance, approval oraccession. In the latter case, this Treaty shall enter into force with respect tothe said State on the date thus indicated.

article 13relations to the treaty

(1) Subject to paragraph (2), no reservation may be made to this Treaty.(2) Any State, upon becoming party to this Treaty, may, in a notification depos-

ited with the Director General, declare that it will not apply the provisions ofArticle 4(1) in respect of statements which do not concern the exploitation ofintellectual property rights in audiovisual works. Any State that has made sucha declaration may, by a notification deposited with the Director General, with-draw it.


(1) Any Contracting State may denounce this Treaty by notification addressed tothe Director General.

(2) Denunciation shall take effect one year after the day on which the DirectorGeneral has received the notification.

(3) The right of denouncing this Treaty provided for in paragraph (1) shall not beexercised by any Contracting State before the expiration of five years from thedate on which this Treaty enters into force with respect to it.

474 Appendix

article 15signature and languages of the treaty

(1) This Treaty shall be signed in a single original in the English and French lan-guages, both texts being equally authentic.

(2) Official texts shall be established by the Director General, after consultation withthe interested Governments, in the Arabic, German, Italian, Japanese, Portu-guese, Russian and Spanish languages, and such other languages as the As-sembly may designate.

(3) This Treaty shall remain open for signature at the International Bureau untilDecember 31, 1989.

article 16depositary functions

(1) The original of this Treaty and the Regulations shall be deposited with theDirector General.

(2) The Director General shall transmit two copies, certified by him, of this Treatyand the Regulations, to the Governments of States entitled to sign this Treaty.

(3) The Director General shall register this Treaty with the Secretariat of the UnitedNations.

(4) The Director General shall transmit two copies, certified by him, of any amend-ment to this Treaty and the Regulations to the Governments of the ContractingStates and, on request, to the Government of any other State.

article 17notifications

The Director General shall notify the Governments of the States members of theOrganization of any of the events referred to in Articles 8(2), 10(2) and (3), 11, 12,13 and 14.

Regulations under the Treaty on the InternationalRegistration of Audiovisual Works

Contents

Rule 1: DefinitionsRule 2: ApplicationRule 3: Processing of the ApplicationRule 4: Date and Number of the RegistrationRule 5: RegistrationRule 6: The GazetteRule 7: InquiriesRule 8: FeesRule 9: Administrative Instructions

Appendix 475

rule 1definitions

For the purposes of these Regulations,(i) “Treaty” means the Treaty on the International Registration of Audiovisual

Works;(ii) “International Register” means the International Register of Audiovisual

Works established by the Treaty;(iii) “International Registry” means the administrative unit of the International

Bureau that keeps the International Register;(iv) “work” means audiovisual work;(v) “work-related application” means an application that identifies an existing or

future work at least by its title or titles and requests that statements in respectof the interest of an identified person or identified persons in or concerningthat work be registered in the International Register; “work-related registra-tion” means a registration effected pursuant to a work-related application;

(vi) “person-related application” means an application that requests that state-ments in respect of the interest of the applicant, or of a third person identifiedin the application, in or concerning one or more existing or future work orworks, described but not identified by its or their title or titles, be registered inthe International Register; “person-related registration” means a registrationeffected pursuant to a person-related application. A work shall be consideredas being described when, in particular, the person who or legal entity whichhas made, or is expected to make, the work is identified;

(vii) “application” or “registration”—unless qualified as “work-related” or “person-related”—means both a work-related and a person-related application orregistration;

(viii) “applicant” means the natural person who or the legal entity which filed theapplication; “holder of the registration” means the applicant once the appli-cation has been registered;

(ix) “prescribed” means as prescribed in the Treaty, in these Regulations or in theAdministrative Instructions;

(x) “Consultative Committee” means the consultative committee referred to inArticle 5(3)(a)(vii) of the Treaty.

rule 2application

(1) Any application shall be filed by using the appropriate prescribed form.(2) Any application shall be in the English language or in the French language. As

soon as the International Register is financially self-supporting, the Assemblymay determine the other languages in which applications may be filed.

(3) Any application shall indicate, as prescribed, the name and address of theapplicant

(4) Where an application refers to a person or legal entity other than the applicant,the application shall indicate, as prescribed, the name and address of such per-son or legal entity.

(5) Any work-related application shall indicate at least the title or titles of thework. When a title is in a language other than English or French or in a script

476 Appendix

other than the Latin script, it shall be accompanied by a literal translation intoEnglish or a transliteration into Latin script, as the case may be.(b) Any person-related application shall describe the work.

(6) When the application relates to a work which is the subject matter of an exist-ing work-related registration, or to a work which is described in an existingperson-related registration, the said application shall, whenever possible, indi-cate the registration number of the said registration. If the International Regis-try finds that such an indication would be possible but was not given in theapplication, it may, itself, indicate such number in the registration, subject tonoting in the International Register that the indication comes from the Inter-national Registry rather than the applicant.

(7) (a) In any work-related application, the application shall indicate the interestof the applicant in or concerning the work, whether existing or future.Where the interest consists of a right of exploitation of the work, the na-ture of the right and the territory for which the right belongs to the appli-cant shall also be indicated.

(b) In any person-related application, the application shall indicate the inter-est of the applicant in or concerning the described, existing or future, workor works, in particular any right that limits or negates, for the benefit of theapplicant or another person, the right of exploitation of the work or works.

(c) Where the interest is limited in time, the application may express such alimit.

(8) Where a work-related application concerns a right in the work, the applicationshall indicate, where the right originally vested in the applicant, that fact, or,where the right is derived from a natural person or legal entity other than theapplicant, the name and address of such person or entity and the legal cause ofthe derivation.

(9) (a) Any application may be accompanied by documents supporting the state-ments contained in the application. Any such document in a language otherthan English or French shall be accompanied, in English, by an indicationof the nature and essence of the document; otherwise, the InternationalRegistry shall treat the document as if it had not been attached.

(b) Any application may be accompanied by material, other than documents,susceptible of identifying the work.

(10) The application shall contain a statement to the effect that the statementscontained therein are, to the knowledge of the applicant, true, and that anyaccompanying document is an original or is a true copy of an original.

(11) The application shall be signed by the applicant or by his representative ap-pointed as provided in paragraph (12).

(12) (a) Any applicant or holder of the registration may be represented by a repre-sentative who may be appointed in the application, in a separate power ofattorney relating to a specific application or registration, or in a generalpower of attorney, signed by the applicant or holder of the registration.

(b) A general power of attorney enables the representative to represent theapplicant or holder of the registration in connection with all the appli-cations or registrations of the person having given the general power ofattorney.

(c) Any appointment of a representative shall be in force until it is revoked ina communication signed by the person who made the appointment andaddressed to the International Registry or until it is renounced by the rep-

Appendix 477

resentative in a communication signed by the representative and addressedto the International Registry.

(d) The International Registry shall address to the representative any com-munication intended for the applicant or holder of the registration underthese Regulations; any communication so addressed to the representativeshall have the same effect as if it had been addressed to the applicant orholder of the registration. Any communication addressed to the Interna-tional Registry by the representative shall have the same effect as if it hadoriginated with the applicant or holder of the registration.

(13) For each application, the applicant shall pay the prescribed fee, which mustreach the International Registry not later than the day on which the applica-tion is received by the International Registry. If the fee reaches the Interna-tional Registry within 30 days from the date on which the application wasactually received by the International Registry, the application shall be con-sidered as having been received by the International Registry on the date onwhich the fee reaches the International Registry.

rule 3application

(1) If the International Registry notices what it believes to be an inadvertent omis-sion, two or more statements conflicting with each other, a mistake of transcrip-tion, or another obvious error, in the application, it shall invite the applicant tocorrect the application. Any correction by the applicant must, in order to betaken into consideration, reach the International Registry within 30 days fromthe date of the invitation to correct the application.

(2) (a) Where, in the opinion of the International Registry, any statement containedin an application is in contradiction to any statement that, on the basis of anearlier application, is the subject matter of an existing registration in the In-ternational Register, the International Registry shall immediately,(i) where the applicant is also the holder of the existing registration, send

him a notification asking him whether he wishes to either modify thestatement contained in the application or apply for the modification ofthe statement that is subject matter of the existing registration,

(ii) where the applicant and the holder of the existing registration arenot the same, send a notification to the applicant asking him whetherhe wishes to modify the statement contained in the application and,at the same time, send a notification to the holder of the existingregistration asking the said holder whether—in case the applicantdoes not wish to modify the statement appearing in the application—he wishes to apply for the modification of the statement in the existingregistration.

The registration of the application shall be suspended until a modificationis submitted that, in the opinion of the International Registry, removesthe contradiction, but for no longer than 60 days from the date of the saidnotification or notifications, unless the applicant asks for a longer period,in which case it will be suspended until the expiration of that longer period.

(b) The fact that the International Registry failed to notice the contradictorynature of a statement shall not be considered as removing that nature of thestatement.

478 Appendix

(3) (a) In the following cases, the International Registry shall, subject to paragraphs(1) and (2), reject the application:

(i) where the application does not contain a statement which, on the faceof it, shows that the requirements of Article 3(5) of the Treaty are met;

(ii) where, in the opinion of the International Registry, the application doesnot relate to a work, whether existing or future;

(iii) where the application does not meet any of the requirements of Rule2(2), (3), (4), (5), (7)(a) and (b), (8), (10), (11) and (13).

(b) The International Registry may reject the application where the applica-tion does not fulfill the prescribed conditions as to its form.

(c) No application shall be rejected for any reason other than those referred toin subparagraphs (a) and (b).

(d) Any decision of rejection under this paragraph shall be communicated in writ-ing by the International Registry to the applicant. The applicant may, within30 days from the date of the communication, request in writing the Inter-national Registry to reconsider its decision. The International Registry shallreply to the request within 30 days from the date of receipt of the said request.

(4) If, for any reason, the International Registry, within three working days from thereceipt of the application, does not register the application, it shall enter intothe data base of the International Registry, open for consultation to the public,the essential elements of the application, and an indication of the reason for whichno registration has taken place and, if the reason is related to paragraphs (1), (2)(a)or (3)(d), an indication of the measures taken under any of those provisions. Ifand when the registration is effected, the said entry in the data base shall be erased.

rule 4date and number of the registration

(1) The International Registry shall allot, subject to Rule 2(13), as the filing date,to each application, the date of receipt of the application. Where the applica-tion is registered, it shall be given, as registration date, the filing date.

(2) The International Registry shall allot a number to each application. If the ap-plication refers to a work whose title appears in an existing work-related regis-tration, or which is described in an existing person-related registration, thenumber allotted shall also contain the number of that registration. Any regis-tration number shall consist of the application number.

rule 5registration

(1) Where an application is not rejected, all the statements contained therein shall,as prescribed, be registered in the International Register.

(2) Any registration effected shall, as prescribed, be notified to the applicant andpublished in the Gazette referred to in Rule 6.

rule 6the gazette

(1) The International Registry shall publish a gazette (“the Gazette”) in which itshall indicate the prescribed elements in respect of all registrations. The Gazette

Appendix 479

shall be in English, provided that elements concerning applications that werefiled in French shall also be in French.

(2) The International Registry shall offer, against payment, both yearly subscrip-tions to the Gazette and single copies of the Gazette. The amount of the pricesshall be fixed in the same manner as the amount of the fees is fixed according toRule 8(1).

rule 7inquiries

(1) The International Registry shall, against the payment of the prescribed fee, fin-ish information concerning any registration and certified copies of any regis-tration certificate or document concerning such registration.

(2) The International Registry shall, against the payment of the prescribed fee, fur-nish a certificate answering questions about the existence, in the InternationalRegister, of statements concerning specific matters in any registration or anydocument or material that has been attached to the application.

(3) The International Registry shall, against the payment of the prescribed fee,allow the inspection of any application, as well as of any document or materialthat has been attached to the application.

(4) The International Registry shall, against the payment of the prescribed fee,give written information, during the period for which the fee was paid, onall registrations effected in respect of given works or given persons duringthat period. The information shall be sent promptly after each registration iseffected.

(5) The International Registry may input into computer memory all or part of thecontents of the International Register, and, in performing any of the servicesreferred to in paragraphs (1) to (4) or in Rule 3(4), it may rely on that memory.

rule 8fees

(1) Before determining the system and amounts of the fees, and before making anychanges in that system or amounts, the Director General shall consult the Con-sultative Committee. The Assembly may instruct the Director General to changethe said system, the said amounts, or both.

(2) The amounts of the fees shall be reduced initially by 15% where the applicant isa natural person who is a national of, or a legal entity which is organized underthe laws of, a Contracting State that is regarded as a developing country in con-formity with the established practice of the General Assembly of the UnitedNations. The Assembly shall periodically examine the possibility of increasingthe percentage of the said reduction.

(3) Any increase in the amounts of the fees shall not be retroactive. The date of theentry into effect of any change shall be fixed by the Director General or, wherethe change is on instruction by the Assembly, by the Assembly. Such date shallbe indicated when the change is published in the Gazette. It shall not be soonerthan one month after the publication in the Gazette.

(4) The fees shall be paid in the prescribed manner and in the prescribed currencyor, if several currencies are admitted, in the currency that the applicant choosesamong the said currencies.

480 Appendix

rule 9administrative instructions

(1) (a) The Administrative Instructions shall contain provisions concerning detailsin respect of the administration of the Treaty and these Regulations.

(b) In the case of conflict between the provisions of the Treaty or these Regulationsand those of the Administrative Instructions, the former shall prevail.

(2) (a) The Administrative Instructions shall be drawn up, and may be modified, bythe Director General after consultation of the Consultative Committee.

(b) The Assembly may instruct the Director General to modify the Administra-tive Instructions, and the Director General shall modify them accordingly.

(3) (a) The Administrative Instructions and any modification thereof shall be pub-lished in the Gazette.

(b) Each publication shall specify the date on which the published provisionscome into effect. The dates may be different for different provisions, pro-vided that no provision may be declared effective prior to its publicationin the Gazette.

481

A20. PARTIES TO THE TREATY ON THE

INTERNATIONAL REGISTRATION

OF AUDIOVISUAL WORKS*

[FILM REGISTER TREATY, GENEVA, 1989]

Status on December 10, 1997


Date on which State Date on which Statebecame party to became party to

State the Treaty State the Treaty

Argentina ...................... July 29, 1992Austria .......................... February 27, 1991Brazil ............................. June 26, 1993Burkina Faso ................. February 27, 1991Chile ............................... December 29, 1993Colombia ....................... May 9, 1994

Czech Republic .............. January 1, 1993France ........................... February 27, 1991Mexico ........................... February 27, 1991Peru ............................... July 27, 1994Senegal .......................... April 3, 1994Slovakia ......................... January 1, 1993

(Total: 12 States)

482 Appendix

482

A21. BUENOS AIRES CONVENTION

[Buenos Aires, Argentina, August 11, 1910]

article 1

The signatory States acknowledge and protect the rights of Literary and ArtisticProperty in conformity with the stipulations of the present Convention.

article 2

In the expression “Literary and Artistic Works” are included books, writings, pam-phlets of all kinds, whatever may be the subject of which they treat, and whateverthe number of their pages; dramatic or dramatico-musical works; choreographic andmusical compositions, with or without words; drawings, paintings, sculpture, en-gravings; photographic works; astronomical or geographical globes; plans, sketchesor plastic works relating to geography, geology or topography, architecture or anyother science; and, finally, all productions that can be published by any means ofimpression or reproduction.

article 3

The acknowledgement of a copyright obtained in one State, in conformity with itslaws, shall produce its effects of full right in all the other States, without the neces-sity of complying with any other formality, provided always there shall appear inthe work a statement that indicates the reservation of the property right.

article 4

The copyright of a literary or artistic work includes for its author or assigns the ex-clusive power of disposing of the same, of publishing, assigning, translating or au-thorizing its translation and reproducing it in any form whether wholly or in part.

article 5

The author of a protected work, except in case of proof to the contrary, shall be con-sidered the person whose name or well known nom-de-plume is indicated therein;consequently suit brought by such author or his representative against counter-feiters or violators shall be admitted by the Courts of the Signatory States.

article 6

The authors or their assigns, citizens or domiciled foreigners, shall enjoy in thesignatory countries the rights that the respective laws accord, without those rightsbeing allowed to exceed the term of protection granted in the country of origin.

Appendix 483

For works comprising several volumes that are not published simultaneously, aswell as for bulletins, or parts, or periodical publications, the term of the copyrightwill commence to run, with respect to each volume, bulletin, part, or periodical pub-lication, from the respective date of its publication.

article 7

The country of origin of a work will be deemed that of its first publication in America,and if it shall have appeared simultaneously in several of the signatory countries,that which fixes the shortest period of protection.

article 8

A work which was not originally copyrighted shall not be entitled to copyright insubsequent editions.

article 9

Authorized translations shall be protected in the same manner as original works.Translators of works concerning which no right of guaranteed property exists,

or the guaranteed copyright of which may have been extinguished, may obtain fortheir translations the rights of property set forth in Article 3 but they shall not pre-vent the publication of other translations of the same work.

article 10

Addresses or discourses delivered or read before deliberative assemblies, Courts ofJustice, or at public meeting, may be printed in the daily press without the neces-sity of any authorization, with due regard however, to the provisions of the domes-tic legislation of each nation.

article 11

Literary, scientific or artistic writings, whatever may be their subjects, publishedin newspapers or magazines, in any one of the countries of the Union, shall not bereproduced in the other countries without the consent of the authors. With theexception of the works mentioned, any article in a newspaper may be reprinted byothers, if it has not been expressly prohibited, but in every case, the source fromwhich it is taken must be cited.

News and miscellaneous items published merely for general information, do notenjoy protection under this Convention.

article 12

The reproduction of extracts from literary or artistic publications for the purpose ofinstruction or chrestomathy, does not confer any right of property, and may, there-fore, be freely made in all the signatory countries.

484 Appendix

article 13

The indirect appropriation of unauthorized parts of a literary or artistic work, hav-ing no original character, shall be deemed an illicit reproduction, in so far as affectscivil liability.

The reproduction in any form of an entire work, or of the greater part thereof,accompanied by notes or commentaries under the pretext of literary criticism oramplification, or supplement to the original work, shall also be considered illicit.

article 14

Every publication infringing a copyright may be confiscated in the signatory coun-tries in which the original work had the right to be legally protected, without preju-dice to the indemnities or penalties which the counterfeiters may have incurredaccording to the laws of the country in which the fraud may have been committed.

article 15

Each of the Governments of the signatory countries shall retain the right to permit,inspect, or prohibit the circulation, representation or exhibition of works or produc-tions, concerning which the proper authority may have to exercise that right.

article 16

The present Convention shall become operative between the Signatory States whichratify it, three months after they shall have communicated their ratification to theArgentine Government, and it shall remain in force among them until a year afterthe date when it may be denounced. This denunciation shall be addressed to theArgentine Government and shall be without force except with respect to the countrymaking it.

485

A22. AGREEMENT ON TRADE-RELATED ASPECTS OF

INTELLECTUAL PROPERTY RIGHTS, INCLUDING

TRADE IN COUNTERFEIT GOODS

[A Portion of the Agreement Amending the General Agreement on Tariffs and Tradeand Creating the World Trade Organization, Signed by the Members of GATT April15, 1994 at Marrakesh, Morocco.]

Table of Contents

Part I: General Provisions and Basic PrinciplesPart II: Standards Concerning the Availability, Scope and Use of IntellectualProperty Rights

1. Copyright and Related Rights2. Trademarks3. Geographical Indications4. Industrial Designs5. Patents6. Layout-Designs (Topographies) of Integrated Circuits7. Protection of Undisclosed Information8. Control of Anti-Competitive Practices in Contractual Licences

Part III: Enforcement of Intellectual Property Rights1. General Obligations2. Civil and Administrative Procedures and Remedies3. Provisional Measures4. Special Requirements Related to Border Measures5. Criminal Procedures

Part IV: Acquisition and Maintenance of Intellectual Property Rights andRelated Inter-Partes ProceduresPart V: Dispute Prevention and SettlementPart VI: Transitional ArrangementsPart VII: Institutional Arrangements; Final Provisions

Members,

Desiring to reduce distortions and impediments to international trade, and takinginto account the need to promote effective and adequate protection of intellectualproperty rights, and to ensure that measures and procedures to enforce intellectualproperty rights do not themselves become barriers to legitimate trade;

Recognizing, to this end, the need for new rules and disciplines concerning:(a) the applicability of the basic principles of the GATT 1994 and of relevant inter-

national intellectual property agreements or conventions;

486 Appendix

(b) the provision of adequate standards and principles concerning the availability,scope and use of trade-related intellectual property rights;

(c) the provision of effective and appropriate means for the enforcement of trade-related intellectual property rights, taking into account differences in nationallegal systems;

(d) the provision of effective and expeditious procedures for the multilateral pre-vention and settlement of disputes between governments; and

(e) transitional arrangements aiming at the fullest participation in the results ofthe negotiations;

Recognizing the need for a multilateral framework of principles, rules and disciplinesdealing with international trade in counterfeit goods;

Recognizing that intellectual property rights are private rights;

Recognizing the underlying public policy objectives of national systems for the pro-tection of intellectual property, including developmental and technological objectives;

Recognizing also the special needs of the least-developed country Members in re-spect of maximum flexibility in the domestic implementation of laws and regula-tions in order to enable them to create a sound and viable technological base;

Emphasizing the importance of reducing tensions by reaching strengthened com-mitments to resolve disputes on trade-related intellectual property issues throughmultilateral procedures;

Desiring to establish a mutually supportive relationship between the MTO and theWorld Intellectual Property Organization (WIPO) as well as other relevant inter-national organisations;

Hereby agree as follows:

Part I: General Provisions and Basic Principles

article 1nature and scope of obligations

1. Members shall give effect to the provisions of this Agreement. Members may, butshall not be obliged to, implement in their domestic law more extensive protec-tion than is required by this Agreement, provided that such protection does notcontravene the provisions of this Agreement. Members shall be free to determinethe appropriate method of implementing the provisions of this Agreement withintheir own legal system and practice.

2. For the purposes of this Agreement, the term “intellectual property” refers to allcategories of intellectual property that are the subject of Sections 1 to 7 of Part II.

3. Members shall accord the treatment provided for in this Agreement to the na-tionals of other Members.1 In respect of the relevant intellectual property right,

1. When “nationals” are referred to in this Agreement, they shall be deemed, in the caseof a separate customs territory Member of the MTO, to mean persons, natural or legal, whoare domiciled or who have a real and effective industrial or commercial establishment in thatcustoms territory.

Appendix 487

the nationals of other Members shall be understood as those natural or legalpersons that would meet the criteria for eligibility for protection provided forin the Paris Convention (1967), the Berne Convention (1971), the Rome Con-vention and the Treaty on Intellectual Property in Respect of Integrated Cir-cuits, were all Members of the MTO members of those conventions.2 Any Memberavailing itself of the possibilities provided in paragraph 3 of Article 5 or paragraph2 of Article 6 of the Rome Convention shall make a notification as foreseen inthose provisions to the Council for Trade-Related Aspects of Intellectual PropertyRights.

article 2intellectual property conventions

1. In respect of Parts II, III and IV of this Agreement, Members shall comply withArticles 1–12 and 19 of the Paris Convention (1967).

2. Nothing in Parts I to IV of this Agreement shall derogate from existing obliga-tions that Members may have to each other under the Paris Convention, theBerne Convention, the Rome Convention and the Treaty on Intellectual Prop-erty in Respect of Integrated Circuits.


1. Each Member shall accord to the nationals of other Members treatment no lessfavourable than that it accords to its own nationals with regard to the protec-tion3 of intellectual property, subject to the exceptions already provided in, re-spectively, the Paris Convention (1967), the Berne Convention (1971), the RomeConvention and the Treaty on Intellectual Property in Respect of Integrated Cir-cuits. In respect of performers, producers of phonograms and broadcasting or-ganizations, this obligation only applies in respect of the rights provided underthis Agreement. Any Member availing itself of the possibilities provided in Ar-ticle 6 of the Berne Convention and paragraph 1(b) of Article 16 of the RomeConvention shall make a notification as foreseen in those provisions to the Coun-cil for Trade-Related Aspects of Intellectual Property Rights.

2. Members may avail themselves of the exceptions permitted under paragraph 1above in relation to judicial and administrative procedures, including the desig-

2. In this Agreement, “Paris Convention” refers to the Paris Convention for the Protec-tion of Industrial Property; “Paris Convention (1967)” refers to the Stockholm Act of this Con-vention of 14 July 1967. “Berne Convention” refers to the Berne Convention for the Protec-tion of Literary and Artistic Works; “Berne Convention (1971)” refers to the Paris Act of thisConvention of 24 July 1971. “Rome Convention” refers to the International Convention forthe Protection of Performers, Producers of Phonograms and Broadcasting Organisations,adopted at Rome on 26 October 1961. “Treaty on Intellectual Property in Respect of IntegratedCircuits” (IPIC Treaty) refers to the Treaty on Intellectual Property in Respect of IntegratedCircuits, adopted at Washington on 26 May 1989.

3. For the purposes of Articles 3 and 4 of this Agreement, protection shall include mattersaffecting the availability, acquisition, scope, maintenance and enforcement of intellectualproperty rights as well as those matters affecting the use of intellectual property rights spe-cifically addressed in this Agreement.

488 Appendix

nation of an address for service or the appointment of an agent within the juris-diction of a Member, only where such exceptions are necessary to secure com-pliance with laws and regulations which are not inconsistent with the provisionsof this Agreement and where such practices are not applied in a manner whichwould constitute a disguised restriction on trade.

article 4most-favoured-nation treatment

With regard to the protection of intellectual property, any advantage, favour, privi-lege or immunity granted by a Member to the nationals of any other country shallbe accorded immediately and unconditionally to the nationals of all other Members.Exempted from this obligation are any advantage, favour, privilege or immunityaccorded by a Member:(a) deriving from international agreements on judicial assistance and law enforce-

ment of a general nature and not particularly confined to the protection of in-tellectual property;

(b) granted in accordance with the provisions of the Berne Convention (1971) orthe Rome Convention authorizing that the treatment accorded be a functionnot of national treatment but of the treatment accorded in another country;

(c) in respect of the rights of performers, producers of phonograms and broadcast-ing organizations not provided under this Agreement;

(d) deriving from international agreements related to the protection of intellectualproperty which entered into force prior to the entry into force of the AgreementEstablishing the MTO, provided that such agreements are notified to the Coun-cil for Trade-Related Aspects of Intellectual Property Rights and do not con-stitute an arbitrary or unjustifiable discrimination against nationals of otherMembers.

article 5multilateral agreements on acquisition

or maintenance of protection

The obligations under Articles 3 and 4 above do not apply to procedures providedin multilateral agreements concluded under the auspices of the World IntellectualProperty Organization relating to the acquisition or maintenance of intellectualproperty rights.

article 6exhaustion

For the purposes of dispute settlement under this Agreement, subject to the provi-sions of Articles 3 and 4 above nothing in this Agreement shall be used to addressthe issue of the exhaustion of intellectual property rights.

article 7objectives

The protection and enforcement of intellectual property rights should contributeto the promotion of technological innovation and to the transfer and dissemination

Appendix 489

of technology, to the mutual advantage of producers and users of technologicalknowledge and in a manner conducive to social and economic welfare, and to abalance of rights and obligations.

article 8principles

1. Members may, in formulating or amending their national laws and regulations,adopt measures necessary to protect public health and nutrition, and to promotethe public interest in sectors of vital importance to their socio-economic and tech-nological development, provided that such measures are consistent with the pro-visions of this Agreement.

2. Appropriate measures, provided that they are consistent with the provisions ofthis Agreement, may be needed to prevent the abuse of intellectual propertyrights by right holders or the resort to practices which unreasonably restraintrade or adversely affect the international transfer of technology.

Part II: Standards Concerning the Availability, Scope andUse of Intellectual Property Rights

Section 1: Copyright and Related Rights

article 9relation to berne convention

1. Members shall comply with Articles 1–21 and the Appendix of the Berne Con-vention (1971). However, Members shall not have rights or obligations underthis Agreement in respect of the rights conferred under Article 6bis of that Con-vention or of the rights derived therefrom.

2. Copyright protection shall extend to expressions and not to ideas, procedures,methods of operation or mathematical concepts as such.

article 10computer programs and compilations of data

1. Computer programs, whether in source or object code, shall be protected as lit-erary works under the Berne Convention (1971).

2. Compilations of data or other material, whether in machine readable or otherform, which by reason of the selection or arrangement of their contents consti-tute intellectual creations shall be protected as such. Such protection, which shallnot extend to the data or material itself, shall be without prejudice to any copy-right subsisting in the data or material itself.

article 11rental rights

In respect of at least computer programs and cinematographic works, a Membershall provide authors and their successors in title the right to authorize or to pro-

490 Appendix

hibit the commercial rental to the public of originals or copies of their copyrightworks. A Member shall be excepted from this obligation in respect of cinemato-graphic works unless such rental has led to widespread copying of such works whichis materially impairing the exclusive right of reproduction conferred in that Mem-ber on authors and their successors in title. In respect of computer programs, thisobligation does not apply to rentals where the program itself is not the essentialobject of the rental.


Whenever the term of protection of a work, other than a photographic work ora work of applied art, is calculated on a basis other than the life of a natural per-son, such term shall be no less than fifty years from the end of the calendar yearof authorized publication, or, failing such authorized publication within fiftyyears from the making of the work, fifty years from the end of the calendar year ofmaking.


Members shall confine limitations or exceptions to exclusive rights to certain spe-cial cases which do not conflict with a normal exploitation of the work and do notunreasonably prejudice the legitimate interests of the right holder.

article 14protection of performers, producers of phonograms(sound recordings) and broadcasting organizations

1. In respect of a fixation of their performance on a phonogram, performers shallhave the possibility of preventing the following acts when undertaken withouttheir authorization: the fixation of their unfixed performance and the reproduc-tion of such fixation. Performers shall also have the possibility of preventing thefollowing acts when undertaken without their authorization: the broadcastingby wireless means and the communication to the public of their live performance.

2. Producers of phonograms shall enjoy the right to authorize or prohibit the di-rect or indirect reproduction of their phonograms.

3. Broadcasting organizations shall have the right to prohibit the following actswhen undertaken without their authorization: the fixation, the reproduction offixations, and the rebroadcasting by wireless means of broadcasts, as well as thecommunication to the public of television broadcasts of the same. Where Mem-bers do not grant such rights to broadcasting organizations, they shall provideowners of copyright in the subject matter of broadcasts with the possibility ofpreventing the above acts, subject to the provisions of the Berne Convention(1971).

4. The provisions of Article 11 in respect of computer programs shall apply mutatismutandis to producers of phonograms and any other right holders in phonogramsas determined in domestic law. If, on the date of the Ministerial Meeting conclud-ing the Uruguay Round of Multilateral Trade Negotiations, a Member has in forcea system of equitable remuneration of right holders in respect of the rental of

Appendix 491

phonograms, it may maintain such system provided that the commercial rentalof phonograms is not giving rise to the material impairment of the exclusive rightsof reproduction of right holders.

5. The term of the protection available under this Agreement to performers andproducers of phonograms shall last at least until the end of a period of fifty yearscomputed from the end of the calendar year in which the fixation was made orthe performance took place. The term of protection granted pursuant to para-graph 3 above shall last for at least twenty years from the end of the calendaryear in which the broadcast took place.

6. Any Member may, in relation to the rights conferred under paragraphs 1–3above, provide for conditions, limitations, exceptions and reservations to the ex-tent permitted by the Rome Convention. However, the provisions of Article 18of the Berne Convention (1971) shall also apply, mutatis mutandis, to the rightsof performers and producers of phonograms in phonograms.

Section 2: Trademarks

article 15protectable subject matter

1. Any sign, or any combination of signs, capable of distinguishing the goods orservices of one undertaking from those of other undertakings, shall be capableof constituting a trademark. Such signs, in particular words including personalnames, letters, numerals, figurative elements and combinations of colours as wellas any combination of such signs, shall be eligible for registration as trademarks.Where signs are not inherently capable of distinguishing the relevant goods orservices, Members may make registrability depend on distinctiveness acquiredthrough use. Members may require, as a condition of registration, that signs bevisually perceptible.

2. Paragraph 1 above shall not be understood to prevent a Member from denyingregistration of a trademark on other grounds, provided that they do not dero-gate from the provisions of the Paris Convention (1967).

3. Members may make registrability depend on use. However, actual use of a trade-mark shall not be a condition for filing an application for registration. An appli-cation shall not be refused solely on the ground that intended use has not takenplace before the expiry of a period of three years from the date of application.

4. The nature of the goods or services to which a trademark is to be applied shall inno case form an obstacle to registration of the trademark.

5. Members shall publish each trademark either before it is registered or promptlyafter it is registered and shall afford a reasonable opportunity for petitions tocancel the registration. In addition, Members may afford an opportunity for theregistration of a trademark to be opposed.

article 16rights conferred

1. The owner of a registered trademark shall have the exclusive right to prevent allthird parties not having his consent from using in the course of trade identicalor similar signs for goods or services which are identical or similar to those in

492 Appendix

respect of which the trademark is registered where such use would result in alikelihood of confusion. In case of the use of an identical sign for identical goodsor services, a likelihood of confusion shall be presumed. The rights describedabove shall not prejudice any existing prior rights, nor shall they affect the pos-sibility of Members making rights available on the basis of use.

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to ser-vices. In determining whether a trademark is well-known, account shall be takenof the knowledge of the trademark in the relevant sector of the public, includingknowledge in that Member obtained as a result of the promotion of the trademark.

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goodsor services which are not similar to those in respect of which a trademark is reg-istered, provided that use of that trademark in relation to those goods or serviceswould indicate a connection between those goods or services and the owner ofthe registered trademark and provided that the interests of the owner of the reg-istered trademark are likely to be damaged by such use.

article 17exceptions

Members may provide limited exceptions to the rights conferred by a trademark,such as fair use of descriptive terms, provided that such exceptions take account ofthe legitimate interests of the owner of the trademark and of third parties.


Initial registration, and each renewal of registration, of a trademark shall be for aterm of no less than seven years. The registration of a trademark shall be renew-able indefinitely.

article 19requirement of use

1. If use is required to maintain a registration, the registration may be cancelledonly after an uninterrupted period of at least three years of non-use, unless validreasons based on the existence of obstacles to such use are shown by the trade-mark owner. Circumstances arising independently of the will of the owner ofthe trademark which constitute an obstacle to the use of the trademark, suchas import restrictions on or other government requirements for goods orservices protected by the trademark, shall be recognized as valid reasons fornon-use.

2. When subject to the control of its owner, use of a trademark by another personshall be recognized as use of the trademark for the purpose of maintaining theregistration.

article 20other requirements

The use of a trademark in the course of trade shall not be unjustifiably encumberedby special requirements, such as use with another trademark, use in a special form

Appendix 493

or use in a manner detrimental to its capability to distinguish the goods or servicesof one undertaking from those of other undertakings. This will not preclude a re-quirement prescribing the use of the trademark identifying the undertaking produc-ing the goods or services along with, but without linking it to, the trademark distin-guishing the specific goods or services in question of that undertaking.

article 21licensing and assignment

Members may determine conditions on the licensing and assignment of trademarks,it being understood that the compulsory licensing of trademarks shall not be per-mitted and that the owner of a registered trademark shall have the right to assignhis trademark with or without the transfer of the business to which the trademarkbelongs.

Section 3: Geographical Indications

article 22protection of geographical indications

1. Geographical indications are, for the purposes of this Agreement, indicationswhich identify a good as originating in the territory of a Member, or a region orlocality in that territory, where a given quality, reputation or other characteris-tic of the good is essentially attributable to its geographical origin.

2. In respect of geographical indications, Members shall provide the legal meansfor interested parties to prevent:(a) the use of any means in the designation or presentation of a good that indi-

cates or suggests that the good in question originates in a geographical areaother than the true place of origin in a manner which misleads the public asto the geographical origin of the good;

(b) any use which constitutes an act of unfair competition within the meaningof Article 10bis of the Paris Convention (1967).

3. A Member shall, ex officio if its legislation so permits or at the request of an in-terested party, refuse or invalidate the registration of a trademark which con-tains or consists of a geographical indication with respect to goods not originat-ing in the territory indicated, if use of the indication in the trademark for suchgoods in that Member is of such a nature as to mislead the public as to the trueplace of origin.

4. The provisions of the preceding paragraphs of this Article shall apply to a geo-graphical indication which, although literally true as to the territory, region orlocality in which the goods originate, falsely represents to the public that thegoods originate in another territory.

article 23additional protection for geographical

indications for wines and spirits

1. Each Member shall provide the legal means for interested parties to prevent useof a geographical indication identifying wines for wines not originating in the

494 Appendix

place indicated by the geographical indication in question or identifying spiritsfor spirits not originating in the place indicated by the geographical indicationin question, even where the true origin of the goods is indicated or the geo-graphical indication is used in translation or accompanied by expressions suchas “kind,” “type,” “style,” “imitation” or the like.4

2. The registration of a trademark for wines which contains or consists of a geo-graphical indication identifying wines or for spirits which contains or consistsof a geographical indication identifying spirits shall be refused or invalidated, exofficio if domestic legislation so permits or at the request of an interested party,with respect to such wines or spirits not having this origin.

3. In the case of homonymous geographical indications for wines, protection shallbe accorded to each indication, subject to the provisions of paragraph 4 of Ar-ticle 22 above. Each Member shall determine the practical conditions underwhich the homonymous indications in question will be differentiated from eachother, taking into account the need to ensure equitable treatment of the produc-ers concerned and that consumers are not misled.

4. In order to facilitate the protection of geographical indications for wines, nego-tiations shall be undertaken in the Council for Trade-Related Aspects of Intel-lectual Property Rights concerning the establishment of a multilateral systemof notification and registration of geographical indications for wines eligible forprotection in those Members participating in the system.

article 24international negotiations; exceptions

1. Members agree to enter into negotiations aimed at increasing the protection ofindividual geographical indications under Article 23. The provisions of para-graphs 4–8 below shall not be used by a Member to refuse to conduct negotia-tions or to conclude bilateral or multilateral agreements. In the context of suchnegotiations, Members shall be willing to consider the continued applicabilityof these provisions to individual geographical indications whose use was thesubject of such negotiations.

2. The Council for Trade-Related Aspects of Intellectual Property Rights shall keepunder review the application of the provisions of this Section; the first such re-view shall take place within two years of the entry into force of the AgreementEstablishing the MTO. Any matter affecting the compliance with the obligationsunder these provisions may be drawn to the attention of the Council, which, atthe request of a Member, shall consult with any Member or Members in respectof such matter in respect of which it has not been possible to find a satisfactorysolution through bilateral or plurilateral consultations between the Membersconcerned. The Council shall take such action as may be agreed to facilitate theoperation and further the objectives of this Section.

3. In implementing this Section, a Member shall not diminish the protection ofgeographical indications that existed in that Member immediately prior to thedate of entry into force of the Agreement Establishing the MTO.

4. Notwithstanding the first sentence of Article 42, Members may, with respect to theseobligations, instead provide for enforcement by administrative action.

Appendix 495

4. Nothing in this Section shall require a Member to prevent continued and simi-lar use of a particular geographical indication of another Member identifyingwines or spirits in connection with goods or services by any of its nationals ordomiciliaries who have used that geographical indication in a continuous man-ner with regard to the same or related goods or services in the territory of thatMember either (a) for at least ten years preceding the date of the MinisterialMeeting concluding the Uruguay Round of Multilateral Trade Negotiations or(b) in good faith preceding that date.

5. Where a trademark has been applied for or registered in good faith, or whererights to a trademark have been acquired through use in good faith either:(a) before the date of application of these provisions in that Member as defined

in Part VI below; or(b) before the geographical indication is protected in its country of origin; mea-

sures adopted to implement this Section shall not prejudice eligibility for orthe validity of the registration of a trademark, or the right to use a trademark,on the basis that such a trademark is identical with, or similar to, a geographi-cal indication.

6. Nothing in this Section shall require a Member to apply its provisions in respectof a geographical indication of any other Member with respect to goods orservices for which the relevant indication is identical with the term custom-ary in common language as the common name for such goods or services inthe territory of that Member. Nothing in this Section shall require a Memberto apply its provisions in respect of a geographical indication of any other Mem-ber with respect to products of the vine for which the relevant indication isidentical with the customary name of a grape variety existing in the territoryof that Member as of the date of entry into force of the Agreement Establishingthe MTO.

7. A Member may provide that any request made under this Section in connectionwith the use or registration of a trademark must be presented within five yearsafter the adverse use of the protected indication has become generally known inthat Member or after the date of registration of the trademark in that Memberprovided that the trademark has been published by that date, if such date is ear-lier than the date on which the adverse use became generally known in thatMember, provided that the geographical indication is not used or registered inbad faith.

8. The provisions of this Section shall in no way prejudice the right of any personto use, in the course of trade, his name or the name of his predecessor in busi-ness, except where such name is used in such a manner as to mislead the public.

9. There shall be no obligation under this Agreement to protect geographical indi-cations which are not or cease to be protected in their country of origin, or whichhave fallen into disuse in that country.

Section 4: Industrial Designs

article 25requirements for protection

1. Members shall provide for the protection of independently created industrialdesigns that are new or original. Members may provide that designs are not

496 Appendix

new or original if they do not significantly differ from known designs or com-binations of known design features. Members may provide that such protec-tion shall not extend to designs dictated essentially by technical or functionalconsiderations.

2. Each Member shall ensure that requirements for securing protection for textiledesigns, in particular in regard to any cost, examination or publication, do notunreasonably impair the opportunity to seek and obtain such protection. Mem-bers shall be free to meet this obligation through industrial design law or throughcopyright law.

article 26protection

1. The owner of a protected industrial design shall have the right to prevent thirdparties not having his consent from making, selling or importing articles bear-ing or embodying a design which is a copy, or substantially a copy, of the pro-tected design, when such acts are undertaken for commercial purposes.

2. Members may provide limited exceptions to the protection of industrial designs,provided that such exceptions do not unreasonably conflict with the normal ex-ploitation of protected industrial designs and do not unreasonably prejudice thelegitimate interests of the owner of the protected design, taking account of thelegitimate interests of third parties.

3. The duration of protection available shall amount to at least ten years.

Section 5: Patents

article 27patentable subject matter

1. Subject to the provisions of paragraphs 2 and 3 below, patents shall be availablefor any inventions, whether products or processes, in all fields of technology, pro-vided that they are new, involve an inventive step and are capable of industrialapplication.5 Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 andparagraph 3 of this Article, patents shall be available and patent rights enjoy-able without discrimination as to the place of invention, the field of technologyand whether products are imported or locally produced.

2. Members may exclude from patentability inventions, the prevention within theirterritory of the commercial exploitation of which is necessary to protect ordrepublic or morality, including to protect human, animal or plant life or health orto avoid serious prejudice to the environment, provided that such exclusion isnot made merely because the exploitation is prohibited by domestic law.

3. Members may also exclude from patentability:

5. For the purposes of this Article, the terms “inventive step” and “capable of industrialapplication” may be deemed by a Member to be synonymous with the terms “non-obvious”and “useful” respectively.

Appendix 497

(a) diagnostic, therapeutic and surgical methods for the treatment of humansor animals;

(b) plants and animals other than microorganisms, and essentially biologicalprocesses for the production of plants or animals other than non-biologicaland microbiological processes. However, Members shall provide for the pro-tection of plant varieties either by patents or by an effective sui generis sys-tem or by any combination thereof. The provisions of this sub-paragraphshall be reviewed four years after the entry into force of the Agreement Es-tablishing the MTO.

article 28rights conferred

1. A patent shall confer on its owner the following exclusive rights:(a) where the subject matter of a patent is a product, to prevent third parties not

having his consent from the acts of: making, using, offering for sale, selling,or importing6 for these purposes that product;

(b) where the subject matter of a patent is a process, to prevent third parties nothaving his consent from the act of using the process, and from the acts of:using, offering for sale, selling, or importing for these purposes at least theproduct obtained directly by that process.

2. Patent owners shall also have the right to assign, or transfer by succession, thepatent and to conclude licensing contracts.

article 29conditions on patent applicants

1. Members shall require that an applicant for a patent shall disclose the inventionin a manner sufficiently clear and complete for the invention to be carried outby a person skilled in the art and may require the applicant to indicate the bestmode for carrying out the invention known to the inventor at the filing date or,where priority is claimed, at the priority date of the application.

2. Members may require an applicant for a patent to provide information concern-ing his corresponding foreign applications and grants.

article 30exceptions to rights conferred

Members may provide limited exceptions to the exclusive rights conferred by apatent, provided that such exceptions do not unreasonably conflict with a nor-mal exploitation of the patent and do not unreasonably prejudice the legitimateinterests of the patent owner, taking account of the legitimate interests of thirdparties.

6. This right, like all other rights conferred under this Agreement in respect of the use, sale,importation or other distribution of goods, is subject to the provisions of Article 6 above.

498 Appendix

article 31other use without authorization

of the right holder

Where the law of a Member allows for other use7 of the subject matter of a patentwithout the authorization of the right holder, including use by the government or thirdparties authorized by the government, the following provisions shall be respected:(a) authorization of such use shall be considered on its individual merits;(b) such use may only be permitted if, prior to such use, the proposed user has made

efforts to obtain authorization from the right holder on reasonable commercialterms and conditions and that such efforts have not been successful within areasonable period of time. This requirement may be waived by a Member in thecase of a national emergency or other circumstances of extreme urgency or incases of public non-commercial use. In situations of national emergency or othercircumstances of extreme urgency, the right holder shall, nevertheless, be no-tified as soon as reasonably practicable. In the case of public non-commercialuse, where the government or contractor, without making a patent search,knows or has demonstrable grounds to know that a valid patent is or will be usedby or for the government, the right holder shall be informed promptly;

(c) the scope and duration of such use shall be limited to the purpose for which itwas authorized, and in the case of semi-conductor technology shall only be forpublic non-commercial use or to remedy a practice determined after judicial oradministrative process to be anti-competitive.

(d) such use shall be non-exclusive;(e) such use shall be non-assignable, except with that part of the enterprise or good-

will which enjoys such use;(f) any such use shall be authorized predominantly for the supply of the domestic

market of the Member authorizing such use;(g) authorization for such use shall be liable, subject to adequate protection of the

legitimate interests of the persons so authorized, to be terminated if and whenthe circumstances which led to it cease to exist and are unlikely to recur. Thecompetent authority shall have the authority to review, upon motivated request,the continued existence of these circumstances;

(h) the right holder shall be paid adequate remuneration in the circumstances ofeach case, taking into account the economic value of the authorization;

(i) the legal validity of any decision relating to the authorization of such use shallbe subject to judicial review or other independent review by a distinct higherauthority in that Member;

(j) any decision relating to the remuneration provided in respect of such use shallbe subject to judicial review or other independent review by a distinct higherauthority in that Member;

(k) Members are not obliged to apply the conditions set forth in sub-paragraphs (b)and (f) above where such use is permitted to remedy a practice determinedafter judicial or administrative process to be anti-competitive. The need to cor-rect anti-competitive practices may be taken into account in determining theamount of remuneration in such cases. Competent authorities shall have the

7. “Other use” refers to use other than that allowed under Article 30.

Appendix 499

authority to refuse termination of authorization if and when the conditionswhich led to such authorization are likely to recur;

(l) where such use is authorized to permit the exploitation of a patent (“the secondpatent”) which cannot be exploited without infringing another patent (“the firstpatent”), the following additional conditions shall apply:

(i) the invention claimed in the second patent shall involve an important tech-nical advance of considerable economic significance in relation to the in-vention claimed in the first patent;

(ii) the owner of the first patent shall be entitled to a cross-licence on reason-able terms to use the invention claimed in the second patent; and

(iii) the use authorized in respect of the first patent shall be non-assignableexcept with the assignment of the second patent.

article 32revocation/forfeiture

An opportunity for judicial review of any decision to revoke or forfeit a patent shallbe available.


The term of protection available shall not end before the expiration of a period oftwenty years counted from the filing date.8

article 34process patents: burden of proof

1. For the purposes of civil proceedings in respect of the infringement of the rights ofthe owner referred to in paragraph 1(b) of Article 28 above, if the subject matter ofa patent is a process for obtaining a product, the judicial authorities shall have theauthority to order the defendant to prove that the process to obtain an identicalproduct is different from the patented process. Therefore, Members shall provide,in at least one of the following circumstances, that any identical product when pro-duced without the consent of the patent owner shall, in the absence of proof to thecontrary, be deemed to have been obtained by the patented process:(a) if the product obtained by the patented process is new;(b) if there is a substantial likelihood that the identical product was made by the

process and the owner of the patent has been unable through reasonable ef-forts to determine the process actually used.

2. Any Member shall be free to provide that the burden of proof indicated in para-graph 1 shall be on the alleged infringer only if the condition referred to in sub-paragraph (a) is fulfilled or only if the condition referred to in sub-paragraph (b)is fulfilled.

8. It is understood that those Members which do not have a system of original grant mayprovide that the term of protection shall be computed from the filing date in the system oforiginal grant.

500 Appendix

3. In the adduction of proof to the contrary, the legitimate interests of the defen-dant in protecting his manufacturing and business secrets shall be taken intoaccount.

Section 6: Layout-Designs (Topographies) of Integrated Circuits

article 35relation to ipic treaty

Members agree to provide protection to the layout-designs (topographies) of inte-grated circuits (hereinafter referred to as “layout-designs”) in accordance withArticles 2–7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 ofArticle 16 of the Treaty on Intellectual Property in Respect of Integrated Circuitsand, in addition, to comply with the following provisions.

article 36scope of the protection

Subject to the provisions of paragraph 1 of Article 37 below, Members shall considerunlawful the following acts if performed without the authorization of the rightholder:9 importing, selling, or otherwise distributing for commercial purposes aprotected layout-design, an integrated circuit in which a protected layout-design isincorporated, or an article incorporating such an integrated circuit only insofar asit continues to contain an unlawfully reproduced layout-design.

article 37acts not requiring the authorization

of the right holder

1. Notwithstanding Article 36 above, no Member shall consider unlawful theperformance of any of the acts referred to in that Article in respect of an inte-grated circuit incorporating an unlawfully reproduced layout-design or anyarticle incorporating such an integrated circuit where the person performingor ordering such acts did not know and had no reasonable ground to know,when acquiring the integrated circuit or article incorporating such an inte-grated circuit, that it incorporated an unlawfully reproduced layout-design.Members shall provide that, after the time that such person has received suffi-cient notice that the layout-design was unlawfully reproduced, he may performany of the acts with respect to the stock on hand or ordered before such time,but shall be liable to pay to the right holder a sum equivalent to a reasonableroyalty such as would be payable under a freely negotiated licence in respectof such a layout-design.

2. The conditions set out in sub-paragraphs (a)–(k) of Article 31 above shall applymutatis mutandis in the event of any non-voluntary licensing of a layout-design

9. The term “right holder” in this Section shall be understood as having the same mean-ing as the term “holder of the right” in the IPIC Treaty.

Appendix 501

or of its use by or for the government without the authorization of the rightholder.


1. In Members requiring registration as a condition of protection, the term of pro-tection of layout-designs shall not end before the expiration of a period of ten yearscounted from the date of filing an application for registration or from the first com-mercial exploitation wherever in the world it occurs.

2. In Members not requiring registration as a condition of protection, layout-designs shall be protected for a term of no less than ten years from the date of thefirst commercial exploitation wherever in the world it occurs.

3. Notwithstanding paragraphs 1 and 2 above, a Member may provide that protec-tion shall lapse fifteen years after the creation of the layout-design.

Section 7: Protection of Undisclosed Information

article 39

1. In the course of ensuring effective protection against unfair competition as pro-vided in Article 10bis of the Paris Convention (1967), Members shall protect un-disclosed information in accordance with paragraph 2 below and data submit-ted to governments or governmental agencies in accordance with paragraph 3below.

2. Natural and legal persons shall have the possibility of preventing informationlawfully within their control from being disclosed to, acquired by, or used byothers without their consent in a manner contrary to honest commercial prac-tices10 so long as such information:— is secret in the sense that it is not, as a body or in the precise configuration and

assembly of its components, generally known among or readily accessible topersons within the circles that normally deal with the kind of information inquestion;

— has commercial value because it is secret; and— has been subject to reasonable steps under the circumstances, by the person

lawfully in control of the information, to keep it secret.3. Members, when requiring, as a condition of approving the marketing of phar-

maceutical or of agricultural chemical products which utilize new chemical en-tities, the submission of undisclosed test or other data, the origination of whichinvolves a considerable effort, shall protect such data against unfair commercialuse. In addition, Members shall protect such data against disclosure, exceptwhere necessary to protect the public, or unless steps are taken to ensure thatthe data are protected against unfair commercial use.

10. For the purpose of this provision, “a manner contrary to honest commercial practices”shall mean at least practices such as breach of contract, breach of confidence and inducementto breach, and includes the acquisition of undisclosed information by third parties who knew,or were grossly negligent in failing to know, that such practices were involved in the acquisition.

502 Appendix

Section 8: Control of Anti-Competitive Practices inContractual Licenses

article 40

1. Members agree that some licensing practices or conditions pertaining to intel-lectual property rights which restrain competition may have adverse effects ontrade and may impede the transfer and dissemination of technology.

2. Nothing in this Agreement shall prevent Members from specifying in their nationallegislation licensing practices or conditions that may in particular cases constitutean abuse of intellectual property rights having an adverse effect on competition inthe relevant market. As provided above, a Member may adopt, consistently withthe other provisions of this Agreement, appropriate measures to prevent or con-trol such practices, which may include for example exclusive grantback conditions,conditions preventing challenges to validity and coercive package licensing, in thelight of the relevant laws and regulations of that Member.

3. Each Member shall enter, upon request, into consultations with any other Mem-ber which has cause to believe that an intellectual property right owner that isa national or domiciliary of the Member to which the request for consultationshas been addressed is undertaking practices in violation of the requesting Member’slaws and regulations on the subject matter of this Section, and which wishes tosecure compliance with such legislation, without prejudice to any action underthe law and to the full freedom of an ultimate decision of either Member. TheMember addressed shall accord full and sympathetic consideration to, and shallafford adequate opportunity for, consultations with the requesting Member, andshall co-operate through supply of publicly available non-confidential informa-tion of relevance to the matter in question and of other information available tothe Member, subject to domestic law and to the conclusion of mutually satisfac-tory agreements concerning the safeguarding of its confidentiality by the request-ing Member.

4. A Member whose nationals or domiciliaries are subject to proceedings in anotherMember concerning alleged violation of that other Member’s laws and regula-tions on the subject matter of this Section shall, upon request, be granted an op-portunity for consultations by the other Member under the same conditions asthose foreseen in paragraph 3 above.

Part III: Enforcement of Intellectual Property Rights

Section 1: General Obligations

article 41

1. Members shall ensure that enforcement procedures as specified in this Part areavailable under their national laws so as to permit effective action against anyact of infringement of intellectual property rights covered by this Agreement, in-cluding expeditious remedies to prevent infringements and remedies which con-stitute a deterrent to further infringements. These procedures shall be appliedin such a manner as to avoid the creation of barriers to legitimate trade and toprovide for safeguards against their abuse.

Appendix 503

2. Procedures concerning the enforcement of intellectual property rights shall befair and equitable. They shall not be unnecessarily complicated or costly, or en-tail unreasonable time-limits or unwarranted delays.

3. Decisions on the merits of a case shall preferably be in writing and reasoned. Theyshall be made available at least to the parties to the proceeding without unduedelay. Decisions on the merits of a case shall be based only on evidence in respectof which parties were offered the opportunity to be heard.

4. Parties to a proceeding shall have an opportunity for review by a judicial author-ity of final administrative decisions and, subject to jurisdictional provisions innational laws concerning the importance of a case, of at least the legal aspectsof initial judicial decisions on the merits of a case. However, there shall be noobligation to provide an opportunity for review of acquittals in criminal cases.

5. It is understood that this Part does not create any obligation to put in place ajudicial system for the enforcement of intellectual property rights distinct fromthat for the enforcement of laws in general, nor does it affect the capacity ofMembers to enforce their laws in general. Nothing in this Part creates any obli-gation with respect to the distribution of resources as between enforcement ofintellectual property rights and the enforcement of laws in general.

Section 2: Civil and Administrative Procedures and Remedies

article 42fair and equitable procedures

Members shall make available to right holders11 civil judicial procedures concerningthe enforcement of any intellectual property right covered by this Agreement. Defen-dants shall have the right to written notice which is timely and contains sufficientdetail, including the basis of the claims. Parties shall be allowed to be represented byindependent legal counsel, and procedures shall not impose overly burdensome re-quirements concerning mandatory personal appearances. All parties to such proce-dures shall be duly entitled to substantiate their claims and to present all relevantevidence. The procedure shall provide a means to identify and protect confidentialinformation, unless this would be contrary to existing constitutional requirements.

article 43evidence of proof

1. The judicial authorities shall have the authority, where a party has presentedreasonably available evidence sufficient to support its claims and has specifiedevidence relevant to substantiation of its claims which lies in the control of theopposing party, to order that this evidence be produced by the opposing party,subject in appropriate cases to conditions which ensure the protection of confi-dential information.

2. In cases in which a party to a proceeding voluntarily and without good reasonrefuses access to, or otherwise does not provide necessary information within a rea-

11. For the purpose of this Part, the term “right holder” includes federations and associa-tions having legal standing to assert such rights.

504 Appendix

sonable period, or significantly impedes a procedure relating to an enforcementaction, a Member may accord judicial authorities the authority to make prelimi-nary and final determinations, affirmative or negative, on the basis of the infor-mation presented to them, including the complaint or the allegation presented bythe party adversely affected by the denial of access to information, subject to pro-viding the parties an opportunity to be heard on the allegations or evidence.

article 44injunctions

1. The judicial authorities shall have the authority to order a party to desist froman infringement, inter alia to prevent the entry into the channels of commercein their jurisdiction of imported goods that involve the infringement of an intel-lectual property right, immediately after customs clearance of such goods. Mem-bers are not obliged to accord such authority in respect of protected subject matteracquired or ordered by a person prior to knowing or having reasonable groundsto know that dealing in such subject matter would entail the infringement of anintellectual property right.

2. Notwithstanding the other provisions of this Part and provided that the provi-sions of Part II specifically addressing use by governments, or by third partiesauthorized by a government, without the authorization of the right holder arecomplied with, Members may limit the remedies available against such use topayment of remuneration in accordance with sub-paragraph (h) of Article 31above. In other cases, the remedies under this Part shall apply or, where theseremedies are inconsistent with national law, declaratory judgments and ad-equate compensation shall be available.

article 45damages

1. The judicial authorities shall have the authority to order the infringer to pay theright holder damages adequate to compensate for the injury the right holder hassuffered because of an infringement of his intellectual property right by an in-fringer who knew or had reasonable grounds to know that he was engaged ininfringing activity.

2. The judicial authorities shall also have the authority to order the infringer to paythe right holder expenses, which may include appropriate attorney’s fees. In ap-propriate cases, Members may authorize the judicial authorities to order recov-ery of profits and/or payment of pre-established damages even where the in-fringer did not know or had no reasonable grounds to know that he was engagedin infringing activity.

article 46other remedies

In order to create an effective deterrent to infringement, the judicial authorities shallhave the authority to order that goods that they have found to be infringing be, with-out compensation of any sort, disposed of outside the channels of commerce in sucha manner as to avoid any harm caused to the right holder, or, unless this would becontrary to existing constitutional requirements, destroyed. The judicial authori-ties shall also have the authority to order that materials and implements the pre-

Appendix 505

dominant use of which has been in the creation of the infringing goods be, withoutcompensation of any sort, disposed of outside the channels of commerce in such amanner as to minimize the risks of further infringements. In considering such re-quests, the need for proportionality between the seriousness of the infringement andthe remedies ordered as well as the interests of third parties shall be taken into ac-count. In regard to counterfeit trademark goods, the simple removal of the trade-mark unlawfully affixed shall not be sufficient, other than in exceptional cases, topermit release of the goods into the channels of commerce.

article 47right of information

Members may provide that the judicial authorities shall have the authority, unlessthis would be out of proportion to the seriousness of the infringement, to order theinfringer to inform the right holder of the identity of third persons involved in theproduction and distribution of the infringing goods or services and of their chan-nels of distribution.

article 48indemnification of the defendant

1. The judicial authorities shall have the authority to order a party at whose re-quest measures were taken and who has abused enforcement procedures to pro-vide to a party wrongfully enjoined or restrained adequate compensation for theinjury suffered because of such abuse. The judicial authorities shall also havethe authority to order the applicant to pay the defendant expenses, which mayinclude appropriate attorney’s fees.

2. In respect of the administration of any law pertaining to the protection orenforcement of intellectual property rights, Members shall only exempt bothpublic authorities and officials from liability to appropriate remedial measureswhere actions are taken or intended in good faith in the course of the adminis-tration of such laws.

article 49administrative procedures

To the extent that any civil remedy can be ordered as a result of administrative pro-cedures on the merits of a case, such procedures shall conform to principles equiva-lent in substance to those set forth in this Section.

Section 3: Provisional Measures

article 50

1. The judicial authorities shall have the authority to order prompt and effectiveprovisional measures:(a) to prevent an infringement of any intellectual property right from occurring, and

in particular to prevent the entry into the channels of commerce in their juris-diction of goods, including imported goods immediately after customs clearance;

(b) to preserve relevant evidence in regard to the alleged infringement.

506 Appendix

2. The judicial authorities shall have the authority to adopt provisional measuresinaudita altera parte where appropriate, in particular where any delay is likelyto cause irreparable harm to the right holder, or where there is a demonstrablerisk of evidence being destroyed.

3. The judicial authorities shall have the authority to require the applicant to pro-vide any reasonably available evidence in order to satisfy themselves with a suf-ficient degree of certainty that the applicant is the right holder and that his rightis being infringed or that such infringement is imminent, and to order the appli-cant to provide a security or equivalent assurance sufficient to protect the de-fendant and to prevent abuse.

4. Where provisional measures have been adopted inaudita altera parte, the partiesaffected shall be given notice, without delay after the execution of the measures atthe latest. A review, including a right to be heard, shall take place upon request ofthe defendant with a view to deciding, within a reasonable period after the notifica-tion of the measures, whether these measures shall be modified, revoked orconfirmed.

5. The applicant may be required to supply other information necessary for the iden-tification of the goods concerned by the authority that will execute the provisionalmeasures.

6. Without prejudice to paragraph 4 above, provisional measures taken on the basisof paragraphs 1 and 2 above shall, upon request by the defendant, be revoked orotherwise cease to have effect, if proceedings leading to a decision on the meritsof the case are not initiated within a reasonable period, to be determined by thejudicial authority ordering the measures where national law so permits or, inthe absence of such a determination, not to exceed twenty working days or thirty-one calendar days, whichever is the longer.

7. Where the provisional measures are revoked or where they lapse due to any actor omission by the applicant, or where it is subsequently found that there hasbeen no infringement or threat of infringement of an intellectual property right,the judicial authorities shall have the authority to order the applicant, upon re-quest of the defendant, to provide the defendant appropriate compensation forany injury caused by these measures.

8. To the extent that any provisional measure can be ordered as a result of admin-istrative procedures, such procedures shall conform to principles equivalent insubstance to those set forth in this Section.

Section 4: Special Requirements Related to Border Measures12

article 51suspension of release by customs authorities

Members shall, in conformity with the provisions set out below, adopt procedures13

to enable a right holder, who has valid grounds for suspecting that the importation

12. Where a Member has dismantled substantially all controls over movement of goodsacross its border with another Member with which it forms part of a customs union, it shallnot be required to apply the provisions of this Section at that border.

13. It is understood that there shall be no obligation to apply such procedures to importsof goods put on the market in another country by or with the consent of the right holder, orto goods in transit.

Appendix 507

of counterfeit trademark or pirated copyright goods14 may take place, to lodge anapplication in writing with competent authorities, administrative or judicial, for thesuspension by the customs authorities of the release into free circulation of suchgoods. Members may enable such an application to be made in respect of goodswhich involve other infringements of intellectual property rights, provided that therequirements of this Section are met. Members may also provide for correspondingprocedures concerning the suspension by the customs authorities of the release ofinfringing goods destined for exportation from their territories.

article 52application

Any right holder initiating the procedures under Article 51 above shall be requiredto provide adequate evidence to satisfy the competent authorities that, under thelaws of the country of importation, there is prima facie an infringement of his intel-lectual property right and to supply a sufficiently detailed description of the goodsto make them readily recognizable by the customs authorities. The competent au-thorities shall inform the applicant within a reasonable period whether they haveaccepted the application and, where determined by the competent authorities, theperiod for which the customs authorities will take action.

article 53security or equivalent assurance

1. The competent authorities shall have the authority to require an applicant toprovide a security or equivalent assurance sufficient to protect the defendant andthe competent authorities and to prevent abuse. Such security or equivalent as-surance shall not unreasonably deter recourse to these procedures.

2. Where pursuant to an application under this Section the release of goods in-volving industrial designs, patents, layout-designs or undisclosed informationinto free circulation has been suspended by customs authorities on the basisof a decision other than by a judicial or other independent authority, and theperiod provided for in Article 55 has expired without the granting of provisionalrelief by the duly empowered authority, and provided that all other conditionsfor importation have been complied with, the owner, importer, or consigneeof such goods shall be entitled to their release on the posting of a security in anamount sufficient to protect the right holder for any infringement. Payment ofsuch security shall not prejudice any other remedy available to the right holder,

14. For the purposes of this Agreement:counterfeit trademark goods shall mean any goods, including packaging, bearing without

authorization a trademark which is identical to the trademark validly registered in respect ofsuch goods, or which cannot be distinguished in its essential aspects from such a trademark,and which thereby infringes the rights of the owner of the trademark in question under thelaw of the country of importation;

pirated copyright goods shall mean any goods which are copies made without the con-sent of the right holder or person duly authorized by him in the country of production andwhich are made directly or indirectly from an article where the making of that copy wouldhave constituted an infringement of a copyright or a related right under the law of thecountry of importation.

508 Appendix

it being understood that the security shall be released if the right holder failsto pursue his right of action within a reasonable period of time.

article 54notice of suspension

The importer and the applicant shall be promptly notified of the suspension of therelease of goods according to Article 51 above.

article 55duration of suspension

If, within a period not exceeding ten working days after the applicant has been servednotice of the suspension, the customs authorities have not been informed that pro-ceedings leading to a decision on the merits of the case have been initiated by a partyother than the defendant, or that the duly empowered authority has taken provi-sional measures prolonging the suspension of the release of the goods, the goodsshall be released, provided that all other conditions for importation or exportationhave been complied with; in appropriate cases, this time-limit may be extended byanother ten working days. If proceedings leading to a decision on the merits of thecase have been initiated, a review, including a right to be heard, shall take placeupon request of the defendant with a view to deciding, within a reasonable period,whether these measures shall be modified, revoked or confirmed. Notwithstandingthe above, where the suspension of the release of goods is carried out or continuedin accordance with a provisional judicial measure, the provisions of Article 50, para-graph 6 above shall apply.

article 56indemnification of the importer and

of the owner of the goods

Relevant authorities shall have the authority to order the applicant to pay the im-porter, the consignee and the owner of the goods appropriate compensation for anyinjury caused to them through the wrongful detention of goods or through the de-tention of goods released pursuant to Article 55 above.

article 57right of inspection and information

Without prejudice to the protection of confidential information, Members shall pro-vide the competent authorities the authority to give the right holder sufficient op-portunity to have any product detained by the customs authorities inspected in orderto substantiate his claims. The competent authorities shall also have authority togive the importer an equivalent opportunity to have any such product inspected.Where a positive determination has been made on the merits of a case, Membersmay provide the competent authorities the authority to inform the right holder ofthe names and addresses of the consignor, the importer and the consignee and ofthe quantity of the goods in question.

Appendix 509

article 58EX OFFICIO action

Where Members require competent authorities to act upon their own initiative andto suspend the release of goods in respect of which they have acquired prima facieevidence that an intellectual property right is being infringed:(a) the competent authorities may at any time seek from the right holder any in-

formation that may assist them to exercise these powers;(b) the importer and the right holder shall be promptly notified of the suspension.

Where the importer has lodged an appeal against the suspension with the com-petent authorities, the suspension shall be subject to the conditions, mutatismutandis, set out at Article 55 above;

(c) Members shall only exempt both public authorities and officials from liabilityto appropriate remedial measures where actions are taken or intended in goodfaith.

article 59remedies

Without prejudice to other rights of action open to the right holder and subject tothe right of the defendant to seek review by a judicial authority, competent authori-ties shall have the authority to order the destruction or disposal of infringing goodsin accordance with the principles set out in Article 46 above. In regard to counter-feit trademark goods, the authorities shall not allow the reexportation of the infring-ing goods in an unaltered state or subject them to a different customs procedure,other than in exceptional circumstances.

article 60DE MINIMIS imports

Members may exclude from the application of the above provisions small quanti-ties of goods of a non-commercial nature contained in travellers’ personal luggageor sent in small consignments.

Section 5: Criminal Procedures

article 61

Members shall provide for criminal procedures and penalties to be applied at leastin cases of wilful trademark counterfeiting or copyright piracy on a commercialscale. Remedies available shall include imprisonment and/or monetary fines suffi-cient to provide a deterrent, consistently with the level of penalties applied for crimesof a corresponding gravity. In appropriate cases, remedies available shall also in-clude the seizure, forfeiture and destruction of the infringing goods and of any ma-terials and implements the predominant use of which has been in the commissionof the offence. Members may provide for criminal procedures and penalties to beapplied in other cases of infringement of intellectual property rights, in particularwhere they are committed wilfully and on a commercial scale.

510 Appendix

Part IV: Acquisition and Maintenance of IntellectualProperty Rights and Related Inter-Partes Procedures

article 62

1. Members may require, as a condition of the acquisition or maintenance of the in-tellectual property rights provided for under Sections 2–6 of Part II of this Agree-ment, compliance with reasonable procedures and formalities. Such proceduresand formalities shall be consistent with the provisions of this Agreement.

2. Where the acquisition of an intellectual property right is subject to the rightbeing granted or registered, Members shall ensure that the procedures for grantor registration, subject to compliance with the substantive conditions for acqui-sition of the right, permit the granting or registration of the right within a rea-sonable period of time so as to avoid unwarranted curtailment of the period ofprotection.

3. Article 4 of the Paris Convention (1967) shall apply mutatis mutandis to servicemarks.

4. Procedures concerning the acquisition or maintenance of intellectual propertyrights and, where the national law provides for such procedures, administrativerevocation and inter partes procedures such as opposition, revocation and can-cellation, shall be governed by the general principles set out in paragraphs 2 and3 of Article 41.

5. Final administrative decisions in any of the procedures referred to under para-graph 4 above shall be subject to review by a judicial or quasi-judicial author-ity. However, there shall be no obligation to provide an opportunity for suchreview of decisions in cases of unsuccessful opposition or administrative revo-cation, provided that the grounds for such procedures can be the subject ofinvalidation procedures.

Part V: Dispute Prevention and Settlement

article 63transparency

1. Laws and regulations, and final judicial decisions and administrative rulings ofgeneral application, made effective by any Member pertaining to the subject mat-ter of this Agreement (the availability, scope, acquisition, enforcement and pre-vention of the abuse of intellectual property rights) shall be published, or wheresuch publication is not practicable made publicly available, in a national lan-guage, in such a manner as to enable governments and right holders to becomeacquainted with them. Agreements concerning the subject matter of this Agree-ment which are in force between the government or a governmental agency ofany Member and the government or a governmental agency of any other Mem-ber shall also be published.

2. Members shall notify the laws and regulations referred to in paragraph 1 aboveto the Council for Trade-Related Aspects of Intellectual Property Rights in orderto assist that Council in its review of the operation of this Agreement. The Coun-

Appendix 511

cil shall attempt to minimize the burden on Members in carrying out this obliga-tion and may decide to waive the obligation to notify such laws and regulationsdirectly to the Council if consultations with the World Intellectual Property Or-ganization on the establishment of a common register containing these laws andregulations are successful. The Council shall also consider in this connection anyaction required regarding notifications pursuant to the obligations under thisAgreement stemming from the provisions of Article 6ter of the Paris Convention(1967).

3. Each Member shall be prepared to supply, in response to a written request fromanother Member, information of the sort referred to in paragraph 1 above. AMember, having reason to believe that a specific judicial decision or administra-tive ruling or bilateral agreement in the area of intellectual property rights af-fects its rights under this Agreement, may also request in writing to be givenaccess to or be informed in sufficient detail of such specific judicial decisions oradministrative rulings or bilateral agreements.

4. Nothing in paragraphs 1 to 3 above shall require Members to disclose confiden-tial information which would impede law enforcement or otherwise be contraryto the public interest or would prejudice the legitimate commercial interests ofparticular enterprises, public or private.

article 64dispute settlement

1. The provisions of Articles XXII and XXIII of the General Agreement on Tariffsand Trade 1994 as elaborated and applied by the Understanding on Rules andProcedures Governing the Settlement of Disputes shall apply to consultations andthe settlement of disputes under this Agreement except as otherwise specificallyprovided herein.

2. Sub-paragraphs XXIII:1(b) and XXIII:1(c) of the General Agreement on Tariffsand Trade 1994 shall not apply to the settlement of disputes under this Agree-ment for a period of five years from the entry into force of the Agreement estab-lishing the Multilateral Trade Organization.

3. During the time period referred to in paragraph 2, the TRIPs Council shall ex-amine the scope and modalities for Article XXIII:1(b) and Article XXIII:1(c)-typecomplaints made pursuant to this Agreement, and submit its recommendationsto the Ministerial Conference for approval. Any decision of the Ministerial Con-ference to approve such recommendations or to extend the period in paragraph2 shall be made only by consensus, and approved recommendations shall be ef-fective for all Members without further formal acceptance process.

Part VI: Transitional Arrangements

article 65transitional arrangements

1. Subject to the provisions of paragraphs 2, 3 and 4 below, no Member shall beobliged to apply the provisions of this Agreement before the expiry of a general

512 Appendix

period of one year following the date of entry into force of the Agreement Estab-lishing the MTO.

2. Any developing country Member is entitled to delay for a further period of fouryears from the date of application, as defined in paragraph 1 above, of the provi-sions of this Agreement other than Articles 3, 4 and 5 of Part I.

3. Any other Member which is in the process of transformation from a centrally-planned into a market, free-enterprise economy and which is undertaking struc-tural reform of its intellectual property system and facing special problems in thepreparation and implementation of intellectual property laws, may also benefitfrom a period of delay as foreseen in paragraph 2 above.

4. To the extent that a developing country Member is obliged by this Agreement toextend product patent protection to areas of technology not so protectable in itsterritory on the general date of application of this Agreement for that Member,as defined in paragraph 2 above, it may delay the application of the provisionson product patents of Section 5 of Part II of this Agreement to such areas of tech-nology for an additional period of five years.

5. Any Member availing itself of a transitional period under paragraphs 1, 2, 3 or 4above shall ensure that any changes in its domestic laws, regulations and prac-tice made during that period do not result in a lesser degree of consistency withthe provisions of this Agreement.

article 66least-developed-country members

1. In view of their special needs and requirements, their economic, financial andadministrative constraints, and their need for flexibility to create a viable tech-nological base, least-developed country Members shall not be required to applythe provisions of this Agreement, other than Articles 3, 4 and 5, for a period of10 years from the date of application as defined under paragraph 1 of Article 65above. The Council shall, upon duly motivated request by a least-developed coun-try Member, accord extensions of this period.

2. Developed country Members shall provide incentives to enterprises and institu-tions in their territories for the purpose of promoting and encouraging technol-ogy transfer to least-developed country Members in order to enable them to cre-ate a sound and viable technological base.

article 67technical cooperation

In order to facilitate the implementation of this Agreement, developed country Mem-bers shall provide, on request and on mutually agreed terms and conditions, tech-nical and financial cooperation in favour of developing and least-developed countryMembers. Such cooperation shall include assistance in the preparation of domesticlegislation on the protection and enforcement of intellectual property rights as wellas on the prevention of their abuse, and shall include support regarding the establish-ment or reinforcement of domestic offices and agencies relevant to these matters,including the training of personnel.

Appendix 513

Part VII: Institutional Arrangements; Final Provisions

article 68council for trade-related aspects

of intellectual property rights

The Council for Trade-Related Aspects of Intellectual Property Rights shall moni-tor the operation of this Agreement and, in particular, Members’ compliance withtheir obligations hereunder, and shall afford Members the opportunity of consult-ing on matters relating to the trade-related aspects of intellectual property rights. Itshall carry out such other responsibilities as assigned to it by the Members, and itshall, in particular, provide any assistance requested by them in the context of dis-pute settlement procedures. In carrying out its functions, the Council may consultwith and seek information from any source it deems appropriate. In consultationwith the World Intellectual Property Organization, the Council shall seek to estab-lish, within one year of its first meeting, appropriate arrangements for cooperationwith bodies of that Organization.

article 69international cooperation

Members agree to cooperate with each other with a view to eliminating interna-tional trade in goods infringing intellectual property rights. For this purpose, theyshall establish and notify contact points in their national administrations and beready to exchange information on trade in infringing goods. They shall, in particu-lar, promote the exchange of information and cooperation between customs authori-ties with regard to trade in counterfeit trademark goods and pirated copyright goods.

article 70protection of existing subject matter

1. This Agreement does not give rise to obligations in respect of acts which occurredbefore the date of application of the Agreement for the Member in question.

2. Except as otherwise provided for in this Agreement, this Agreement gives rise toobligations in respect of all subject matter existing at the date of application ofthis Agreement for the Member in question, and which is protected in that Mem-ber on the said date, or which meets or comes subsequently to meet the criteriafor protection under the terms of this Agreement. In respect of this paragraphand paragraphs 3 and 4 below, copyright obligations with respect to existingworks shall be solely determined under Article 18 of the Berne Convention (1971),and obligations with respect to the rights of producers of phonograms and per-formers in existing phonograms shall be determined solely under Article 18 ofthe Berne Convention (1971) as made applicable under paragraph 6 of Article14 of this Agreement.

3. There shall be no obligation to restore protection to subject matter which on thedate of application of this Agreement for the Member in question has fallen intothe public domain.

4. In respect of any acts in respect of specific objects embodying protected subjectmatter which become infringing under the terms of legislation in conformity with

514 Appendix

this Agreement, and which were commenced, or in respect of which a significantinvestment was made, before the date of acceptance of the Agreement Establish-ing the MTO by that Member, any Member may provide for a limitation of the rem-edies available to the right holder as to the continued performance of such acts afterthe date of application of the Agreement for that Member. In such cases the Membershall, however, at least provide for the payment of equitable remuneration.

5. A Member is not obliged to apply the provisions of Article 11 and of paragraph 4of Article 14 with respect to originals or copies purchased prior to the date of ap-plication of this Agreement for that Member.

6. Members shall not be required to apply Article 31, or the requirement in para-graph 1 of Article 27 that patent rights shall be enjoyable without discrimina-tion as to the field of technology, to use without the authorization of the rightholder where authorization for such use was granted by the government beforethe date this Agreement became known.

7. In the case of intellectual property rights for which protection is conditional uponregistration, applications for protection which are pending on the date of appli-cation of this Agreement for the Member in question shall be permitted to beamended to claim any enhanced protection provided under the provisions of thisAgreement. Such amendments shall not include new matter.

8. Where a Member does not make available as of the date of entry into force of theAgreement Establishing the MTO patent protection for pharmaceutical and ag-ricultural chemical products commensurate with its obligations under Article27, that Member shall:

(i) notwithstanding the provisions of Part VI above, provide as from the date ofentry into force of the Agreement Establishing the MTO a means by whichapplications for patents for such inventions can be filed;

(ii) apply to these applications, as of the date of application of this Agreement,the criteria for patentability as laid down in this Agreement as if those crite-ria were being applied on the date of filing in that Member or, where prior-ity is available and claimed, the priority date of the application;

(iii) provide patent protection in accordance with this Agreement as from thegrant of the patent and for the remainder of the patent term, counted fromthe filing date in accordance with Article 33 of this Agreement, for those ofthese applications that meet the criteria for protection referred to in sub-paragraph (ii) above.

9. Where a product is the subject of a patent application in a Member in accordancewith paragraph 8(i) above, exclusive marketing rights shall be granted, notwith-standing the provisions of Part VI above, for a period of five years after obtainingmarket approval in that Member or until a product patent is granted or rejectedin that Member, whichever period is shorter, provided that, subsequent to theentry into force of the Agreement Establishing the MTO, a patent application hasbeen filed and a patent granted for that product in another Member and market-ing approval obtained in such other Member.

article 71review and amendment

1. The Council for Trade-Related Aspects of Intellectual Property Rights shall re-view the implementation of this Agreement after the expiration of the transitionalperiod referred to in paragraph 2 of Article 65 above. The Council shall, having

Appendix 515

regard to the experience gained in its implementation, review it two years afterthat date, and at identical intervals thereafter. The Council may also undertakereviews in the light of any relevant new developments which might warrantmodification or amendment of this Agreement.

2. Amendments merely serving the purpose of adjusting to higher levels of protec-tion of intellectual property rights achieved, and in force, in other multilateralagreements and accepted under those agreements by all Members of the MTOmay be referred to the Ministerial Conference for action in accordance with Ar-ticle X, paragraph 6, of the Agreement Establishing the MTO on the basis of aconsensus proposal from the Council for Trade-Related Aspects of IntellectualProperty Rights.

article 72reservations

Reservations may not be entered in respect of any of the provisions of this Agree-ment without the consent of the other Members.

article 73security exceptions

Nothing in this Agreement shall be construed:(a) to require any Member to furnish any information the disclosure of which it

considers contrary to its essential security interests; or(b) to prevent any Member from taking any action which it considers necessary for

the protection of its essential security interests;(i) relating to fissionable materials or the materials from which they are

derived;(ii) relating to the traffic in arms, ammunition and implements of war and to

such traffic in other goods and materials as is carried on directly or indi-rectly for the purpose of supplying a military establishment;

(iii) taken in time of war or other emergency in international relations; or(c) to prevent any Member from taking any action in pursuance of its obligations

under the United Nations Charter for the maintenance of international peaceand security.

516 Appendix

516

A23. MEMBERSHIP OF THE

WORLD TRADE ORGANIZATION

(continued)

Angola .............................. 1 December 1996Antigua and

Barbuda ........................ 1 January 1995Argentina ......................... 1 January 1995Australia .......................... 1 January 1995Austria ............................. 1 January 1995Bahrain ............................ 1 January 1995Bangladesh ....................... 1 January 1995Barbados .......................... 1 January 1995Belgium ............................ 1 January 1995Belize ................................ 1 January 1995Benin ................................ 22 February 1996Bolivia .............................. 14 September 1995Botswana ......................... 31 May 1995Brazil ................................ 1 January 1995Brunei Darussalam .......... 1 January 1995Bulgaria ............................ 1 December 1996Burkina Faso .................... 3 June 1995Burundi ............................ 23 July 1995Cameroon ......................... 13 December 1995Canada ............................. 1 January 1995Central African

Republic ....................... 31 May 1995Chad ................................. 19 October 1996Chile .................................. 1 January 1995Colombia .......................... 30 April 1995Congo ............................... 27 March 1997Costa Rica ........................ 1 January 1995Côte d’Ivoire ..................... 1 January 1995Cuba ................................. 20 April 1995Cyprus .............................. 30 July 1995Czech Republic ................. 1 January 1995Democratic Republic

of the Congo ................. 1 January 1997Denmark .......................... 1 January 1995Djibouti ............................. 31 May 1995Dominica .......................... 1 January 1995Dominican Republic ........ 9 March 1995Ecuador ............................ 21 January 1996Egypt ................................. 30 June 1995El Salvador ....................... 7 May 1995European Community ..... 1 January 1995Fiji ..................................... 14 January 1996Finland ............................. 1 January 1995

134 members on 10 February 1999, with dates of membership in the WTO

France .............................. 1 January 1995Gabon ............................... 1 January 1995Gambia ............................. 23 October 1996Germany .......................... 1 January 1995Ghana ............................... 1 January 1995Greece ............................... 1 January 1995Grenada ............................ 22 February 1996Guatemala ........................ 21 July 1995Guinea .............................. 25 October 1995Guinea Bissau .................. 31 May 1995Guyana ............................. 1 January 1995Haiti .................................. 30 January 1996Honduras ......................... 1 January 1995Hong Kong, China ........... 1 January 1995Hungary ........................... 1 January 1995Iceland .............................. 1 January 1995India ................................. 1 January 1995Indonesia .......................... 1 January 1995Ireland .............................. 1 January 1995Israel ................................. 21 April 1995Italy .................................. 1 January 1995Jamaica ............................ 9 March 1995Japan ................................ 1 January 1995Kenya ............................... 1 January 1995Korea ................................ 1 January 1995Kuwait .............................. 1 January 1995The Kyrgyz Republic ....... 20 December 1998Latvia ................................ 10 February 1999Lesotho ............................. 31 May 1995Liechtenstein .................... 1 September 1995Luxembourg ..................... 1 January 1995Macau ............................... 1 January 1995Madagascar ...................... 17 November 1995Malawi .............................. 31 May 1995Malaysia ........................... 1 January 1995Maldives ........................... 31 May 1995Mali ................................... 31 May 1995Malta ................................ 1 January 1995Mauritania ....................... 31 May 1995Mauritius .......................... 1 January 1995Mexico .............................. 1 January 1995Mongolia .......................... 29 January 1997Morocco ........................... 1 January 1995Mozambique ..................... 26 August 1995

Appendix 517

Myanmar ......................... 1 January 1995Namibia ............................ 1 January 1995Netherlands—For the

Kingdom in Europeand for theNetherlands Antilles .... 1 January 1995

New Zealand .................... 1 January 1995Nicaragua ........................ 3 September 1995Niger ................................. 13 December 1996Nigeria .............................. 1 January 1995Norway ............................. 1 January 1995Pakistan ........................... 1 January 1995Panama ............................ 6 September 1997Papua New Guinea .......... 9 June 1996Paraguay .......................... 1 January 1995Peru .................................. 1 January 1995Philippines ....................... 1 January 1995Poland .............................. 1 July 1995Portugal ........................... 1 January 1995Qatar ................................ 13 January 1996Romania ........................... 1 January 1995Rwanda ............................ 22 May 1996Saint Kitts

and Nevis ...................... 21 February 1996Saint Lucia ....................... 1 January 1995Saint Vincent

and the Grenadines ..... 1 January 1995

(continued)

Senegal ............................. 1 January 1995Sierra Leone ..................... 23 July 1995Singapore ......................... 1 January 1995Slovak Republic ............... 1 January 1995Slovenia ............................ 30 July 1995Solomon Islands .............. 26 July 1996South Africa ..................... 1 January 1995Spain ................................. 1 January 1995Sri Lanka .......................... 1 January 1995Suriname .......................... 1 January 1995Swaziland ......................... 1 January 1995Sweden ............................. 1 January 1995Switzerland ...................... 1 July 1995Tanzania .......................... 1 January 1995Thailand ........................... 1 January 1995Togo .................................. 31 May 1995Trinidad and Tobago ....... 1 March 1995Tunisia ............................. 29 March 1995Turkey .............................. 26 March 1995Uganda ............................. 1 January 1995United Arab Emirates ...... 10 April 1996United Kingdom ............... 1 January 1995United States .................... 1 January 1995Uruguay ........................... 1 January 1995Venezuela ......................... 1 January 1995Zambia .............................. 1 January 1995Zimbabwe ......................... 3 March 1995

518 Appendix

518

A24. NORTH AMERICAN FREE TRADE AGREEMENT,

INTELLECTUAL PROPERTY PROVISIONS

[Done at Washington, December 8, 17, 1992; at Ottawa, December 11, 17, 1992;at Mexico City, December 14, 17, 1992]

Part Six: Intellectual Property

Chapter Seventeen

article 1701nature and scope of obligations

1. Each Party shall provide in its territory to the nationals of another Party adequateand effective protection and enforcement of intellectual property rights, whileensuring that measures to enforce intellectual property rights do not themselvesbecome barriers to legitimate trade.

2. To provide adequate and effective protection and enforcement of intellectualproperty rights, each Party shall, at a minimum, give effect to this Chapter andto the substantive provisions of:(a) the Geneva Convention for the Protection of Producers of Phonograms

Against Unauthorized Duplication of their Phonograms, 1971 (GenevaConvention);

(b) the Berne Convention for the Protection of Literary and Artistic Works, 1971(Berne Convention);

(c) the Paris Convention for the Protection of Industrial Property, 1967 (ParisConvention); and

(d) the International Convention for the Protection of New Varieties of Plants,1978 (UPOV Convention), or the International Convention for the Pro-tection of New Varieties of Plants, 1991 (UPOV Convention). If a Party hasnot acceded to the specified text of any such Conventions on or before thedate of entry into force of this Agreement, it shall make every effort toaccede.

3. Annex 1701.3 applies to the Parties specified in that Annex.

article 1702more extensive protection

A Party may implement in its domestic law more extensive protection of intellec-tual property rights than is required under this Agreement, provided that such pro-tection is not inconsistent with this Agreement.

Appendix 519


1. Each Party shall accord to nationals of another Party treatment no less favor-able than that it accords to its own nationals with regard to the protection andenforcement of all intellectual property rights. In respect of sound recordings,each Party shall provide such treatment to producers and performers of anotherParty, except that a Party may limit rights of performers of another Party in re-spect of secondary uses of sound recordings to those rights its nationals are ac-corded in the territory of such other Party.

2. No Party may, as a condition of according national treatment under this Article,require right holders to comply with any formalities or conditions in order to ac-quire rights in respect of copyright and related rights.

3. A Party may derogate from paragraph 1 in relation to its judicial and adminis-trative procedures for the protection or enforcement of intellectual propertyrights, including any procedure requiring a national of another Party to desig-nate for service of process an address in the Party’s territory or to appoint an agentin the Party’s territory, if the derogation is consistent with the relevant Conven-tion listed in Article 1701(2), provided that such derogation:(a) is necessary to secure compliance with measures that are not inconsistent

with this Chapter; and(b) is not applied in a manner that would constitute a disguised restriction on

trade.4. No Party shall have any obligation under this Article with respect to procedures

provided in multilateral agreements concluded under the auspices of the WorldIntellectual Property Organization relating to the acquisition or maintenance ofintellectual property rights.

article 1704control of abusive or anticompetitive

practices or conditions

Nothing in this Chapter shall prevent a Party from specifying in its domestic law li-censing practices or conditions that may in particular cases constitute an abuse ofintellectual property rights having an adverse effect on competition in the relevantmarket. A Party may adopt or maintain, consistent with the other provisions of thisAgreement, appropriate measures to prevent or control such practices or conditions.

article 1705copyright

1. Each Party shall protect the works covered by Article 2 of the Berne Convention,including any other works that embody original expression within the meaningof that Convention. In particular:(a) all types of computer programs are literary works within the meaning of the

Berne Convention and each Party shall protect them as such; and(b) compilations of data or other material, whether in machine readable or other

form, which by reason of the selection or arrangement of their contents con-stitute intellectual creations, shall be protected as such.

520 Appendix

The protection a Party provides under subparagraph (b) shall not extendto the data or material itself, or prejudice any copyright subsisting in thatdata or material.

2. Each Party shall provide to authors and their successors in interest those rightsenumerated in the Berne Convention in respect of works covered by paragraph1, including the right to authorize or prohibit:(a) the importation into the Party’s territory of copies of the work made with-

out the right holder’s authorization;(b) the first public distribution of the original and each copy of the work by sale,

rental or otherwise;(c) the communication of a work to the public; and(d) the commercial rental of the original or a copy of a computer program. Sub-

paragraph (d) shall not apply where the copy of the computer program is notitself an essential object of the rental. Each Party shall provide that puttingthe original or a copy of a computer program on the market with the rightholder’s consent shall not exhaust the rental right.

3. Each Party shall provide that for copyright and related rights:(a) any person acquiring or holding economic rights may freely and separately

transfer such rights by contract for purposes of their exploitation and enjoy-ment by the transferee; and

(b) any person acquiring or holding such economic rights by virtue of a contract,including contracts of employment underlying the creation of works andsound recordings, shall be able to exercise those rights in its own name andenjoy fully the benefits derived from those rights.

4. Each Party shall provide that, where the term of protection of a work, other thana photographic work or a work of applied art, is to be calculated on a basis otherthan the life of a natural person, the term shall be not less than 50 years fromthe end of the calendar year of the first authorized publication of the work or,failing such authorized publication within 50 years from the making of the work,50 years from the end of the calendar year of making.

5. Each Party shall confine limitations or exceptions to the rights provided for inthis Article to certain special cases that do not conflict with a normal exploita-tion of the work and do not unreasonably prejudice the legitimate interests ofthe right holder.

6. No Party may grant translation and reproduction licenses permitted under theAppendix to the Berne Convention where legitimate needs in that Party’s terri-tory for copies or translations of the work could be met by the right holder’s vol-untary actions but for obstacles created by the Party’s measures.


article 1706sound recordings

1. Each Party shall provide to the producer of a sound recording the right to autho-rize or prohibit:(a) the direct or indirect reproduction of the sound recording;(b) the importation into the Party’s territory of copies of the sound recording

made without the producer’s authorization;(c) the first public distribution of the original and each copy of the sound record-

ing by sale, rental or otherwise; and

Appendix 521

(d) the commercial rental of the original or a copy of the sound recording, ex-cept where expressly otherwise provided in a contract between the producerof the sound recording and the authors of the works fixed therein.

Each Party shall provide that putting the original or a copy of a sound re-cording on the market with the right holder’s consent shall not exhaust therental right.

2. Each Party shall provide a term of protection for sound recordings of at least 50years from the end of the calendar year in which the fixation was made.

3. Each Party shall confine limitations or exceptions to the rights provided for inthis Article to certain special cases that do not conflict with a normal exploita-tion of the sound recording and do not unreasonably prejudice the legitimate in-terests of the right holder.

article 1707protection of encrypted program-carrying

satellite signals

Within one year from the date of entry into force of this Agreement, each Party shallmake it:(a) a criminal offense to manufacture, import, sell, lease or otherwise make avail-

able a device or system that is primarily of assistance in decoding an encryptedprogram-carrying satellite signal without the authorization of the lawful dis-tributor of such signal; and

(b) a civil offense to receive, in connection with commercial activities, or furtherdistribute, an encrypted program-carrying satellite signal that has been decodedwithout the authorization of the lawful distributor of the signal or to engage inany activity prohibited under subparagraph (a).

Each Party shall provide that any civil offense established under subparagraph(b) shall be actionable by any person that holds an interest in the content of suchsignal.

article 1708trademarks

1. For purposes of this Agreement, a trademark consists of any sign, or any combina-tion of signs, capable of distinguishing the goods or services of one person fromthose of another, including personal names, designs, letters, numerals, colors, figu-rative elements, or the shape of goods or of their packaging. Trademarks shall in-clude service marks and collective marks, and may include certification marks. AParty may require, as a condition for registration, that a sign be visually perceptible.

2. Each Party shall provide to the owner of a registered trademark the right to pre-vent all persons not having the owner’s consent from using in commerce identi-cal or similar signs for goods or services that are identical or similar to those goodsor services in respect of which the owner’s trademark is registered, where suchuse would result in a likelihood of confusion. In the case of the use of an identicalsign for identical goods or services, a likelihood of confusion shall be presumed.The rights described above shall not prejudice any prior rights, nor shall they affectthe possibility of a Party making rights available on the basis of use.

3. A Party may make registrability depend on use. However, actual use of a trade-mark shall not be a condition for filing an application for registration. No Party

522 Appendix

may refuse an application solely on the ground that intended use has not takenplace before the expiry of a period of three years from the date of application forregistration.

4. Each Party shall provide a system for the registration of trademarks, which shallinclude:(a) examination of applications;(b) notice to be given to an applicant of the reasons for the refusal to register a

trademark;(c) a reasonable opportunity for the applicant to respond to the notice;(d) publication of each trademark either before or promptly after it is registered;

and(e) a reasonable opportunity for interested persons to petition to cancel the reg-

istration of a trademark.A Party may provide for a reasonable opportunity for interested persons to op-pose the registration of a trademark.

5. The nature of the goods or services to which a trademark is to be applied shall inno case form an obstacle to the registration of the trademark.

6. Article 6bis of the Paris Convention shall apply, with such modifications as maybe necessary, to services. In determining whether a trademark is well-known,account shall be taken of the knowledge of the trademark in the relevant sectorof the public, including knowledge in the Party’s territory obtained as a result ofthe promotion of the trademark. No Party may require that the reputation of thetrademark extend beyond the sector of the public that normally deals with therelevant goods or services.

7. Each Party shall provide that the initial registration of a trademark be for a termof at least 10 years and that the registration be indefinitely renewable for termsof not less than 10 years when conditions for renewal have been met.

8. Each Party shall require the use of a trademark to maintain a registration. Theregistration may be cancelled for the reason of non-use only after an uninter-rupted period of at least two years of non-use, unless valid reasons based on theexistence of obstacles to such use are shown by the trademark owner. Each Partyshall recognize, as valid reasons for non-use, circumstances arising indepen-dently of the will of the trademark owner that constitute an obstacle to the useof the trademark, such as import restrictions on, or other government require-ments for, goods or services identified by the trademark.

9. Each Party shall recognize use of a trademark by a person other than the trade-mark owner, where such use is subject to the owner’s control, as use of the trade-mark for purposes of maintaining the registration.

10. No Party may encumber the use of a trademark in commerce by special require-ments, such as a use that reduces the trademark’s function as an indication ofsource or a use with another trademark.

11. A Party may determine conditions on the licensing and assignment of trade-marks, it being understood that the compulsory licensing of trademarks shallnot be permitted and that the owner of a registered trademark shall have theright to assign its trademark with or without the transfer of the business towhich the trademark belongs.

12. A Party may provide limited exceptions to the rights conferred by a trademark,such as fair use of descriptive terms, provided that such exceptions take intoaccount the legitimate interests of the trademark owner and of other persons.

Appendix 523

13. Each Party shall prohibit the registration as a trademark of words, at least inEnglish, French or Spanish, that generically designate goods or services or typesof goods or services to which the trademark applies.

14. Each Party shall refuse to register trademarks that consist of or comprise im-moral, deceptive or scandalous matter, or matter that may disparage or falselysuggest a connection with persons, living or dead, institutions, beliefs or anyParty’s national symbols, or bring them into contempt or disrepute.

article 1709patents

1. Subject to paragraphs 2 and 3, each Party shall make patents available for anyinventions, whether products or processes, in all fields of technology, providedthat such inventions are new, result from an inventive step and are capable ofindustrial application. For purposes of this Article, a Party may deem the terms“inventive step” and “capable of industrial application” to be synonymous withthe terms “non-obvious” and “useful”, respectively.

2. A Party may exclude from patentability inventions if preventing in its territorythe commercial exploitation of the inventions is necessary to protect ordre publicor morality, including to protect human, animal or plant life or health or to avoidserious prejudice to nature or the environment, provided that the exclusion isnot based solely on the ground that the Party prohibits commercial exploitationin its territory of the subject matter of the patent.

3. A Party may also exclude from patentability:(a) diagnostic, therapeutic and surgical methods for the treatment of humans

or animals;(b) plants and animals other than microorganisms; and(c) essentially biological processes for the production of plants or animals, other

than non-biological and microbiological processes for such production.Notwithstanding subparagraph (b), each Party shall provide for the pro-

tection of plant varieties through patents, an effective scheme of sui generisprotection, or both.

4. If a Party has not made available product patent protection for pharmaceuticalor agricultural chemicals commensurate with paragraph 1:(a) as of January 1, 1992, for subject matter that relates to naturally occurring

substances prepared or produced by, or significantly derived from, microbio-logical processes and intended for food or medicine, and

(b) as of July 1, 1991, for any other subject matter, that Party shall provide tothe inventor of any such product or its assignee the means to obtain prod-uct patent protection for such product for the unexpired term of the patentfor such product granted in another Party, as long as the product has notbeen marketed in the Party providing protection under this paragraph andthe person seeking such protection makes a timely request.

5. Each Party shall provide that:(a) where the subject matter of a patent is a product, the patent shall confer on

the patent owner the right to prevent other persons from making, using or sell-ing the subject matter of the patent, without the patent owner’s consent; and

(b) where the subject matter of a patent is a process, the patent shall confer onthe patent owner the right to prevent other persons from using that process

524 Appendix

and from using, selling, or importing at least the product obtained directlyby that process, without the patent owner’s consent.

6. A Party may provide limited exceptions to the exclusive rights conferred by apatent, provided that such exceptions do not unreasonably conflict with a nor-mal exploitation of the patent and do not unreasonably prejudice the legitimateinterests of the patent owner, taking into account the legitimate interests of otherpersons.

7. Subject to paragraphs 2 and 3, patents shall be available and patent rights en-joyable without discrimination as to the field of technology, the territory of theParty where the invention was made and whether products are imported or lo-cally produced.

8. A Party may revoke a patent only when:(a) grounds exist that would have justified a refusal to grant the patent; or(b) the grant of a compulsory license has not remedied the lack of exploitation

of the patent.9. Each Party shall permit patent owners to assign and transfer by succession their

patents, and to conclude licensing contracts.10. Where the law of a Party allows for use of the subject matter of a patent, other

than that use allowed under paragraph 6, without the authorization of the rightholder, including use by the government or other persons authorized by the gov-ernment, the Party shall respect the following provisions:(a) authorization of such use shall be considered on its individual merits;(b) such use may only be permitted if, prior to such use, the proposed user has

made efforts to obtain authorization from the right holder on reasonablecommercial terms and conditions and such efforts have not been success-ful within a reasonable period of time. The requirement to make such ef-forts may be waived by a Party in the case of a national emergency or othercircumstances of extreme urgency or in cases of public non-commercialuse. In situations of national emergency or other circumstances of extremeurgency, the right holder shall, nevertheless, be notified as soon as reason-ably practicable. In the case of public non-commercial use, where the gov-ernment or contractor, without making a patent search, knows or has de-monstrable grounds to know that a valid patent is or will be used by or forthe government, the right holder shall be informed promptly;

(c) the scope and duration of such use shall be limited to the purpose for whichit was authorized;

(d) such use shall be non-exclusive;(e) such use shall be non-assignable, except with that part of the enterprise or

goodwill that enjoys such use;(f) any such use shall be authorized predominantly for the supply of the Party’s

domestic market;(g) authorization for such use shall be liable, subject to adequate protection of

the legitimate interests of the persons so authorized, to be terminated if andwhen the circumstances that led to it cease to exist and are unlikely to recur.The competent authority shall have the authority to review, on motivatedrequest, the continued existence of these circumstances;

(h) the right holder shall be paid adequate remuneration in the circumstancesof each case, taking into account the economic value of the authorization;

(i) the legal validity of any decision relating to the authorization shall be sub-ject to judicial or other independent review by a distinct higher authority;

Appendix 525

(j) any decision relating to the remuneration provided in respect of such useshall be subject to judicial or other independent review by a distinct higherauthority;

(k) the Party shall not be obliged to apply the conditions set out in subpara-graphs (b) and (f) where such use is permitted to remedy a practice deter-mined after judicial or administrative process to be anticompetitive. Theneed to correct anticompetitive practices may be taken into account in de-termining the amount of remuneration in such cases. Competent authori-ties shall have the authority to refuse termination of authorization if andwhen the conditions that led to such authorization are likely to recur;

(l) the Party shall not authorize the use of the subject matter of a patent topermit the exploitation of another patent except as a remedy for an adjudi-cated violation of domestic laws regarding anticompetitive practices.

11. Where the subject matter of a patent is a process for obtaining a product, eachParty shall, in any infringement proceeding, place on the defendant the bur-den of establishing that the allegedly infringing product was made by a processother than the patented process in one of the following situations:(a) the product obtained by the patented process is new; or(b) a substantial likelihood exists that the allegedly infringing product was

made by the process and the patent owner has been unable through rea-sonable efforts to determine the process actually used.

In the gathering and evaluation of evidence, the legitimate interests ofthe defendant in protecting its trade secrets shall be taken into account.

12. Each Party shall provide a term of protection for patents of at least 20 years fromthe date of filing or 17 years from the date of grant. A Party may extend the termof patent protection, in appropriate cases, to compensate for delays caused byregulatory approval processes.

article 1710layout designs of semiconductor

integrated circuits

1. Each Party shall protect layout designs (topographies) of integrated circuits (“lay-out designs”) in accordance with Articles 2 through 7, 12 and 16(3), other thanArticle 6(3), of the Treaty on Intellectual Property in Respect of Integrated Cir-cuits as opened for signature on May 26, 1989.

2. Subject to paragraph 3, each Party shall make it unlawful for any person with-out the right holder’s authorization to import, sell or otherwise distribute for com-mercial purposes any of the following:(a) a protected layout design;(b) an integrated circuit in which a protected layout design is incorporated; or(c) an article incorporating such an integrated circuit, only insofar as it contin-

ues to contain an unlawfully reproduced layout design.3. No Party may make unlawful any of the acts referred to in paragraph 2 performed

in respect of an integrated circuit that incorporates an unlawfully reproducedlayout design, or any article that incorporates such an integrated circuit, wherethe person performing those acts or ordering those acts to be done did not knowand had no reasonable ground to know, when it acquired the integrated circuitor article incorporating such an integrated circuit, that it incorporated an un-lawfully reproduced layout design.

526 Appendix

4. Each Party shall provide that, after the person referred to in paragraph 3 hasreceived sufficient notice that the layout design was unlawfully reproduced, suchperson may perform any of the acts with respect to the stock on hand or orderedbefore such notice, but shall be liable to pay the right holder for doing so anamount equivalent to a reasonable royalty such as would be payable under afreely negotiated license in respect of such a layout design.

5. No Party may permit the compulsory licensing of layout designs of integratedcircuits.

6. Any Party that requires registration as a condition for protection of a layoutdesign shall provide that the term of protection shall not end before the expira-tion of a period of 10 years counted from the date of:(a) filing of the application for registration; or(b) the first commercial exploitation of the layout design, wherever in the world

it occurs.7. Where a Party does not require registration as a condition for protection of a

layout design, the Party shall provide a term of protection of not less than 10 yearsfrom the date of the first commercial exploitation of the layout design, whereverin the world it occurs.

8. Notwithstanding paragraphs 6 and 7, a Party may provide that the protectionshall lapse 15 years after the creation of the layout design.


article 1711trade secrets

1. Each Party shall provide the legal means for any person to prevent trade secretsfrom being disclosed to, acquired by, or used by others without the consent ofthe person lawfully in control of the information in a manner contrary to hon-est commercial practices, in so far as:(a) the information is secret in the sense that it is not, as a body or in the precise

configuration and assembly of its components, generally known among orreadily accessible to persons that normally deal with the kind of informationin question;

(b) the information has actual or potential commercial value because it is secret;and

(c) the person lawfully in control of the information has taken reasonable stepsunder the circumstances to keep it secret.

2. A Party may require that to qualify for protection a trade secret must be evidencedin documents, electronic or magnetic means, optical discs, microfilms, films orother similar instruments.

3. No Party may limit the duration of protection for trade secrets, so long as theconditions in paragraph 1 exist.

4. No Party may discourage or impede the voluntary licensing of trade secrets byimposing excessive or discriminatory conditions on such licenses or conditionsthat dilute the value of the trade secrets.

5. If a Party requires, as a condition for approving the marketing of pharmaceuti-cal or agricultural chemical products that utilize new chemical entities, the sub-mission of undisclosed test or other data necessary to determine whether the useof such products is safe and effective, the Party shall protect against disclosureof the data of persons making such submissions, where the origination of such

Appendix 527

data involves considerable effort, except where the disclosure is necessary toprotect the public or unless steps are taken to ensure that the data is protectedagainst unfair commercial use.

6. Each Party shall provide that for data subject to paragraph 5 that are submittedto the Party after the date of entry into force of this Agreement, no person otherthan the person that submitted them may, without the latter’s permission, relyon such data in support of an application for product approval during a reason-able period of time after their submission. For this purpose, a reasonable periodshall normally mean not less than five years from the date on which the Partygranted approval to the person that produced the data for approval to market itsproduct, taking account of the nature of the data and the person’s efforts andexpenditures in producing them. Subject to this provision, there shall be no limi-tation on any Party to implement abbreviated approval procedures for such prod-ucts on the basis of bioequivalence and bioavailability studies.

7. Where a Party relies on a marketing approval granted by another Party, thereasonable period of exclusive use of the data submitted in connection with ob-taining the approval relied on shall begin with the date of the first marketingapproval relied on.

article 1712geographical indications

1. Each Party shall provide, in respect of geographical indications, the legal meansfor interested persons to prevent:(a) the use of any means in the designation or presentation of a good that indi-

cates or suggests that the good in question originates in a territory, regionor locality other than the true place of origin, in a manner that misleads thepublic as to the geographical origin of the good;

(b) any use that constitutes an act of unfair competition within the meaning ofArticle 10bis of the Paris Convention.

2. Each Party shall, on its own initiative if its domestic law so permits or at the re-quest of an interested person, refuse to register, or invalidate the registration of,a trademark containing or consisting of a geographical indication with respectto goods that do not originate in the indicated territory, region or locality, if useof the indication in the trademark for such goods is of such a nature as to mis-lead the public as to the geographical origin of the good.

3. Each Party shall also apply paragraphs 1 and 2 to a geographical indication that,although correctly indicating the territory, region or locality in which the goodsoriginate, falsely represents to the public that the goods originate in another ter-ritory, region or locality.

4. Nothing in this Article shall be construed to require a Party to prevent contin-ued and similar use of a particular geographical indication of another Party inconnection with goods or services by any of its nationals or domiciliaries whohave used that geographical indication in a continuous manner with regard tothe same or related goods or services in that Party’s territory, either:(a) for at least 10 years, or(b) in good faith, before the date of signature of this Agreement.

5. Where a trademark has been applied for or registered in good faith, or whererights to a trademark have been acquired through use in good faith, either:(a) before the date of application of these provisions in that Party, or

528 Appendix

(b) before the geographical indication is protected in its Party of origin, no Partymay adopt any measure to implement this Article that prejudices eligibilityfor, or the validity of, the registration of a trademark, or the right to use atrademark, on the basis that such a trademark is identical with, or similarto, a geographical indication.

6. No Party shall be required to apply this Article to a geographical indication if itis identical to the customary term in common language in that Party’s territoryfor the goods or services to which the indication applies.

7. A Party may provide that any request made under this Article in connection withthe use or registration of a trademark must be presented within five years afterthe adverse use of the protected indication has become generally known in thatParty or after the date of registration of the trademark in that Party, providedthat the trademark has been published by that date, if such date is earlier thanthe date on which the adverse use became generally known in that Party, pro-vided that the geographical indication is not used or registered in bad faith.

8. No Party shall adopt any measure implementing this Article that would preju-dice any person’s right to use, in the course of trade, its name or the name of itspredecessor in business, except where such name forms all or part of a valid trade-mark in existence before the geographical indication became protected and withwhich there is a likelihood of confusion, or such name is used in such a manneras to mislead the public.

9. Nothing in this Chapter shall be construed to require a Party to protect a geo-graphical indication that is not protected, or has fallen into disuse, in the Partyof origin.

article 1713industrial designs

1. Each Party shall provide for the protection of independently created industrialdesigns that are new or original. A Party may provide that:(a) designs are not new or original if they do not significantly differ from known

designs or combinations of known design features; and(b) such protection shall not extend to designs dictated essentially by technical

or functional considerations.2. Each Party shall ensure that the requirements for securing protection for textile

designs, in particular in regard to any cost, examination or publication, do notunreasonably impair a person’s opportunity to seek and obtain such protection.A Party may comply with this obligation through industrial design law or copy-right law.

3. Each Party shall provide the owner of a protected industrial design the right toprevent other persons not having the owner’s consent from making or sellingarticles bearing or embodying a design that is a copy, or substantially a copy, ofthe protected design, when such acts are undertaken for commercial purposes.

4. A Party may provide limited exceptions to the protection of industrial designs,provided that such exceptions do not unreasonably conflict with the normal ex-ploitation of protected industrial designs and do not unreasonably prejudice thelegitimate interests of the owner of the protected design, taking into account thelegitimate interests of other persons.

5. Each Party shall provide a term of protection for industrial designs of at least 10years.

Appendix 529

article 1714enforcement of intellectual property rights:

general provisions

1. Each Party shall ensure that enforcement procedures, as specified in this Articleand Articles 1715 through 1718, are available under its domestic law so as topermit effective action to be taken against any act of infringement of intellectualproperty rights covered by this Chapter, including expeditious remedies to pre-vent infringements and remedies to deter further infringements. Such enforce-ment procedures shall be applied so as to avoid the creation of barriers to legiti-mate trade and to provide for safeguards against abuse of the procedures.

2. Each Party shall ensure that its procedures for the enforcement of intellectualproperty rights are fair and equitable, are not unnecessarily complicated or costly,and do not entail unreasonable time-limits or unwarranted delays.

3. Each Party shall provide that decisions on the merits of a case in judicial andadministrative enforcement proceedings shall:(a) preferably be in writing and preferably state the reasons on which the deci-

sions are based;(b) be made available at least to the parties in a proceeding without undue delay;

and(c) be based only on evidence in respect of which such parties were offered the

opportunity to be heard.4. Each Party shall ensure that parties in a proceeding have an opportunity to have

final administrative decisions reviewed by a judicial authority of that Party and,subject to jurisdictional provisions in its domestic laws concerning the impor-tance of a case, to have reviewed at least the legal aspects of initial judicial deci-sions on the merits of a case. Notwithstanding the above, no Party shall be re-quired to provide for judicial review of acquittals in criminal cases.

5. Nothing in this Article or Articles 1715 through 1718 shall be construed to re-quire a Party to establish a judicial system for the enforcement of intellectualproperty rights distinct from that Party’s system for the enforcement of laws ingeneral.

6. For the purposes of Articles 1715 through 1718, the term “right holder” includesfederations and associations having legal standing to assert such rights.

article 1715specific procedural and remedial aspects of

civil and administrative procedures

1. Each Party shall make available to right holders civil judicial procedures for theenforcement of any intellectual property right provided in this Chapter. EachParty shall provide that:(a) defendants have the right to written notice that is timely and contains suffi-

cient detail, including the basis of the claims;(b) parties in a proceeding are allowed to be represented by independent legal

counsel;(c) the procedures do not include imposition of overly burdensome requirements

concerning mandatory personal appearances;(d) all parties in a proceeding are duly entitled to substantiate their claims and

to present relevant evidence; and

530 Appendix

(e) the procedures include a means to identify and protect confidentialinformation.

2. Each Party shall provide that its judicial authorities shall have the authority:(a) where a party in a proceeding has presented reasonably available evidence

sufficient to support its claims and has specified evidence relevant tothe substantiation of its claims that is within the control of the opposingparty, to order the opposing party to produce such evidence, subject inappropriate cases to conditions that ensure the protection of confidentialinformation;

(b) where a party in a proceeding voluntarily and without good reason refusesaccess to, or otherwise does not provide relevant evidence under that party’scontrol within a reasonable period, or significantly impedes a proceedingrelating to an enforcement action, to make preliminary and final determi-nations, affirmative or negative, on the basis of the evidence presented, in-cluding the complaint or the allegation presented by the party adversely af-fected by the denial of access to evidence, subject to providing the parties anopportunity to be heard on the allegations or evidence;

(c) to order a party in a proceeding to desist from an infringement, includingto prevent the entry into the channels of commerce in their jurisdiction ofimported goods that involve the infringement of an intellectual propertyright, which order shall be enforceable at least immediately after customsclearance of such goods;

(d) to order the infringer of an intellectual property right to pay the right holderdamages adequate to compensate for the injury the right holder has sufferedbecause of the infringement where the infringer knew or had reasonablegrounds to know that it was engaged in an infringing activity;

(e) to order an infringer of an intellectual property right to pay the right holder’sexpenses, which may include appropriate attorney’s fees; and

(f) to order a party in a proceeding at whose request measures were taken andwho has abused enforcement procedures to provide adequate compensationto any party wrongfully enjoined or restrained in the proceeding for the in-jury suffered because of such abuse and to pay that party’s expenses, whichmay include appropriate attorney’s fees.

3. With respect to the authority referred to in subparagraph 2(c), no Party shall beobliged to provide such authority in respect of protected subject matter that isacquired or ordered by a person before that person knew or had reasonable groundsto know that dealing in that subject matter would entail the infringement of anintellectual property right.

4. With respect to the authority referred to in subparagraph 2(d), a Party may, atleast with respect to copyrighted works and sound recordings, authorize the judi-cial authorities to order recovery of profits or payment of pre-established damages,or both, even where the infringer did not know or had no reasonable grounds toknow that it was engaged in an infringing activity.

5. Each Party shall provide that, in order to create an effective deterrent to infringe-ment, its judicial authorities shall have the authority to order that:(a) goods that they have found to be infringing be, without compensation of any

sort, disposed of outside the channels of commerce in such a manner as toavoid any injury caused to the right holder or, unless this would be contraryto existing constitutional requirements, destroyed; and

Appendix 531

(b) materials and implements the predominant use of which has been in the cre-ation of the infringing goods be, without compensation of any sort, disposedof outside the channels of commerce in such a manner as to minimize therisks of further infringements.

In considering whether to issue such an order, judicial authorities shalltake into account the need for proportionality between the seriousness of theinfringement and the remedies ordered as well as the interests of other per-sons. In regard to counterfeit goods, the simple removal of the trademark un-lawfully affixed shall not be sufficient, other than in exceptional cases, to per-mit release of the goods into the channels of commerce.

6. In respect of the administration of any law pertaining to the protection or enforce-ment of intellectual property rights, each Party shall only exempt both public au-thorities and officials from liability to appropriate remedial measures where actionsare taken or intended in good faith in the course of the administration of such laws.

7. Notwithstanding the other provisions of Articles 1714 through 1718, where aParty is sued with respect to an infringement of an intellectual property right asa result of its use of that right or use on its behalf, that Party may limit the rem-edies available against it to the payment to the right holder of adequate remu-neration in the circumstances of each case, taking into account the economicvalue of the use.

8. Each Party shall provide that, where a civil remedy can be ordered as a result ofadministrative procedures on the merits of a case, such procedures shall conformto principles equivalent in substance to those set out in this Article.

article 1716provisional measures

1. Each Party shall provide that its judicial authorities shall have the authority toorder prompt and effective provisional measures:(a) to prevent an infringement of any intellectual property right, and in particu-

lar to prevent the entry into the channels of commerce in their jurisdictionof allegedly infringing goods, including measures to prevent the entry of im-ported goods at least immediately after customs clearance; and

(b) to preserve relevant evidence in regard to the alleged infringement.2. Each Party shall provide that its judicial authorities shall have the authority to

require any applicant for provisional measures to provide to the judicial authoritiesany evidence reasonably available to that applicant that the judicial authoritiesconsider necessary to enable them to determine with a sufficient degree of certaintywhether:(a) the applicant is the right holder;(b) the applicant’s right is being infringed or such infringement is imminent; and(c) any delay in the issuance of such measures is likely to cause irreparable

harm to the right holder, or there is a demonstrable risk of evidence beingdestroyed.

Each Party shall provide that its judicial authorities shall have the author-ity to require the applicant to provide a security or equivalent assurance suf-ficient to protect the interests of the defendant and to prevent abuse.

3. Each Party shall provide that its judicial authorities shall have the authority torequire an applicant for provisional measures to provide other information nec-

532 Appendix

essary for the identification of the relevant goods by the authority that will exe-cute the provisional measures.

4. Each Party shall provide that its judicial authorities shall have the authority toorder provisional measures on an ex parte basis, in particular where any delayis likely to cause irreparable harm to the right holder, or where there is a demon-strable risk of evidence being destroyed.

5. Each Party shall provide that where provisional measures are adopted by thatParty’s judicial authorities on an ex parte basis:(a) a person affected shall be given notice of those measures without delay

but in any event no later than immediately after the execution of themeasures;

(b) a defendant shall, on request, have those measures reviewed by that Party’sjudicial authorities for the purpose of deciding, within a reasonable periodafter notice of those measures is given, whether the measures shall be modi-fied, revoked or confirmed, and shall be given an opportunity to be heard inthe review proceedings.

6. Without prejudice to paragraph 5, each Party shall provide that, on the requestof the defendant, the Party’s judicial authorities shall revoke or otherwise ceaseto apply the provisional measures taken on the basis of paragraphs 1 and 4 if pro-ceedings leading to a decision on the merits are not initiated:(a) within a reasonable period as determined by the judicial authority ordering

the measures where the Party’s domestic law so permits; or(b) in the absence of such a determination, within a period of no more than 20

working days or 31 calendar days, whichever is longer.7. Each Party shall provide that, where the provisional measures are revoked or

where they lapse due to any act or omission by the applicant, or where the judi-cial authorities subsequently find that there has been no infringement or threatof infringement of an intellectual property right, the judicial authorities shallhave the authority to order the applicant, on request of the defendant, to pro-vide the defendant appropriate compensation for any injury caused by thesemeasures.

8. Each Party shall provide that, where a provisional measure can be ordered as aresult of administrative procedures, such procedures shall conform to principlesequivalent in substance to those set out in this Article.

article 1717criminal procedures and penalties

1. Each Party shall provide criminal procedures and penalties to be applied at leastin cases of willful trademark counterfeiting or copyright piracy on a commercialscale. Each Party shall provide that penalties available include imprisonment ormonetary fines, or both, sufficient to provide a deterrent, consistent with the levelof penalties applied for crimes of a corresponding gravity.

2. Each Party shall provide that, in appropriate cases, its judicial authorities mayorder the seizure, forfeiture and destruction of infringing goods and of any ma-terials and implements the predominant use of which has been in the commis-sion of the offense.

3. A Party may provide criminal procedures and penalties to be applied in cases ofinfringement of intellectual property rights, other than those in paragraph 1,where they are committed wilfully and on a commercial scale.

Appendix 533

article 1718enforcement of intellectual property rights

at the border

1. Each Party shall, in conformity with this Article, adopt procedures to enable aright holder, who has valid grounds for suspecting that the importation of coun-terfeit trademark goods or pirated copyright goods may take place, to lodge anapplication in writing with its competent authorities, whether administrative orjudicial, for the suspension by the customs administration of the release of suchgoods into free circulation. No Party shall be obligated to apply such proceduresto goods in transit. A Party may permit such an application to be made in respectof goods that involve other infringements of intellectual property rights, providedthat the requirements of this Article are met. A Party may also provide for corre-sponding procedures concerning the suspension by the customs administrationof the release of infringing goods destined for exportation from its territory.

2. Each Party shall require any applicant who initiates procedures under paragraph1 to provide adequate evidence:(a) to satisfy that Party’s competent authorities that, under the domestic laws

of the country of importation, there is prima facie an infringement of its in-tellectual property right; and

(b) to supply a sufficiently detailed description of the goods to make them readilyrecognizable by the customs administration.

The competent authorities shall inform the applicant within a reasonableperiod whether they have accepted the application and, if so, the period forwhich the customs administration will take action.

3. Each Party shall provide that its competent authorities shall have the authorityto require an applicant under paragraph 1 to provide a security or equivalent as-surance sufficient to protect the defendant and the competent authorities andto prevent abuse. Such security or equivalent assurance shall not unreasonablydeter recourse to these procedures.

4. Each Party shall provide that, where pursuant to an application under proce-dures adopted pursuant to this Article, its customs administration suspends therelease of goods involving industrial designs, patents, integrated circuits or tradesecrets into free circulation on the basis of a decision other than by a judicial orother independent authority, and the period provided for in paragraphs 6 through8 has expired without the granting of provisional relief by the duly empoweredauthority, and provided that all other conditions for importation have been com-plied with, the owner, importer or consignee of such goods shall be entitled totheir release on the posting of a security in an amount sufficient to protect theright holder against any infringement. Payment of such security shall not preju-dice any other remedy available to the right holder, it being understood that thesecurity shall be released if the right holder fails to pursue its right of action withina reasonable period of time.

5. Each Party shall provide that its customs administration shall promptly notifythe importer and the applicant when the customs administration suspends therelease of goods pursuant to paragraph 1.

6. Each Party shall provide that its customs administration shall release goods fromsuspension if within a period not exceeding 10 working days after the applicantunder paragraph 1 has been served notice of the suspension the customs admin-istration has not been informed that:

534 Appendix

(a) a party other than the defendant has initiated proceedings leading to a deci-sion on the merits of the case, or

(b) a competent authority has taken provisional measures prolonging the sus-pension, provided that all other conditions for importation or exportationhave been met. Each Party shall provide that, in appropriate cases, thecustoms administration may extend the suspension by another 10 workingdays.

7. Each Party shall provide that if proceedings leading to a decision on the meritsof the case have been initiated, a review, including a right to be heard, shall takeplace on request of the defendant with a view to deciding, within a reasonableperiod, whether these measures shall be modified, revoked or confirmed.

8. Notwithstanding paragraphs 6 and 7, where the suspension of the release ofgoods is carried out or continued in accordance with a provisional judicial mea-sure, Article 1716(6) shall apply.

9. Each Party shall provide that its competent authorities shall have the authorityto order the applicant under paragraph 1 to pay the importer, the consignee andthe owner of the goods appropriate compensation for any injury caused to themthrough the wrongful detention of goods or through the detention of goods re-leased pursuant to paragraph 6.

10. Without prejudice to the protection of confidential information, each Party shallprovide that its competent authorities shall have the authority to give the rightholder sufficient opportunity to have any goods detained by the customs admin-istration inspected in order to substantiate the right holder’s claims. Each Partyshall also provide that its competent authorities have the authority to give theimporter an equivalent opportunity to have any such goods inspected. Where thecompetent authorities have made a positive determination on the merits of a case,a Party may provide the competent authorities the authority to inform the rightholder of the names and addresses of the consignor, the importer and the con-signee, and of the quantity of the goods in question.

11. Where a Party requires its competent authorities to act on their own initiativeand to suspend the release of goods in respect of which they have acquired primafacie evidence that an intellectual property right is being infringed:(a) the competent authorities may at any time seek from the right holder any

information that may assist them to exercise these powers;(b) the importer and the right holder shall be promptly notified of the suspen-

sion by the Party’s competent authorities, and where the importer lodgesan appeal against the suspension with competent authorities, the suspen-sion shall be subject to the conditions, with such modifications as may benecessary, set out in paragraphs 6 through 8; and

(c) the Party shall only exempt both public authorities and officials from liabilityto appropriate remedial measures where actions are taken or intended in goodfaith.

12. Without prejudice to other rights of action open to the right holder and subjectto the defendant’s right to seek judicial review, each Party shall provide that itscompetent authorities shall have the authority to order the destruction or dis-posal of infringing goods in accordance with the principles set out in Article1715(5). In regard to counterfeit goods, the authorities shall not allow the re-exportation of the infringing goods in an unaltered state or subject them to a dif-ferent customs procedure, other than in exceptional circumstances.

Appendix 535

13. A Party may exclude from the application of paragraphs 1 through 12 smallquantities of goods of a non-commercial nature contained in travellers’ personalluggage or sent in small consignments that are not repetitive.


article 1719cooperation and technical assistance

1. The Parties shall provide each other on mutually agreed terms with technicalassistance and shall promote cooperation between their competent authorities.Such cooperation shall include the training of personnel.

2. The Parties shall cooperate with a view to eliminating trade in goods that infringeintellectual property rights. For this purpose, each Party shall establish and no-tify the other Parties by January 1, 1994, of contact points in its federal govern-ment and shall exchange information concerning trade in infringing goods.

article 1720protection of existing subject matter

1. Except as required under Article 1705(7), this Agreement does not give rise toobligations in respect of acts that occurred before the date of application of therelevant provisions of this Agreement for the Party in question.

2. Except as otherwise provided for in this Agreement, each Party shall apply thisAgreement to all subject matter existing on the date of application of the relevantprovisions of this Agreement for the Party in question and that is protected in aParty on such date, or that meets or subsequently meets the criteria for protec-tion under the terms of this Chapter. In respect of this paragraph and paragraphs3 and 4, a Party’s obligations with respect to existing works shall be solely deter-mined under Article 18 of the Berne Convention and with respect to the rights ofproducers of sound recordings in existing sound recordings shall be determined solelyunder Article 18 of that Convention, as made applicable under this Agreement.

3. Except as required under Article 1705(7), and notwithstanding the first sentenceof paragraph 2, no Party may be required to restore protection to subject matterthat, on the date of application of the relevant provisions of this Agreement forthe Party in question, has fallen into the public domain in its territory.

4. In respect of any acts relating to specific objects embodying protected subjectmatter that become infringing under the terms of laws in conformity with thisAgreement, and that were begun or in respect of which a significant investmentwas made, before the date of entry into force of this Agreement for that Party,any Party may provide for a limitation of the remedies available to the right holderas to the continued performance of such acts after the date of application of thisAgreement for that Party. In such cases, the Party shall, however, at least pro-vide for payment of equitable remuneration.

5. No Party shall be obliged to apply Article 1705(2)(d) or 1706(1)(d) with respectto originals or copies purchased prior to the date of application of the relevantprovisions of this Agreement for that Party.

6. No Party shall be required to apply Article 1709(10), or the requirement in Ar-ticle 1709(7) that patent rights shall be enjoyable without discrimination as tothe field of technology, to use without the authorization of the right holder where

536 Appendix

authorization for such use was granted by the government before the text of theDraft Final Act Embodying the Results of the Uruguay Round of MultilateralTrade Negotiations became known.

7. In the case of intellectual property rights for which protection is conditional onregistration, applications for protection that are pending on the date of applica-tion of the relevant provisions of this Agreement for the Party in question shallbe permitted to be amended to claim any enhanced protection provided underthis Agreement. Such amendments shall not include new matter.


1. For purposes of this Chapter:confidential information includes trade secrets, privileged information and othermaterials exempted from disclosure under the Party’s domestic law.

2. For purposes of this Agreement:encrypted program-carrying satellite signal means a program-carrying satellitesignal that is transmitted in a form whereby the aural or visual characteristics,or both, are modified or altered for the purpose of preventing the unauthorizedreception, by persons without the authorized equipment that is designed to elimi-nate the effects of such modification or alteration, of a program carried in thatsignal;geographical indication means any indication that identifies a good as originat-ing in the territory of a Party, or a region or locality in that territory, where aparticular quality, reputation or other characteristic of the good is essentiallyattributable to its geographical origin;in a manner contrary to honest commercial practices means at least practicessuch as breach of contract, breach of confidence and inducement to breach, andincludes the acquisition of undisclosed information by other persons who knew,or were grossly negligent in failing to know, that such practices were involvedin the acquisition;intellectual property rights refers to copyright and related rights, trademarkrights, patent rights, rights in layout designs of semiconductor integrated circuits,trade secret rights, plant breeders’ rights, rights in geographical indications andindustrial design rights;nationals of another Party means, in respect of the relevant intellectual propertyright, persons who would meet the criteria for eligibility for protection providedfor in the Paris Convention (1967), the Berne Convention (1971), the Geneva Con-vention (1971), the International Convention for the Protection of Performers, Pro-ducers of Phonograms and Broadcasting Organizations (1961), the UPOV Conven-tion (1978), the UPOV Convention (1991) or the Treaty on Intellectual Propertyin Respect of Integrated Circuits, as if each Party were a party to those Conven-tions, and with respect to intellectual property rights that are not the subject ofthese Conventions, “nationals of another Party” shall be understood to be at leastindividuals who are citizens or permanent residents of that Party and also in-cludes any other natural person referred to in Annex 201.1 (Country-SpecificDefinitions);public includes, with respect to rights of communication and performance ofworks provided for under Articles 11, 11bis(1) and 14(1)(ii) of the Berne Conven-tion, with respect to dramatic, dramatico-musical, musical and cinematographic

Appendix 537

works, at least, any aggregation of individuals intended to be the object of, andcapable of perceiving, communications or performances of works, regardless ofwhether they can do so at the same or different times or in the same or differentplaces, provided that such an aggregation is larger than a family and its imme-diate circle of acquaintances or is not a group comprising a limited number ofindividuals having similarly close ties that has not been formed for the principalpurpose of receiving such performances and communications of works; andsecondary uses of sound recordings means the use directly for broadcasting orfor any other public communication of a sound recording.

annex 1701.3intellectual property conventions

1. Mexico shall:(a) make every effort to comply with the substantive provisions of the 1978 or

1991 UPOV Convention as soon as possible and shall do so no later than twoyears after the date of signature of this Agreement; and

(b) accept from the date of entry into force of this Agreement applications fromplant breeders for varieties in all plant genera and species and grant protec-tion, in accordance with such substantive provisions, promptly after com-plying with subparagraph (a).

2. Notwithstanding Article 1701(2)(b), this Agreement confers no rights and im-poses no obligations on the United States with respect to Article 6bis of the BerneConvention, or the rights derived from that Article.

annex 1705.7copyright

The United States shall provide protection to motion pictures produced in anotherParty’s territory that have been declared to be in the public domain pursuant to 17U.S.C. section 405. This obligation shall apply to the extent that it is consistent withthe Constitution of the United States, and is subject to budgetary considerations.

annex 1710.9layout designs

Mexico shall make every effort to implement the requirements of Article 1710 as soonas possible, and shall do so no later than four years after the date of entry into forceof this Agreement.

annex 1718.14enforcement of intellectual property rights

Mexico shall make every effort to comply with the requirements of Article 1718 assoon as possible and shall do so no later than three years after the date of signatureof this Agreement.

538 Appendix

538

A25. E.C. DIRECTIVE ON THE LEGAL PROTECTION

OF COMPUTER PROGRAMS

COUNCIL DIRECTIVE of 14 May 1991 on the legalprotection of computer programs (91/250/EEC)

THE COUNCIL OF THE EUROPEAN COMMUNITIES,

Having regard to the Treaty establishing the European Economic Community andin particular Article 100a thereof,

Having regard to the proposal from the Commission,

In cooperation with the European Parliament,

Having regard to the opinion of the Economic and Social Committee,

Whereas computer programs are at present not clearly protected in all MemberStates by existing legislation and such protection, where it exists, has differentattributes;

Whereas the development of computer programs requires the investment of con-siderable human, technical and financial resources while computer programs canbe copied at a fraction of the cost needed to develop them independently;

Whereas computer programs are playing an increasingly important role in a broadrange of industries and computer program technology can accordingly be consideredas being of fundamental importance for the Community’s industrial development;

Whereas certain differences in the legal protection of computer programs offeredby the laws of the Member States have direct and negative effects on the function-ing of the common market as regards computer programs and such differences couldwell become greater as Member States introduce new legislation on this subject;

Whereas existing differences having such effects need to be removed and new onesprevented from arising, while differences not adversely affecting the functioning ofthe common market to a substantial degree need not be removed or prevented fromarising;

Whereas the Community’s legal framework on the protection of computer programscan accordingly in the first instance be limited to establishing that Member Statesshould accord protection to computer programs under copyright law as literaryworks and, further, to establishing who and what should be protected, the exclu-sive rights on which protected persons should be able to rely in order to authorizeor prohibit certain acts and for how long the protection should apply;

Whereas, for the purpose of this Directive, the term ‘computer program’ shall in-clude programs in any form, including those which are incorporated into hardware;whereas this term also includes preparatory design work leading to the developmentof a computer program provided that the nature of the preparatory work is such thata computer program can result from it at a later stage;

Appendix 539

Whereas, in respect of the criteria to be applied in determining whether or not acomputer program is an original work, no tests as to the qualitative or aestheticmerits of the program should be applied;

Whereas the Community is fully committed to the promotion of internationalstandardization;

Whereas the function of a computer program is to communicate and work togetherwith other components of a computer system and with users and, for this pur-pose, a logical and, where appropriate, physical interconnection and interaction isrequired to permit all elements of software and hardware to work with other soft-ware and hardware and with users in all the ways in which they are intended tofunction;

Whereas the parts of the program which provide for such interconnection andinteraction between elements of software and hardware are generally known as‘interfaces’;

Whereas this functional interconnection and interaction is generally known as‘interoperability’; whereas such interoperability can be defined as the ability to ex-change information and mutually to use the information which has been exchanged;

Whereas, for the avoidance of doubt, it has to be made clear that only the expres-sion of a computer program is protected and that ideas and principles which under-lie any element of a program, including those which underlie its interfaces, are notprotected by copyright under this Directive;

Whereas, in accordance with this principle of copyright, to the extent that logic,algorithms and programming languages comprise ideas and principles, those ideasand principles are not protected under this Directive;

Whereas, in accordance with the legislation and jurisprudence of the Member Statesand the international copyright conventions, the expression of those ideas and prin-ciples is to be protected by copyright;

Whereas, for the purposes of this Directive, the term ‘rental’ means the makingavailable for use, for a limited period of time and for profit-making purposes, of acomputer program or a copy thereof; whereas this term does not include public lend-ing, which, accordingly, remains outside the scope of this Directive;

Whereas the exclusive rights of the author to prevent the unauthorized reproduc-tion of his work have to be subject to a limited exception in the case of a computerprogram to allow the reproduction technically necessary for the use of that programby the lawful acquirer;

Whereas this means that the acts of loading and running necessary for the use of acopy of a program which has been lawfully acquired, and the act of correction of itserrors, may not be prohibited by contract; whereas, in the absence of specific con-tractual provisions, including when a copy of the program has been sold, any otheract necessary for the use of the copy of a program may be performed in accordancewith its intended purpose by a lawful acquirer of that copy;

Whereas a person having a right to use a computer program should not be preventedfrom performing acts necessary to observe, study or test the functioning of the pro-gram, provided that these acts do not infringe the copyright in the program;

540 Appendix

Whereas the unauthorized reproduction, translation, adaptation or transformationof the form of the code in which a copy of a computer program has been made avail-able constitutes an infringement of the exclusive rights of the author;

Whereas, nevertheless, circumstances may exist when such a reproduction of thecode and translation of its form within the meaning of Article 4 (a) and (b) are in-dispensable to obtain the necessary information to achieve the interoperability ofan independently created program with other programs;

Whereas it has therefore to be considered that in these limited circumstances only,performance of the acts of reproduction and translation by or on behalf of a personhaving a right to use a copy of the program is legitimate and compatible with fair prac-tice and must therefore be deemed not to require the authorization of the rightholder;

Whereas an objective of this exception is to make it possible to connect all compo-nents of a computer system, including those of different manufacturers, so that theycan work together;

Whereas such an exception to the author’s exclusive rights may not be used in away which prejudices the legitimate interests of the rightholder or which conflictswith a normal exploitation of the program;

Whereas, in order to remain in accordance with the provisions of the Berne Con-vention for the Protection of Literary and Artistic Works, the term of protectionshould be the life of the author and fifty years from the first of January of the yearfollowing the year of his death or, in the case of an anonymous or pseudonymouswork, 50 years from the first of January of the year following the year in which thework is first published;

Whereas protection of computer programs under copyright laws should be with-out prejudice to the application, in appropriate cases, of other forms of protection;whereas, however, any contractual provisions contrary to Article 6 or to the excep-tions provided for in Article 5 (2) and (3) should be null and void;

Whereas the provisions of this Directive are without prejudice to the application ofthe competition rules under Articles 85 and 86 of the Treaty if a dominant supplierrefuses to make information available which is necessary for interoperability asdefined in this Directive;

Whereas the provisions of this Directive should be without prejudice to specific re-quirements of Community law already enacted in respect of the publication of in-terfaces in the telecommunications sector or Council Decisions relating to standard-ization in the field of information technology and telecommunication;

Whereas this Directive does not affect derogations provided for under national leg-islation in accordance with the Berne Convention on points not covered by thisDirective,

HAS ADOPTED THIS DIRECTIVE:

article 1object of protection

1. In accordance with the provisions of this Directive, Member States shall protectcomputer programs, by copyright, as literary works within the meaning of the

Appendix 541

Berne Convention for the Protection of Literary and Artistic Works. For the pur-poses of this Directive, the term ‘computer programs’ shall include their prepa-ratory design material.

2. Protection in accordance with this Directive shall apply to the expression in anyform of a computer program. Ideas and principles which underlie any elementof a computer program, including those which underlie its interfaces, are not pro-tected by copyright under this Directive.

3. A computer program shall be protected if it is original in the sense that it is theauthor’s own intellectual creation. No other criteria shall be applied to determineits eligibility for protection.

article 2authorship of computer programs

1. The author of a computer program shall be the natural person or group of natu-ral persons who has created the program or, where the legislation of the Mem-ber State permits, the legal person designated as the rightholder by that legisla-tion. Where collective works are recognized by the legislation of a Member State,the person considered by the legislation of the Member State to have created thework shall be deemed to be its author.

2. In respect of a computer program created by a group of natural persons jointly,the exclusive rights shall be owned jointly.

3. Where a computer program is created by an employee in the execution of hisduties or following the instructions given by his employer, the employer exclu-sively shall be entitled to exercise all economic rights in the program so created,unless otherwise provided by contract.

article 3beneficiaries of protection

Protection shall be granted to all natural or legal persons eligible under nationalcopyright legislation as applied to literary works.

article 4restricted acts

Subject to the provisions of Articles 5 and 6, the exclusive rights of the rightholderwithin the meaning of Article 2, shall include the right to do or to authorize:(a) the permanent or temporary reproduction of a computer program by any means

and in any form, in part or in whole. Insofar as loading, displaying, running,transmission or storage of the computer program necessitate such reproduction,such acts shall be subject to authorization by the rightholder;

(b) the translation, adaptation, arrangement and any other alteration of a computerprogram and the reproduction of the results thereof, without prejudice to therights of the person who alters the program;

(c) any form of distribution to the public, including the rental, of the original com-puter program or of copies thereof. The first sale in the Community of a copy ofa program by the rightholder or with his consent shall exhaust the distributionright within the Community of that copy, with the exception of the right to con-trol further rental of the program or a copy thereof.

542 Appendix

article 5exceptions to the restricted acts

1. In the absence of specific contractual provisions, the acts referred to in Article 4(a) and (b) shall not require authorization by the rightholder where they are nec-essary for the use of the computer program by the lawful acquirer in accordancewith its intended purpose, including for error correction.

2. The making of a back-up copy by a person having a right to use the computerprogram may not be prevented by contract insofar as it is necessary for that use.

3. The person having a right to use a copy of a computer program shall be entitled,without the authorization of the rightholder, to observe, study or test the func-tioning of the program in order to determine the ideas and principles whichunderlie any element of the program if he does so while performing any of theacts of loading, displaying, running, transmitting or storing the program whichhe is entitled to do.

article 6decompilation

1. The authorization of the rightholder shall not be required where reproduction ofthe code and translation of its form within the meaning of Article 4 (a) and (b) areindispensable to obtain the information necessary to achieve the interoperabilityof an independently created computer program with other programs, provided thatthe following conditions are met:(a) these acts are performed by the licensee or by another person having a right

to use a copy of a program, or on their behalf by a person authorized to do so;(b) the information necessary to achieve interoperability has not previously been

readily available to the persons referred to in subparagraph (a); and(c) these acts are confined to the parts of the original program which are neces-

sary to achieve interoperability.2. The provisions of paragraph 1 shall not permit the information obtained through

its application:(a) to be used for goals other than to achieve the interoperability of the indepen-

dently created computer program;(b) to be given to others, except when necessary for the interoperability of the

independently created computer program; or(c) to be used for the development, production or marketing of a computer pro-

gram substantially similar in its expression, or for any other act which in-fringes copyright.

3. In accordance with the provisions of the Berne Convention for the protection ofLiterary and Artistic Works, the provisions of this Article may not be interpretedin such a way as to allow its application to be used in a manner which unrea-sonably prejudices the right holder’s legitimate interests or conflicts with a nor-mal exploitation of the computer program.

article 7special measures of protection

1. Without prejudice to the provisions of Articles 4, 5 and 6, Member States shallprovide, in accordance with their national legislation, appropriate remedies

Appendix 543

against a person committing any of the acts listed in subparagraphs (a), (b) and(c) below:(a) any act of putting into circulation a copy of a computer program knowing,

or having reason to believe, that it is an infringing copy;(b) the possession, for commercial purposes, of a copy of a computer program

knowing, or having reason to believe, that it is an infringing copy;(c) any act of putting into circulation, or the possession for commercial purposes

of, any means the sole intended purpose of which is to facilitate the unau-thorized removal or circumvention of any technical device which may havebeen applied to protect a computer program.

2. Any infringing copy of a computer program shall be liable to seizure in accor-dance with the legislation of the Member State concerned.

3. Member States may provide for the seizure of any means referred to in para-graph 1(c).


1. Protection shall be granted for the life of the author and for fifty years after hisdeath or after the death of the last surviving author; where the computer pro-gram is an anonymous or pseudonymous work, or where a legal person is desig-nated as the author by national legislation in accordance with Article 2(1), theterm of protection shall be fifty years from the time that the computer programis first lawfully made available to the public. The term of protection shall bedeemed to begin on the first of January of the year following the abovementionedevents.

2. Member States which already have a term of protection longer than that pro-vided for in paragraph 1 are allowed to maintain their present term until suchtime as the term of protection for copyright works is harmonized by Communitylaw in a more general way.

article 9continued application of other legal provisions

1. The provisions of this Directive shall be without prejudice to any other legal pro-visions such as those concerning patent rights, trade-marks, unfair competition,trade secrets, protection of semi-conductor products or the law of contract. Anycontractual provisions contrary to Article 6 or to the exceptions provided for inArticle 5 (2) and (3) shall be null and void.

2. The provisions of this Directive shall apply also to programs created before1 January 1993 without prejudice to any acts concluded and rights acquiredbefore that date.

article 10final provisions

1. Member States shall bring into force the laws, regulations and administrativeprovisions necessary to comply with this Directive before 1 January 1993.

When Member States adopt these measures, the latter shall contain a refer-ence to this Directive or shall be accompanied by such reference on the occasion

544 Appendix

of their official publication. The methods of making such a reference shall be laiddown by the Member States.

2. Member States shall communicate to the Commission the provisions of nationallaw which they adopt in the field governed by this Directive.

article 11

This Directive is addressed to the Member States.

545

A26. E.C. DIRECTIVE ON RENTAL RIGHT AND

LENDING RIGHT AND ON CERTAIN RIGHTS

RELATED TO COPYRIGHT IN THE FIELD

OF INTELLECTUAL PROPERTY

COUNCIL DIRECTIVE 92/100/EEC of 19 November 1992on rental right and lending right and on certain rightsrelated to copyright in the field of intellectual property


Having regard to the Treaty establishing the European Economic Community, andin particular Articles 57 (2), 66 and 100a thereof,




Whereas differences exist in the legal protection provided by the laws and practicesof the Member States for copyright works and subject matter of related rights pro-tection as regards rental and lending; whereas such differences are sources of bar-riers to trade and distortions of competition which impede the achievement andproper functioning of the internal market;

Whereas such differences in legal protection could well become greater as MemberStates adopt new and different legislation or as national case-law interpreting suchlegislation develops differently;

Whereas such differences should therefore be eliminated in accordance with theobjective of introducing an area without internal frontiers as set out in Article 8a ofthe Treaty so as to institute, pursuant to Article 3 (f) of the Treaty, a system ensur-ing that competition in the common market is not distorted;

Whereas rental and lending of copyright works and the subject matter of relatedrights protection is playing an increasingly important role in particular for authors,performers and producers of phonograms and films; whereas piracy is becoming anincreasing threat;

Whereas the adequate protection of copyright works and subject matter of relatedrights protection by rental and lending rights as well as the protection of the sub-ject matter of related rights protection by the fixation right, reproduction right, dis-tribution right, right to broadcast and communication to the public can accordinglybe considered as being of fundamental importance for the Community’s economicand cultural development;

Whereas copyright and related rights protection must adapt to new economic de-velopments such as new forms of exploitation;

546 Appendix

Whereas the creative and artistic work of authors and performers necessitates anadequate income as a basis for further creative and artistic work, and the investmentsrequired particularly for the production of phonograms and films are especially highand risky; whereas the possibility for securing that income and recouping that invest-ment can only effectively be guaranteed through adequate legal protection of therightholders concerned;

Whereas these creative, artistic and entrepreneurial activities are, to a large extent,activities of self-employed persons; whereas the pursuit of such activities must bemade easier by providing a harmonized legal protection within the Community;

Whereas, to the extent that these activities principally constitute services, theirprovision must equally be facilitated by the establishment in the Community of aharmonized legal framework;

Whereas the legislation of the Member States should be approximated in such a wayso as not to conflict with the international conventions on which many MemberStates’ copyright and related rights laws are based;

Whereas the Community’s legal framework on the rental right and lending rightand on certain rights related to copyright can be limited to establishing that Mem-ber States provide rights with respect to rental and lending for certain groups ofrightholders and further to establishing the rights of fixation, reproduction, dis-tribution, broadcasting and communication to the public for certain groups ofrightholders in the field of related rights protection;

Whereas it is necessary to define the concepts of rental and lending for the purposesof this Directive;

Whereas it is desirable, with a view to clarity, to exclude from rental and lendingwithin the meaning of this Directive certain forms of making available, as for in-stance making available phonograms or films (cinematographic or audiovisualworks or moving images, whether or not accompanied by sound) for the purpose ofpublic performance or broadcasting, making available for the purpose of exhibition,or making available for on-the-spot reference use; whereas lending within the mean-ing of this Directive does not include making available between establishmentswhich are accessible to the public;

Whereas, where lending by an establishment accessible to the public gives rise to apayment the amount of which does not go beyond what is necessary to cover theoperating costs of the establishment, there is no direct or indirect economic or com-mercial advantage within the meaning of this Directive;

Whereas it is necessary to introduce arrangements ensuring that an unwaivableequitable remuneration is obtained by authors and performers who must retain thepossibility to entrust the administration of this right to collecting societies represent-ing them;

Whereas the equitable remuneration may be paid on the basis of one or severalpayments at any time on or after the conclusion of the contract;

Whereas the equitable remuneration must take account of the importance of thecontribution of the authors and performers concerned to the phonogram or film;

Whereas it is also necessary to protect the rights at least of authors as regards pub-lic lending by providing for specific arrangements; whereas, however, any measures

Appendix 547

based on Article 5 of this Directive have to comply with Community law, in particu-lar with Article 7 of the Treaty;

Whereas the provisions of Chapter II do not prevent Member States from extendingthe presumption set out in Article 2 (5) to the exclusive rights included in that chap-ter; whereas furthermore the provisions of Chapter II do not prevent Member Statesfrom providing for a rebuttable presumption of the authorization of exploitation inrespect of the exclusive rights of performers provided for in those articles, in so faras such presumption is compatible with the International Convention for the Pro-tection of Performers, Producers of Phonograms and Broadcasting Organizations(hereinafter referred to as the Rome Convention);

Whereas Member States may provide for more far-reaching protection for ownersof rights related to copyright than that required by Article 8 of this Directive;

Whereas the harmonized rental and lending rights and the harmonized protectionin the field of rights related to copyright should not be exercised in a way whichconstitutes a disguised restriction on trade between Member States or in a way whichis contrary to the rule of media exploitation chronology, as recognized in the Judg-ment handed down in Societe Cinetheque v. FNCF,


Chapter I: Rental and Lending Right

article 1object of harmonization

1. In accordance with the provisions of this Chapter, Member States shall provide,subject to Article 5, a right to authorize or prohibit the rental and lending of origi-nals and copies of copyright works, and other subject matter as set out in Article2 (1).

2. For the purposes of this Directive, ‘rental’ means making available for use, for alimited period of time and for direct or indirect economic or commercial advantage.

3. For the purposes of this Directive, ‘lending’ means making available for use, fora limited period of time and not for direct or indirect economic or commercialadvantage, when it is made through establishments which are accessible to thepublic.

4. The rights referred to in paragraph 1 shall not be exhausted by any sale or otheract of distribution of originals and copies of copyright works and other subjectmatter as set out in Article 2 (1).

article 2rightholders and subject matter of

rental and lending right

1. The exclusive right to authorize or prohibit rental and lending shall belong:—to the author in respect of the original and copies of his work,—to the performer in respect of fixations of his performance,—to the phonogram producer in respect of his phonograms, and

548 Appendix

—to the producer of the first fixation of a film in respect of the original and cop-ies of his film. For the purposes of this Directive, the term ‘film’ shall designatea cinematographic or audiovisual work or moving images, whether or not ac-companied by sound.

2. For the purposes of this Directive the principal director of a cinematographic oraudiovisual work shall be considered as its author or one of its authors. MemberStates may provide for others to be considered as its co-authors.

3. This Directive does not cover rental and lending rights in relation to buildingsand to works of applied art.

4. The rights referred to in paragraph 1 may be transferred, assigned or subject tothe granting of contractual licences.

5. Without prejudice to paragraph 7, when a contract concerning film productionis concluded, individually or collectively, by performers with a film producer, theperformer covered by this contract shall be presumed, subject to contractualclauses to the contrary, to have transferred his rental right, subject to Article 4.

6. Member States may provide for a similar presumption as set out in paragraph 5with respect to authors.

7. Member States may provide that the signing of a contract concluded betweena performer and a film producer concerning the production of a film has theeffect of authorizing rental, provided that such contract provides for an equi-table remuneration within the meaning of Article 4. Member States may alsoprovide that this paragraph shall apply mutatis mutandis to the rights includedin Chapter II.

article 3rental of computer programs

This Directive shall be without prejudice to Article 4 (c) of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs.

article 4unwaivable right to equitable remuneration

1. Where an author or performer has transferred or assigned his rental right con-cerning a phonogram or an original or copy of a film to a phonogram or film pro-ducer, that author or performer shall retain the right to obtain an equitable re-muneration for the rental.

2. The right to obtain an equitable remuneration for rental cannot be waived byauthors or performers.

3. The administration of this right to obtain an equitable remuneration may beentrusted to collecting societies representing authors or performers.

4. Member States may regulate whether and to what extent administration by col-lecting societies of the right to obtain an equitable remuneration may be imposed,as well as the question from whom this remuneration may be claimed or collected.

article 5derogation from the exclusive public lending right

1. Member States may derogate from the exclusive right provided for in Article 1 inrespect of public lending, provided that at least authors obtain a remuneration

Appendix 549

for such lending. Member States shall be free to determine this remunerationtaking account of their cultural promotion objectives.

2. When Member States do not apply the exclusive lending right provided for inArticle 1 as regards phonograms, films and computer programs, they shall in-troduce, at least for authors, a remuneration.

3. Member States may exempt certain categories of establishments from the pay-ment of the remuneration referred to in paragraphs 1 and 2.

4. The Commission, in cooperation with the Member States, shall draw up before1 July 1997 a report on public lending in the Community. It shall forward thisreport to the European Parliament and to the Council.

Chapter II: Rights Related to Copyright

article 6fixation right

1. Member States shall provide for performers the exclusive right to authorize orprohibit the fixation of their performances.

2. Member States shall provide for broadcasting organizations the exclusive rightto authorize or prohibit the fixation of their broadcasts, whether these broadcastsare transmitted by wire or over the air, including by cable or satellite.

3. A cable distributor shall not have the right provided for in paragraph 2 where itmerely retransmits by cable the broadcasts of broadcasting organizations.

article 7reproduction right

1. Member States shall provide the exclusive right to authorize or prohibit the di-rect or indirect reproduction:—for performers, of fixations of their performances,—for phonogram producers, of their phonograms,—for producers of the first fixations of films, in respect of the original and copies

of their films, and—for broadcasting organizations, of fixations of their broadcasts, as set out in

Article 6 (2).2. The reproduction right referred to in paragraph 1 may be transferred, assigned

or subject to the granting of contractual licences.

article 8broadcasting and communication to the public

1. Member States shall provide for performers the exclusive right to authorize orprohibit the broadcasting by wireless means and the communication to the publicof their performances, except where the performance is itself already a broad-cast performance or is made from a fixation.

2. Member States shall provide a right in order to ensure that a single equitableremuneration is paid by the user, if a phonogram published for commercialpurposes, or a reproduction of such phonogram, is used for broadcasting by

550 Appendix

wireless means or for any communication to the public, and to ensure that thisremuneration is shared between the relevant performers and phonogram pro-ducers. Member States may, in the absence of agreement between the perform-ers and phonogram producers, lay down the conditions as to the sharing of thisremuneration between them.

3. Member States shall provide for broadcasting organizations the exclusive rightto authorize or prohibit the rebroadcasting of their broadcasts by wireless means,as well as the communication to the public of their broadcasts if such com-munication is made in places accessible to the public against payment of anentrance fee.

article 9distribution right

1. Member States shall provide—for performers, in respect of fixations of their performances,—for phonogram producers, in respect of their phonograms,—for producers of the first fixations of films, in respect of the original and copies

of their films,—for broadcasting organizations, in respect of fixations of their broadcast as set

out in Article 6 (2),the exclusive right to make available these objects, including copies thereof,to the public by sale or otherwise, hereafter referred to as the ‘distributionright’.

2. The distribution right shall not be exhausted within the Community in respectof an object as referred to in paragraph 1, except where the first sale in the Com-munity of that object is made by the rightholder or with his consent.

3. The distribution right shall be without prejudice to the specific provisions ofChapter I, in particular Article 1 (4).

4. The distribution right may be transferred, assigned or subject to the granting ofcontractual licences.

article 10limitations to rights

1. Member States may provide for limitations to the rights referred to in Chapter IIin respect of:(a) private use;(b) use of short excerpts in connection with the reporting of current events;(c) ephemeral fixation by a broadcasting organization by means of its own

facilities and for its own broadcasts;(d) use solely for the purposes of teaching or scientific research.

2. Irrespective of paragraph 1, any Member State may provide for the same kindsof limitations with regard to the protection of performers, producers of phono-grams, broadcasting organizations and of producers of the first fixations of films,as it provides for in connection with the protection of copyright in literary andartistic works. However, compulsory licences may be provided for only to the ex-tent to which they are compatible with the Rome Convention.

3. Paragraph 1 (a) shall be without prejudice to any existing or future legislationon remuneration for reproduction for private use.

Appendix 551

Chapter III: Duration

article 11duration of authors’ rights

Without prejudice to further harmonization, the authors’ rights referred to in thisDirective shall not expire before the end of the term provided by the Berne Conven-tion for the Protection of Literary and Artistic Works.

article 12duration of related rights

Without prejudice to further harmonization, the rights referred to in this Directiveof performers, phonogram producers and broadcasting organizations shall not ex-pire before the end of the respective terms provided by the Rome Convention. Therights referred to in this Directive for producers of the first fixations of films shallnot expire before the end of a period of 20 years computed from the end of the yearin which the fixation was made.



1. This Directive shall apply in respect of all copyright works, performances, phono-grams, broadcasts and first fixations of films referred to in this Directive whichare, on 1 July 1994, still protected by the legislation of the Member States in thefield of copyright and related rights or meet the criteria for protection under theprovisions of this Directive on that date.

2. This Directive shall apply without prejudice to any acts of exploitation performedbefore 1 July 1994.

3. Member States may provide that the rightholders are deemed to have giventheir authorization to the rental or lending of an object referred to in Article 2(1) which is proven to have been made available to third parties for this pur-pose or to have been acquired before 1 July 1994. However, in particular wheresuch an object is a digital recording, Member States may provide that rightholdersshall have a right to obtain an adequate remuneration for the rental or lend-ing of that object.

4. Member States need not apply the provisions of Article 2 (2) to cinematographicor audiovisual works created before 1 July 1994.

5. Member States may determine the date as from which the Article 2 (2) shallapply, provided that that date is no later than 1 July 1997.

6. This Directive shall, without prejudice to paragraph 3 and subject to paragraphs8 and 9, not affect any contracts concluded before the date of its adoption.

7. Member States may provide, subject to the provisions of paragraphs 8 and 9, thatwhen rightholders who acquire new rights under the national provisions adoptedin implementation of this Directive have, before 1 July 1994, given their consent

552 Appendix

for exploitation, they shall be presumed to have transferred the new exclusiverights.

8. Member States may determine the date as from which the unwaivable right toan equitable remuneration referred to in Article 4 exists, provided that that dateis no later than 1 July 1997.

9. For contracts concluded before 1 July 1994, the unwaivable right to an equitableremuneration provided for in Article 4 shall apply only where authors or perform-ers or those representing them have submitted a request to that effect before 1 Janu-ary 1997. In the absence of agreement between rightholders concerning the levelof remuneration, Member States may fix the level of equitable remuneration.

article 14relation between copyright and related rights

Protection of copyright-related rights under this Directive shall leave intact and shallin no way affect the protection of copyright.


1. Member States shall bring into force the laws, regulations and administrativeprovisions necessary to comply with this Directive not later than 1 July 1994.They shall forthwith inform the Commission thereof.

When Member States adopt these measures, they shall contain a reference tothis Directive or shall be accompanied by such reference at the time of their offi-cial publication. The methods of making such a reference shall be laid down bythe Member States.

2. Member States shall communicate to the Commission the main provisions ofdomestic law which they adopt in the field covered by this Directive.

article 16


553

A27. E.C. DIRECTIVE ON THE COORDINATION OF CERTAIN RULES

CONCERNING COPYRIGHT AND RIGHTS RELATED TO

COPYRIGHT APPLICABLE TO SATELLITE BROADCASTING

AND CABLE RETRANSMISSION

COUNCIL DIRECTIVE 93/83/EEC of 27 September 1993on the coordination of certain rules concerningcopyright and rights related to copyright applicableto satellite broadcasting and cable retransmission


Having regard to the Treaty establishing the European Economic Community, andin particular Articles 57 (2) and 66 thereof,




(1) Whereas the objectives of the Community as laid down in the Treaty includeestablishing an ever closer union among the peoples of Europe, fostering closerrelations between the States belonging to the Community and ensuring the eco-nomic and social progress of the Community countries by common action toeliminate the barriers which divide Europe;

(2) Whereas, to that end, the Treaty provides for the establishment of a commonmarket and an area without internal frontiers; whereas measures to achievethis include the abolition of obstacles to the free movement of services and theinstitution of a system ensuring that competition in the common market is notdistorted; whereas, to that end, the Council may adopt directives for the coor-dination of the provisions laid down by law, regulation or administrative ac-tion in Member States concerning the taking up and pursuit of activities as self-employed persons;

(3) Whereas broadcasts transmitted across frontiers within the Community, inparticular by satellite and cable, are one of the most important ways of pursu-ing these Community objectives, which are at the same time political, economic,social, cultural and legal;

(4) Whereas the Council has already adopted Directive 89/552/EEC of 3 October1989 on the coordination of certain provisions laid down by law, regulation oradministrative action in Member States concerning the pursuit of televisionbroadcasting activities, which makes provision for the promotion of the distri-bution and production of European television programmes and for advertisingand sponsorship, the protection of minors and the right of reply;

554 Appendix

(5) Whereas, however, the achievement of these objectives in respect of cross-border satellite broadcasting and the cable retransmission of programmes fromother Member States is currently still obstructed by a series of differences be-tween national rules of copyright and some degree of legal uncertainty; whereasthis means that holders of rights are exposed to the threat of seeing their worksexploited without payment of remuneration or that the individual holders ofexclusive rights in various Member States block the exploitation of their rights;whereas the legal uncertainty in particular constitutes a direct obstacle in thefree circulation of programmes within the Community;

(6) Whereas a distinction is currently drawn for copyright purposes between com-munication to the public by direct satellite and communication to the publicby communications satellite; whereas, since individual reception is possible andaffordable nowadays with both types of satellite, there is no longer any justifi-cation for this differing legal treatment;

(7) Whereas the free broadcasting of programmes is further impeded by the cur-rent legal uncertainty over whether broadcasting by a satellite whose signalscan be received directly affects the rights in the country of transmission onlyor in all countries of reception together; whereas, since communications sat-ellites and direct satellites are treated alike for copyright purposes, this legaluncertainty now affects almost all programmes broadcast in the Communityby satellite;

(8) Whereas, furthermore, legal certainty, which is a prerequisite for the free move-ment of broadcasts within the Community, is missing where programmes trans-mitted across frontiers are fed into and retransmitted through cable networks;

(9) Whereas the development of the acquisition of rights on a contractual basis byauthorization is already making a vigorous contribution to the creation of thedesired European audiovisual area; whereas the continuation of such contrac-tual agreements should be ensured and their smooth application in practiceshould be promoted wherever possible;

(10) Whereas at present cable operators in particular cannot be sure that they haveactually acquired all the programme rights covered by such an agreement;

(11) Whereas, lastly, parties in different Member States are not all similarly boundby obligations which prevent them from refusing without valid reason to ne-gotiate on the acquisition of the rights necessary for cable distribution or al-lowing such negotiations to fail;

(12) Whereas the legal framework for the creation of a single audiovisual area laiddown in Directive 89/552/EEC must, therefore, be supplemented with refer-ence to copyright;

(13) Whereas, therefore, an end should be put to the differences of treatment of thetransmission of programmes by communications satellite which exist in theMember States, so that the vital distinction throughout the Community be-comes whether works and other protected subject matter are communicatedto the public; whereas this will also ensure equal treatment of the suppliers ofcross-border broadcasts, regardless of whether they use a direct broadcastingsatellite or a communications satellite;

(14) Whereas the legal uncertainty regarding the rights to be acquired which im-pedes cross-border satellite broadcasting should be overcome by defining thenotion of communication to the public by satellite at a Community level; whereasthis definition should at the same time specify where the act of communica-

Appendix 555

tion takes place; whereas such a definition is necessary to avoid the cumula-tive application of several national laws to one single act of broadcasting;whereas communication to the public by satellite occurs only when, and inthe Member State where, the programme-carrying signals are introduced underthe control and responsibility of the broadcasting organization into an uninter-rupted chain of communication leading to the satellite and down towards theearth; whereas normal technical procedures relating to the programme-carrying signals should not be considered as interruptions to the chain ofbroadcasting;

(15) Whereas the acquisition on a contractual basis of exclusive broadcasting rightsshould comply with any legislation on copyright and rights related to copy-right in the Member State in which communication to the public by satelliteoccurs;

(16) Whereas the principle of contractual freedom on which this Directive is basedwill make it possible to continue limiting the exploitation of these rights, es-pecially as far as certain technical means of transmission or certain languageversions are concerned;

(17) Whereas, in arriving at the amount of the payment to be made for the rightsacquired, the parties should take account of all aspects of the broadcast, suchas the actual audience, the potential audience and the language version;

(18) Whereas the application of the country-of-origin principle contained in thisDirective could pose a problem with regard to existing contracts; whereas thisDirective should provide for a period of five years for existing contracts to beadapted, where necessary, in the light of the Directive; whereas the said country-of-origin principle should not, therefore, apply to existing contracts which expirebefore 1 January 2000; whereas if by that date parties still have an interest inthe contract, the same parties should be entitled to renegotiate the conditionsof the contract;

(19) Whereas existing international co-production agreements must be inter-preted in the light of the economic purpose and scope envisaged by the par-ties upon signature; whereas in the past international co-production agree-ments have often not expressly and specifically addressed communicationto the public by satellite within the meaning of this Directive a particular formof exploitation; whereas the underlying philosophy of many existing inter-national co-production agreements is that the rights in the co-productionare exercised separately and independently by each co-producer, by divid-ing the exploitation rights between them along territorial lines; whereas, asa general rule, in the situation where a communication to the public by satel-lite authorized by one co-producer would prejudice the value of the exploi-tation rights of another co-producer, the interpretation of such an existingagreement would normally suggest that the latter co-producer would haveto give his consent to the authorization, by the former co- producer, of the com-munication to the public by satellite; whereas the language exclusivity of thelatter co-producer will be prejudiced where the language version or versionsof the communication to the public, including where the version is dubbedor subtitled, coincide(s) with the language or the languages widely under-stood in the territory allotted by the agreement to the latter co-producer;whereas the notion of exclusivity should be understood in a wider sensewhere the communication to the public by satellite concerns a work which

556 Appendix

consists merely of images and contains no dialogue or subtitles; whereas a clearrule is necessary in cases where the international co-production agreementdoes not expressly regulate the division of rights in the specific case of com-munication to the public by satellite within the meaning of this Directive;

(20) Whereas communications to the public by satellite from non-member coun-tries will under certain conditions be deemed to occur within a Member Stateof the Community;

(21) Whereas it is necessary to ensure that protection for authors, performers,producers of phonograms and broadcasting organizations is accorded in allMember States and that this protection is not subject to a statutory licencesystem; whereas only in this way is it possible to ensure that any differencein the level of protection within the common market will not create distor-tions of competition;

(22) Whereas the advent of new technologies is likely to have an impact on boththe quality and the quantity of the exploitation of works and other subjectmatter;

(23) Whereas in the light of these developments the level of protection grantedpursuant to this Directive to all rightholders in the areas covered by thisDirective should remain under consideration;

(24) Whereas the harmonization of legislation envisaged in this Directive entailsthe harmonization of the provisions ensuring a high level of protection of au-thors, performers, phonogram producers and broadcasting organizations;whereas this harmonization should not allow a broadcasting organization totake advantage of differences in levels of protection by relocating activities, tothe detriment of audiovisual productions;

(25) Whereas the protection provided for rights related to copyright should be alignedon that contained in Council Directive 92/100/EEC of 19 November 1992 onrental right and lending right and on certain rights related to copyright in thefield of intellectual property for the purposes of communication to the publicby satellite; whereas, in particular, this will ensure that performers and pho-nogram producers are guaranteed an appropriate remuneration for the com-munication to the public by satellite of their performances or phonograms;

(26) Whereas the provisions of Article 4 do not prevent Member States from extend-ing the presumption set out in Article 2 (5) of Directive 92/100/EEC to the ex-clusive rights referred to in Article 4; whereas, furthermore, the provisions ofArticle 4 do not prevent Member States from providing for a rebuttable pre-sumption of the authorization of exploitation in respect of the exclusive rightsof performers referred to in that Article, in so far as such presumption is com-patible with the International Convention for the Protection of Performers,Producers of Phonograms and Broadcasting Organizations;

(27) Whereas the cable retransmission of programmes from other Member Statesis an act subject to copyright and, as the case may be, rights related to copy-right; whereas the cable operator must, therefore, obtain the authorizationfrom every holder of rights in each part of the programme retransmitted;whereas, pursuant to this Directive, the authorizations should be grantedcontractually unless a temporary exception is provided for in the case of exist-ing legal licence schemes;

(28) Whereas, in order to ensure that the smooth operation of contractualarrangements is not called into question by the intervention of outsiders

Appendix 557

holding rights in individual parts of the programme, provision should bemade, through the obligation to have recourse to a collecting society, for theexclusive collective exercise of the authorization right to the extent that thisis required by the special features of cable retransmission; whereas theauthorization right as such remains intact and only the exercise of this rightis regulated to some extent, so that the right to authorize a cable retrans-mission can still be assigned; whereas this Directive does not affect the exer-cise of moral rights;

(29) Whereas the exemption provided for in Article 10 should not limit the choiceof holders of rights to transfer their rights to a collecting society and therebyhave a direct share in the remuneration paid by the cable distributor for cableretransmission;

(30) Whereas contractual arrangements regarding the authorization of cable re-transmission should be promoted by additional measures; whereas a partyseeking the conclusion of a general contract should, for its part, be obliged tosubmit collective proposals for an agreement; whereas, furthermore, any partyshall be entitled, at any moment, to call upon the assistance of impartial me-diators whose task is to assist negotiations and who may submit proposals;whereas any such proposals and any opposition thereto should be served onthe parties concerned in accordance with the applicable rules concerning theservice of legal documents, in particular as set out in existing internationalconventions; whereas, finally, it is necessary to ensure that the negotiationsare not blocked without valid justification or that individual holders are notprevented without valid justification from taking part in the negotiations;whereas none of these measures for the promotion of the acquisition of rightscalls into question the contractual nature of the acquisition of cable retrans-mission rights;

(31) Whereas for a transitional period Member States should be allowed to retainexisting bodies with jurisdiction in their territory over cases where the right toretransmit a programme by cable to the public has been unreasonably refusedor offered on unreasonable terms by a broadcasting organization; whereas itis understood that the right of parties concerned to be heard by the body shouldbe guaranteed and that the existence of the body should not prevent the partiesconcerned from having normal access to the courts;

(32) Whereas, however, Community rules are not needed to deal with all of thosematters, the effects of which perhaps with some commercially insignificantexceptions, are felt only inside the borders of a single Member State;

(33) Whereas minimum rules should be laid down in order to establish and guar-antee free and uninterrupted cross-border broadcasting by satellite and simul-taneous, unaltered cable retransmission of programmes broadcast from otherMember States, on an essentially contractual basis;

(34) Whereas this Directive should not prejudice further harmonization in the fieldof copyright and rights related to copyright and the collective administrationof such rights; whereas the possibility for Member States to regulate the ac-tivities of collecting societies should not prejudice the freedom of contractualnegotiation of the rights provided for in this Directive, on the understandingthat such negotiation takes place within the framework of general or specificnational rules with regard to competition law or the prevention of abuse ofmonopolies;

558 Appendix

(35) Whereas it should, therefore, be for the Member States to supplement the gen-eral provisions needed to achieve the objectives of this Directive by taking leg-islative and administrative measures in their domestic law, provided that thesedo not run counter to the objectives of this Directive and are compatible withCommunity law;

(36) Whereas this Directive does not affect the applicability of the competition rulesin Articles 85 and 86 of the Treaty,


Chapter I: Definitions


1. For the purpose of this Directive, ‘satellite’ means any satellite operating on fre-quency bands which, under telecommunications law, are reserved for the broad-cast of signals for reception by the public or which are reserved for closed, point-to-point communication. In the latter case, however, the circumstances in whichindividual reception of the signals takes place must be comparable to those whichapply in the first case.

2. (a) For the purpose of this Directive, ‘communication to the public by satellite’means the act of introducing, under the control and responsibility of thebroadcasting organization, the programme-carrying signals intended for re-ception by the public into an uninterrupted chain of communication lead-ing to the satellite and down towards the earth.

(b) The act of communication to the public by satellite occurs solely in the Mem-ber State where, under the control and responsibility of the broadcasting or-ganization, the programme-carrying signals are introduced into an uninter-rupted chain of communication leading to the satellite and down towardsthe earth.

(c) If the programme-carrying signals are encrypted, then there is communica-tion to the public by satellite on condition that the means for decrypting thebroadcast are provided to the public by the broadcasting organization or withits consent.

(d) Where an act of communication to the public by satellite occurs in a non-Community State which does not provide the level of protection provided forunder Chapter II,(i) if the programme-carrying signals are transmitted to the satellite from

an uplink situation situated in a Member State, that act of communica-tion to the public by satellite shall be deemed to have occurred in thatMember State and the rights provided for under Chapter II shall be exer-cisable against the person operating the uplink station; or

(ii) if there is no use of an uplink station situated in a Member State but abroadcasting organization established in a Member State has commis-sioned the act of communication to the public by satellite, that act shallbe deemed to have occurred in the Member State in which the broad-

Appendix 559

casting organization has its principal establishment in the Communityand the rights provided for under Chapter II shall be exercisable againstthe broadcasting organization.

3. For the purposes of this Directive, ‘cable retransmission’ means the simultaneous,unaltered and unabridged retransmission by a cable or microwave system forreception by the public of an initial transmission from another Member State,by wire or over the air, including that by satellite, of television or radio programmesintended for reception by the public.

4. For the purposes of this Directive ‘collecting society’ means any organizationwhich manages or administers copyright or rights related to copyright as its solepurpose or as one of its main purposes.

5. For the purposes of this Directive, the principal director of a cinematographic oraudiovisual work shall be considered as its author or one of its authors. MemberStates may provide for others to be considered as its co-authors.

Chapter II: Broadcasting of Programmes by Satellite

article 2broadcasting right

Member States shall provide an exclusive right for the author to authorize the com-munication to the public by satellite of copyright works, subject to the provisionsset out in this chapter.

article 3acquisition of broadcasting rights

1. Member States shall ensure that the authorization referred to in Article 2 maybe acquired only by agreement.

2. A Member State may provide that a collective agreement between a collectingsociety and a broadcasting organization concerning a given category of worksmay be extended to rightholders of the same category who are not representedby the collecting society, provided that:—the communication to the public by satellite simulcasts a terrestrial broadcast

by the same broadcaster, and—the unrepresented rightholder shall, at any time, have the possibility of exclud-

ing the extension of the collective agreement to his works and of exercisinghis rights either individually or collectively.

3. Paragraph 2 shall not apply to cinematographic works, including works createdby a process analogous to cinematography.

4. Where the law of a Member State provides for the extension of a collective agree-ment in accordance with the provisions of paragraph 2, that Member States shallinform the Commission which broadcasting organizations are entitled to availthemselves of that law. The Commission shall publish this information in theOfficial Journal of the European Communities (C series).

560 Appendix

article 4rights of performers, phonogram producers

and broadcasting organizations

1. For the purposes of communication to the public by satellite, the rights of perform-ers, phonogram producers and broadcasting organizations shall be protected inaccordance with the provisions of Articles 6, 7, 8 and 10 of Directive 92/100/EEC.

2. For the purposes of paragraph 1, ‘broadcasting by wireless means’ in Directive92/100/EEC shall be understood as including communication to the public bysatellite.

3. With regard to the exercise of the rights referred to in paragraph 1, Articles 2 (7)and 12 of Directive 92/100/EEC shall apply.

article 5relation between copyright and related rights

Protection of copyright-related rights under this Directive shall leave intact and shallin no way affect the protection of copyright.

article 6minimum protection

1. Member States may provide for more far-reaching protection for holders of rightsrelated to copyright than that required by Article 8 of Directive 92/100/EEC.

2. In applying paragraph 1 Member States shall observe the definitions containedin Article 1 (1) and (2).

article 7transitional provisions

1. With regard to the application in time of the rights referred to in Article 4(1) ofthis Directive, Article 13(1), (2), (6) and (7) of Directive 92/100/EEC shall apply.Article 13(4) and (5) of Directive 92/100/EEC shall apply mutatis mutandis.

2. Agreements concerning the exploitation of works and other protected subjectmatter which are in force on the date mentioned in Article 14 (1) shall be sub-ject to the provisions of Articles 1 (2), 2 and 3 as from 1 January 2000 if they expireafter that date.

3. When an international co-production agreement concluded before the datementioned in Article 14(1) between a co-producer from a Member State and oneor more co-producers from other Member States or third countries expressly pro-vides for a system of division of exploitation rights between the co-producers bygeographical areas for all means of communication to the public, without dis-tinguishing the arrangement applicable to communication to the public by sat-ellite from the provisions applicable to the other means of communication, andwhere communication to the public by satellite of the co- production would preju-dice the exclusivity, in particular the language exclusivity, of one of the co-producers or his assignees in a given territory, the authorization by one of theco-producers or his assignees for a communication to the public by satellite shallrequire the prior consent of the holder of that exclusivity, whether co-produceror assignee.

Appendix 561

Chapter III: Cable Retransmission

article 8cable retransmission right

1. Member States shall ensure that when programmes from other Member Statesare retransmitted by cable in their territory the applicable copyright and relatedrights are observed and that such retransmission takes place on the basis ofindividual or collective contractual agreements between copyright owners,holders of related rights and cable operators.

2. Notwithstanding paragraph 1, Member States may retain until 31 December1997 such statutory licence systems which are in operation or expressly providedfor by national law on 31 July 1991.

article 9exercise of the cable retransmission right

1. Member States shall ensure that the right of copyright owners and holders ofrelated rights to grant or refuse authorization to a cable operator for a cable re-transmission may be exercised only through a collecting society.

2. Where a rightholder has not transferred the management of his rights to a col-lecting society, the collecting society which manages rights of the same cat-egory shall be deemed to be mandated to manage his rights. Where more thanone collecting society manages rights of that category, the rightholder shallbe free to choose which of those collecting societies is deemed to be mandatedto manage his rights. A rightholder referred to in this paragraph shall have thesame rights and obligations resulting from the agreement between the cableoperator and the collecting society which is deemed to be mandated to man-age his rights as the rightholders who have mandated that collecting societyand he shall be able to claim those rights within a period, to be fixed by theMember State concerned, which shall not be shorter than three years from thedate of the cable retransmission which includes his work or other protectedsubject matter.

3. A Member State may provide that, when a rightholder authorizes the initial trans-mission within its territory of a work or other protected subject matter, he shallbe deemed to have agreed not to exercise his cable retransmission rights on anindividual basis but to exercise them in accordance with the provisions of thisDirective.

article 10exercise of the cable retransmission right

by broadcasting organizations

Member States shall ensure that Article 9 does not apply to the rights exercised bya broadcasting organization in respect of its own transmission, irrespective of whetherthe rights concerned are its own or have been transferred to it by other copyrightowners and/or holders of related rights.

562 Appendix

article 11mediators

1. Where no agreement is concluded regarding authorization of the cable retrans-mission of a broadcast, Member States shall ensure that either party may callupon the assistance of one or more mediators.

2. The task of the mediators shall be to provide assistance with negotiation. Theymay also submit proposals to the parties.

3. It shall be assumed that all the parties accept a proposal as referred to in para-graph 2 if none of them expresses its opposition within a period of three months.Notice of the proposal and of any opposition thereto shall be served on the par-ties concerned in accordance with the applicable rules concerning the service oflegal documents.

4. The mediators shall be so selected that their independence and impartiality arebeyond reasonable doubt.

article 12prevention of the abuse of negotiating positions

1. Member States shall ensure by means of civil or administrative law, as appropri-ate, that the parties enter and conduct negotiations regarding authorization forcable retransmission in good faith and do not prevent or hinder negotiation with-out valid justification.

2. A Member State which, on the date mentioned in Article 14 (1), has a body withjurisdiction in its territory over cases where the right to retransmit a programmeby cable to the public in that Member State has been unreasonably refused or of-fered on unreasonable terms by a broadcasting organization may retain that body.

3. Paragraph 2 shall apply for a transitional period of eight years from the datementioned in Article 14(1).

Chapter IV: General Provisions

article 13collective administration of rights

This Directive shall be without prejudice to the regulation of the activities of col-lecting societies by the Member States.


1. Member States shall bring into force the laws, regulations and administrativeprovisions necessary to comply with this Directive before 1 January 1995. Theyshall immediately inform the Commission thereof.

When Member States adopt these measures, the latter shall contain a refer-ence to this Directive or shall be accompanied by such reference at the time oftheir official publication. The methods of making such a reference shall be laiddown by the Member States.

Appendix 563

2. Member States shall communicate to the Commission the provisions of nationallaw which they adopt in the field covered by this Directive.

3. Not later than 1 January 2000, the Commission shall submit to the EuropeanParliament, the Council and the Economic and Social Committee a report on theapplication of this Directive and, if necessary, make further proposals to adapt itto developments in the audio and audiovisual sector.

article 15


564 Appendix

564

A28. E.C. DIRECTIVE HARMONIZING THE TERM

OF PROTECTION OF COPYRIGHT AND

CERTAIN RELATED RIGHTS

COUNCIL DIRECTIVE 93/98/EEC of 29 October 1993harmonizing the term of protection of copyright andcertain related rights


Having regard to the Treaty establishing the European Economic Community, andin particular Articles 57 (2), 66 and 100a thereof,




(1) Whereas the Berne Convention for the protection of literary and artistic worksand the International Convention for the protection of performers, producersof phonograms and broadcasting organizations (Rome Convention) lay downonly minimum terms of protection of the rights they refer to, leaving the Con-tracting States free to grant longer terms; whereas certain Member States haveexercised this entitlement; whereas in addition certain Member States have notbecome party to the Rome Convention;

(2) Whereas there are consequently differences between the national laws govern-ing the terms of protection of copyright and related rights, which are liable to im-pede the free movement of goods and freedom to provide services, and to distortcompetition in the common market; whereas therefore with a view to thesmooth operation of the internal market, the laws of the Member States shouldbe harmonized so as to make terms of protection identical throughout theCommunity;

(3) Whereas harmonization must cover not only the terms of protection as such,but also certain implementing arrangements such as the date from which eachterm of protection is calculated;

(4) Whereas the provisions of this Directive do not affect the application by theMember States of the provisions of Article 14a (2)(b), (c) and (d) and (3) of theBerne Convention;

(5) Whereas the minimum term of protection laid down by the Berne Convention,namely the life of the author and 50 years after his death, was intended to pro-vide protection for the author and the first two generations of his descendants;whereas the average lifespan in the Community has grown longer, to the pointwhere this term is no longer sufficient to cover two generations;

(6) Whereas certain Member States have granted a term longer than 50 yearsafter the death of the author in order to offset the effects of the world wars onthe exploitation of authors’ works;

Appendix 565

(7) Whereas for the protection of related rights certain Member States have intro-duced a term of 50 years after lawful publication or lawful communication tothe public;

(8) Whereas under the Community position adopted for the Uruguay Roundnegotiations under the General Agreement on Tariffs and Trade (GATT) theterm of protection for producers of phonograms should be 50 years after firstpublication;

(9) Whereas due regard for established rights is one of the general principles of lawprotected by the Community legal order; whereas, therefore, a harmonizationof the terms of protection of copyright and related rights cannot have the effectof reducing the protection currently enjoyed by rightholders in the Community;whereas in order to keep the effects of transitional measures to a minimum andto allow the internal market to operate in practice, the harmonization of theterm of protection should take place on a long term basis;

(10) Whereas in its communication of 17 January 1991 ‘Follow-up to the GreenPaper—Working programme of the Commission in the field of copyright andneighbouring rights’ the Commission stresses the need to harmonize copyrightand neighbouring rights at a high level of protection since these rights are fun-damental to intellectual creation and stresses that their protection ensures themaintenance and development of creativity in the interest of authors, culturalindustries, consumers and society as a whole;

(11) Whereas in order to establish a high level of protection which at the same timemeets the requirements of the internal market and the need to establish alegal environment conducive to the harmonious development of literary andartistic creation in the Community, the term of protection for copyright shouldbe harmonized at 70 years after the death of the author or 70 years after thework is lawfully made available to the public, and for related rights at 50 yearsafter the event which sets the term running;

(12) Whereas collections are protected according to Article 2 (5) of the Berne Con-vention when, by reason of the selection and arrangement of their content,they constitute intellectual creations; whereas those works are protected assuch, without prejudice to the copyright in each of the works forming part ofsuch collections, whereas in consequence specific terms of protection mayapply to works included in collections;

(13) Whereas in all cases where one or more physical persons are identified as au-thors the term of protection should be calculated after their death; whereasthe question of authorship in the whole or a part of a work is a question of factwhich the national courts may have to decide;

(14) Whereas terms of protection should be calculated from the first day of Janu-ary of the year following the relevant event, as they are in the Berne and RomeConventions;

(15) Whereas Article 1 of Council Directive 91/250/EEC of 14 May 1991 on thelegal protection of computer programs provides that Member States are to pro-tect computer programs, by copyright, as literary works within the meaningof the Berne Convention; whereas this Directive harmonizes the term of pro-tection of literary works in the Community; whereas Article 8 of Directive 91/250/EEC, which merely makes provisional arrangements governing the termof protection of computer programs, should accordingly be repealed;

(16) Whereas Articles 11 and 12 of Council Directive 92/100/EEC of 19 November1992 on rental right and lending right and on certain rights related to copy-

566 Appendix

right in the field of intellectual property make provision for minimum termsof protection only, subject to any further harmonization; whereas this Direc-tive provides such further harmonization; whereas these Articles should ac-cordingly be repealed;

(17) Whereas the protection of photographs in the Member States is the subject ofvarying regimes; whereas in order to achieve a sufficient harmonization of theterm of protection of photographic works, in particular of those which, due totheir artistic or professional character, are of importance within the internalmarket, it is necessary to define the level of originality required in this Direc-tive; whereas a photographic work within the meaning of the Berne Conven-tion is to be considered original if it is the author’s own intellectual creationreflecting his personality, no other criteria such as merit or purpose beingtaken into account; whereas the protection of other photographs should beleft to national law;

(18) Whereas, in order to avoid differences in the term of protection as regardsrelated rights it is necessary to provide the same starting point for the calcu-lation of the term throughout the Community; whereas the performance,fixation, transmission, lawful publication, and lawful communication to thepublic, that is to say the means of making a subject of a related right percep-tible in all appropriate ways to persons in general, should be taken into accountfor the calculation of the term of protection regardless of the country wherethis performance, fixation, transmission, lawful publication, or lawful com-munication to the public takes place;

(19) Whereas the rights of broadcasting organizations in their broadcasts, whetherthese broadcasts are transmitted by wire or over the air, including by cable orsatellite, should not be perpetual; whereas it is therefore necessary to have theterm of protection running from the first transmission of a particular broad-cast only; whereas this provision is understood to avoid a new term runningin cases where a broadcast is identical to a previous one;

(20) Whereas the Member States should remain free to maintain or introduce otherrights related to copyright in particular in relation to the protection of criticaland scientific publications; whereas, in order to ensure transparency at Com-munity level, it is however necessary for Member States which introduce newrelated rights to notify the Commission;

(21) Whereas it is useful to make clear that the harmonization brought about bythis Directive does not apply to moral rights;

(22) Whereas, for works whose country of origin within the meaning of the BerneConvention is a third country and whose author is not a Community na-tional, comparison of terms of protection should be applied, provided thatthe term accorded in the Community does not exceed the term laid down inthis Directive;

(23) Whereas where a rightholder who is not a Community national qualifies forprotection under an international agreement the term of protection of relatedrights should be the same as that laid down in this Directive, except that itshould not exceed that fixed in the country of which the rightholder is anational;

(24) Whereas comparison of terms should not result in Member States being broughtinto conflict with their international obligations;

(25) Whereas, for the smooth functioning of the internal market this Directiveshould be applied as from 1 July 1995;

Appendix 567

(26) Whereas Member States should remain free to adopt provisions on the inter-pretation, adaptation and further execution of contracts on the exploitationof protected works and other subject matter which were concluded before theextension of the term of protection resulting from this Directive;

(27) Whereas respect of acquired rights and legitimate expectations is part of theCommunity legal order; whereas Member States may provide in particular thatin certain circumstances the copyright and related rights which are revivedpursuant to this Directive may not give rise to payments by persons who under-took in good faith the exploitation of the works at the time when such workslay within the public domain,


article 1duration of authors’ rights

1. The rights of an author of a literary or artistic work within the meaning of Ar-ticle 2 of the Berne Convention shall run for the life of the author and for 70 yearsafter his death, irrespective of the date when the work is lawfully made avail-able to the public.

2. In the case of a work of joint authorship the term referred to in paragraph 1 shallbe calculated from the death of the last surviving author.

3. In the case of anonymous or pseudonymous works, the term of protection shallrun for seventy years after the work is lawfully made available to the public. How-ever, when the pseudonym adopted by the author leaves no doubt as to his iden-tity, or if the author discloses his identity during the period referred to in the firstsentence, the term of protection applicable shall be that laid down in paragraph 1.

4. Where a Member State provides for particular provisions on copyright in respectof collective works or for a legal person to be designated as the rightholder, theterm of protection shall be calculated according to the provisions of paragraph3, except if the natural persons who have created the work as such are identifiedas such in the versions of the work which are made available to the public. Thisparagraph is without prejudice to the rights of identified authors whose identifi-able contributions are included in such works, to which contributions paragraph1 or 2 shall apply.

5. Where a work is published in volumes, parts, installments, issues or episodes andthe term of protection runs from the time when the work was lawfully made avail-able to the public, the term of protection shall run for each such item separately.

6. In the case of works for which the term of protection is not calculated from thedeath of the author or authors and which have not been lawfully made avail-able to the public within seventy years from their creation, the protection shallterminate.

article 2cinematographic or audiovisual works

1. The principal director of a cinematographic or audiovisual work shall be con-sidered as its author or one of its authors. Member States shall be free to desig-nate other co-authors.

2. The term of protection of cinematographic or audiovisual works shall expire 70years after the death of the last of the following persons to survive, whether or

568 Appendix

not these persons are designated as co-authors: the principal director, the au-thor of the screenplay, the author of the dialogue and the composer of musicspecifically created for use in the cinematographic or audiovisual work.

article 3duration of related rights

1. The rights of performers shall expire 50 years after the date of the performance.However, if a fixation of the performance is lawfully published or lawfully com-municated to the public within this period, the rights shall expire 50 years fromthe date of the first such publication or the first such communication to the pub-lic, whichever is the earlier.

2. The rights of producers of phonograms shall expire 50 years after the fixation ismade. However, if the phonogram is lawfully published or lawfully communi-cated to the public during this period, the rights shall expire 50 years from thedate of the first such publication or the first such communication to the public,whichever is the earlier.

3. The rights of producers of the first fixation of a film shall expire 50 years afterthe fixation is made. However, if the film is lawfully published or lawfully com-municated to the public during this period, the rights shall expire 50 years fromthe date of the first such publication or the first such communication to the pub-lic, whichever is the earlier. The term ‘film’ shall designate a cinematographicor audiovisual work or moving images, whether or not accompanied by sound.

4. The rights of broadcasting organizations shall expire 50 years after the first trans-mission of a broadcast, whether this broadcast is transmitted by wire or over theair, including by cable or satellite.

article 4protection of previously unpublished works

Any person who, after the expiry of copyright protection, for the first time lawfullypublishes or lawfully communicates to the public a previously unpublished work,shall benefit from a protection equivalent to the economic rights of the author. Theterm of protection of such rights shall be 25 years from the time when the work wasfirst lawfully published or lawfully communicated to the public.

article 5critical and scientific publications

Member States may protect critical and scientific publications of works which havecome into the public domain. The maximum term of protection of such rights shallbe 30 years from the time when the publication was first lawfully published.

article 6protection of photographs

Photographs which are original in the sense that they are the author’s own intel-lectual creation shall be protected in accordance with Article 1. No other criteriashall be applied to determine their eligibility for protection. Member States may pro-vide for the protection of other photographs.

Appendix 569

article 7protection VIS-À-VIS third countries

1. Where the country of origin of a work, within the meaning of the Berne Con-vention, is a third country, and the author of the work is not a Community na-tional, the term of protection granted by the Member States shall expire on thedate of expiry of the protection granted in the country of origin of the work, butmay not exceed the term laid down in Article 1.

2. The terms of protection laid down in Article 3 shall also apply in the case ofrightholders who are not Community nationals, provided Member States grantthem protection. However, without prejudice to the international obligations ofthe Member States, the term of protection granted by Member States shall expireno later than the date of expiry of the protection granted in the country of whichthe rightholder is a national and may not exceed the term laid down in Article 3.

3. Member States which, at the date of adoption of this Directive, in particular pur-suant to their international obligations, granted a longer term of protection thanthat which would result from the provisions, referred to in paragraphs 1 and 2may maintain this protection until the conclusion of international agreementson the term of protection by copyright or related rights.

article 8calculation of terms

The terms laid down in this Directive are calculated from the first day of January ofthe year following the event which gives rise to them.

article 9moral rights

This Directive shall be without prejudice to the provisions of the Member States regu-lating moral rights.


1. Where a term of protection, which is longer than the corresponding term pro-vided for by this Directive, is already running in a Member State on the date re-ferred to in Article 13 (1), this Directive shall not have the effect of shorteningthat term of protection in that Member State.

2. The terms of protection provided for in this Directive shall apply to all works andsubject matter which are protected in at least one Member State, on the date re-ferred to in Article 13 (1), pursuant to national provisions on copyright or relatedrights or which meet the criteria for protection under Directive 92/100/EEC.

3. This Directive shall be without prejudice to any acts of exploitation performedbefore the date referred to in Article 13 (1). Member States shall adopt the neces-sary provisions to protect in particular acquired rights of third parties.

4. Member States need not apply the provisions of Article 2 (1) to cinematographicor audiovisual works created before 1 July 1994.

5. Member States may determine the date as from which Article 2 (1) shall apply,provided that date is no later than 1 July 1997.

570 Appendix

article 11technical adaptation

1. Article 8 of Directive 91/250/EEC is hereby repealed.2. Articles 11 and 12 of Directive 92/100/EEC are hereby repealed.

article 12notification procedure

Member States shall immediately notify the Commission of any governmental planto grant new related rights, including the basic reasons for their introduction andthe term of protection envisaged.

article 13general provisions

1. Member States shall bring into force the laws, regulations and administrative pro-visions necessary to comply with Articles 1 to 11 of this Directive before 1 July 1995.

When Member States adopt these provisions, they shall contain a referenceto this Directive or shall be accompanied by such reference at the time of theirofficial publication. The methods of making such a reference shall be laid downby the Member States.

Member States shall communicate to the Commission the texts of the provi-sions of national law which they adopt in the field governed by this Directive.

2. Member States shall apply Article 12 from the date of notification of this Directive.

article 14


571

A29. E.C. DIRECTIVE ON THE LEGAL PROTECTION

OF DATABASES

DIRECTIVE 96/9/EC OF THE EUROPEAN PARLIAMENTAND OF THE COUNCIL of 11 March 1996 on the legalprotection of databases

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particu-lar Article 57 (2), 66 and 100a thereof,



Acting in accordance with the procedure laid down in Article 189b of the Treaty,

(1) Whereas databases are at present not sufficiently protected in all Member Statesby existing legislation; whereas such protection, where it exists, has differentattributes;

(2) Whereas such differences in the legal protection of databases offered by the legisla-tion of the Member States have direct negative effects on the functioning of theinternal market as regards databases and in particular on the freedom of naturaland legal persons to provide on-line database goods and services on the basis ofharmonized legal arrangements throughout the Community; whereas such differ-ences could well become more pronounced as Member States introduce new legisla-tion in this field, which is now taking on an increasingly international dimension;

(3) Whereas existing differences distorting the functioning of the internal marketneed to be removed and new ones prevented from arising, while differences notadversely affecting the functioning of the internal market or the developmentof an information market within the Community need not be removed or pre-vented from arising;

(4) Whereas copyright protection for databases exists in varying forms in the Mem-ber States according to legislation or case-law, and whereas, if differences in leg-islation in the scope and conditions of protection remain between the MemberStates, such unharmonized intellectual property rights can have the effect ofpreventing the free movement of goods or services within the Community;

(5) Whereas copyright remains an appropriate form of exclusive right for authorswho have created databases;

(6) Whereas, nevertheless, in the absence of a harmonized system of unfair-competition legislation or of case-law, other measures are required in additionto prevent the unauthorized extraction and/or re-utilization of the contents ofa database;

(7) Whereas the making of databases requires the investment of considerablehuman, technical and financial resources while such databases can be copiedor accessed at a fraction of the cost needed to design them independently;

572 Appendix

(8) Whereas the unauthorized extraction and/or re-utilization of the contents ofa database constitute acts which can have serious economic and technicalconsequences;

(9) Whereas databases are a vital tool in the development of an information marketwithin the Community; whereas this tool will also be of use in many other fields;

(10) Whereas the exponential growth, in the Community and worldwide, in theamount of information generated and processed annually in all sectors of com-merce and industry calls for investment in all the Member States in advancedinformation processing systems;

(11) Whereas there is at present a very great imbalance in the level of investmentin the database sector both as between the Member States and between theCommunity and the world’s largest database-producing third countries;

(12) Whereas such an investment in modern information storage and processingsystems will not take place within the Community unless a stable and uniformlegal protection regime is introduced for the protection of the rights of makersof databases;

(13) Whereas this Directive protects collections, sometimes called ‘compilations’,of works, data or other materials which are arranged, stored and accessed bymeans which include electronic, electromagnetic or electro-optical processesor analogous processes;

(14) Whereas protection under this Directive should be extended to cover non-electronic databases;

(15) Whereas the criteria used to determine whether a database should be protectedby copyright should be defined to the fact that the selection or the arrange-ment of the contents of the database is the author’s own intellectual creation;whereas such protection should cover the structure of the database;

(16) Whereas no criterion other than originality in the sense of the author’s intel-lectual creation should be applied to determine the eligibility of the databasefor copyright protection, and in particular no aesthetic or qualitative criteriashould be applied;

(17) Whereas the term ‘database’ should be understood to include literary, artis-tic, musical or other collections of works or collections of other material suchas texts, sound, images, numbers, facts, and data; whereas it should cover col-lections of independent works, data or other materials which are systemati-cally or methodically arranged and can be individually accessed; whereas thismeans that a recording or an audiovisual, cinematographic, literary or musi-cal work as such does not fall within the scope of this Directive;

(18) Whereas this Directive is without prejudice to the freedom of authors to de-cide whether, or in what manner, they will allow their works to be includedin a database, in particular whether or not the authorization given is exclu-sive; whereas the protection of databases by the sui generis right is withoutprejudice to existing rights over their contents, and whereas in particularwhere an author or the holder of a related right permits some of his works orsubject matter to be included in a database pursuant to a non-exclusive agree-ment, a third party may make use of those works or subject matter subject tothe required consent of the author or of the holder of the related right withoutthe sui generis right of the maker of the database being invoked to prevent himdoing so, on condition that those works or subject matter are neither extractedfrom the database nor re-utilized on the basis thereof;

Appendix 573

(19) Whereas, as a rule, the compilation of several recordings of musical perfor-mances on a CD does not come within the scope of this Directive, both because,as a compilation, it does not meet the conditions for copyright protection andbecause it does not represent a substantial enough investment to be eligibleunder the sui generis right;

(20) Whereas protection under this Directive may also apply to the materials nec-essary for the operation or consultation of certain databases such as thesau-rus and indexation systems;

(21) Whereas the protection provided for in this Directive relates to databases inwhich works, data or other materials have been arranged systematically ormethodically; whereas it is not necessary for those materials to have beenphysically stored in an organized manner;

(22) Whereas electronic databases within the meaning of this Directive may alsoinclude devices such as CD-ROM and CD-i;

(23) Whereas the term ‘database’ should not be taken to extend to computer pro-grams used in the making or operation of a database, which are protected byCouncil Directive 91/250/EEC of 14 May 1991 on the legal protection of com-puter programs;

(24) Whereas the rental and lending of databases in the field of copyright and re-lated rights are governed exclusively by Council Directive 92/100/EEC of 19November 1992 on rental right and lending right and on certain rights relatedto copyright in the field of intellectual property;

(25) Whereas the term of copyright is already governed by Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyrightand certain related rights;

(26) Whereas works protected by copyright and subject matter protected by relatedrights, which are incorporated into a database, remain nevertheless protectedby the respective exclusive rights and may not be incorporated into, or ex-tracted from, the database without the permission of the rightholder or his suc-cessors in title;

(27) Whereas copyright in such works and related rights in subject matter thusincorporated into a database are in no way affected by the existence of a sepa-rate right in the selection or arrangement of these works and subject matterin a database;

(28) Whereas the moral rights of the natural person who created the database be-long to the author and should be exercised according to the legislation of theMember States and the provisions of the Berne Convention for the Protectionof Literary and Artistic Works; whereas such moral rights remain outside thescope of this Directive;

(29) Whereas the arrangements applicable to databases created by employees areleft to the discretion of the Member States; whereas, therefore nothing in thisDirective prevents Member States from stipulating in their legislation thatwhere a database is created by an employee in the execution of his duties orfollowing the instructions given by his employer, the employer exclusivelyshall be entitled to exercise all economic rights in the database so created,unless otherwise provided by contract;

(30) Whereas the author’s exclusive rights should include the right to determinethe way in which his work is exploited and by whom, and in particular to con-trol the distribution of his work to unauthorized persons;

574 Appendix

(31) Whereas the copyright protection of databases includes making databasesavailable by means other than the distribution of copies;

(32) Whereas Member States are required to ensure that their national provisionsare at least materially equivalent in the case of such acts subject to restrictionsas are provided for by this Directive;

(33) Whereas the question of exhaustion of the right of distribution does not arisein the case of on-line databases, which come within the field of provision ofservices; whereas this also applies with regard to a material copy of such adatabase made by the user of such a service with the consent of the rightholder;whereas, unlike CD-ROM or CD-i, where the intellectual property is incorpo-rated in a material medium, namely an item of goods, every on-line service isin fact an act which will have to be subject to authorization where the copy-right so provides;

(34) Whereas, nevertheless, once the rightholder has chosen to make available acopy of the database to a user, whether by an on-line service or by other meansof distribution, that lawful user must be able to access and use the databasefor the purposes and in the way set out in the agreement with the rightholder,even if such access and use necessitate performance of otherwise restrictedacts;

(35) Whereas a list should be drawn up of exceptions to restricted acts, taking intoaccount the fact that copyright as covered by this Directive applies only to theselection or arrangements of the contents of a database; whereas MemberStates should be given the option of providing for such exceptions in certaincases; whereas, however, this option should be exercised in accordance withthe Berne Convention and to the extent that the exceptions relate to the struc-ture of the database; whereas a distinction should be drawn between excep-tions for private use and exceptions for reproduction for private purposes,which concerns provisions under national legislation of some Member Stateson levies on blank media or recording equipment;

(36) Whereas the term ‘scientific research’ within the meaning of this Directivecovers both the natural sciences and the human sciences;

(37) Whereas Article 10(1) of the Berne Convention is not affected by this Directive;(38) Whereas the increasing use of digital recording technology exposes the data-

base maker to the risk that the contents of his database may be copied and re-arranged electronically, without his authorization, to produce a database ofidentical content which, however, does not infringe any copyright in the ar-rangement of his database;

(39) Whereas, in addition to aiming to protect the copyright in the original selec-tion or arrangement of the contents of a database, this Directive seeks to safe-guard the position of makers of databases against misappropriation of theresults of the financial and professional investment made in obtaining andcollecting the contents by protecting the whole or substantial parts of a data-base against certain acts by a user or competitor;

(40) Whereas the object of this sui generis right is to ensure protection of any in-vestment in obtaining, verifying or presenting the contents of a database forthe limited duration of the right; whereas such investment may consist in thedeployment of financial resources and/or the expending of time, effort andenergy;

(41) Whereas the objective of the sui generis right is to give the maker of a databasethe option of preventing the unauthorized extraction and/or re-utilization of all

Appendix 575

or a substantial part of the contents of that database; whereas the maker of adatabase is the person who takes the initiative and the risk of investing; whereasthis excludes subcontractors in particular from the definition of maker;

(42) Whereas the special right to prevent unauthorized extraction and/or re-utili-zation relates to acts by the user which go beyond his legitimate rights andthereby harm the investment; whereas the right to prohibit extraction and/or re-utilization of all or a substantial part of the contents relates not only tothe manufacture of a parasitical competing product but also to any user who,through his acts, causes significant detriment, evaluated qualitatively or quan-titatively, to the investment;

(43) Whereas, in the case of on-line transmission, the right to prohibit re-utiliza-tion is not exhausted either as regards the database or as regards a materialcopy of the database or of part thereof made by the addressee of the transmis-sion with the consent of the rightholder;

(44) Whereas, when on-screen display of the contents of a database necessitatesthe permanent or temporary transfer of all or a substantial part of such con-tents to another medium, that act should be subject to authorization by therightholder;

(45) Whereas the right to prevent unauthorized extraction and/or re-utilizationdoes not in any way constitute an extension of copyright protection to merefacts or data;

(46) Whereas the existence of a right to prevent the unauthorized extraction and/or re-utilization of the whole or a substantial part of works, data or materialsfrom a database should not give rise to the creation of a new right in the works,data or materials themselves;

(47) Whereas, in the interests of competition between suppliers of information prod-ucts and services, protection by the sui generis right must not be afforded insuch a way as to facilitate abuses of a dominant position, in particular as re-gards the creation and distribution of new products and services which havean intellectual, documentary, technical, economic or commercial added value;whereas, therefore, the provisions of this Directive are without prejudice tothe application of Community or national competition rules;

(48) Whereas the objective of this Directive, which is to afford an appropriate anduniform level of protection of databases as a means to secure the remunera-tion of the maker of the database, is different from the aim of Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on theprotection of individuals with regard to the processing of personal data andon the free movement of such data, which is to guarantee free circulation ofpersonal data on the basis of harmonized rules designed to protect fundamen-tal rights, notably the right to privacy which is recognized in Article 8 of theEuropean Convention for the Protection of Human Rights and FundamentalFreedoms; whereas the provisions of this Directive are without prejudice todata protection legislation;

(49) Whereas, notwithstanding the right to prevent extraction and/or re-utiliza-tion of all or a substantial part of a database, it should be laid down that themaker of a database or rightholder may not prevent a lawful user of the data-base from extracting and re-utilizing insubstantial parts; whereas, however,that user may not unreasonably prejudice either the legitimate interests of theholder of the sui generis right or the holder of copyright or a related right inrespect of the works or subject matter contained in the database;

576 Appendix

(50) Whereas the Member States should be given the option of providing for excep-tions to the right to prevent the unauthorized extraction and/or re-utiliza-tion of a substantial part of the contents of a database in the case of extractionfor private purposes, for the purposes of illustration for teaching or scientificresearch, or where extraction and/or re-utilization are/is carried out in theinterests of public security or for the purposes of an administrative or judi-cial procedure; whereas such operations must not prejudice the exclusiverights of the maker to exploit the database and their purpose must not becommercial;

(51) Whereas the Member States, where they avail themselves of the option topermit a lawful user of a database to extract a substantial part of the con-tents for the purposes of illustration for teaching or scientific research, maylimit that permission to certain categories of teaching or scientific researchinstitution;

(52) Whereas those Member States which have specific rules providing for a rightcomparable to the sui generis right provided for in this Directive should be per-mitted to retain, as far as the new right is concerned, the exceptions tradition-ally specified by such rules;

(53) Whereas the burden of proof regarding the date of completion of the makingof a database lies with the maker of the database;

(54) Whereas the burden of proof that the criteria exist for concluding that a sub-stantial modification of the contents of a database is to be regarded as a sub-stantial new investment lies with the maker of the database resulting from suchinvestment;

(55) Whereas a substantial new investment involving a new term of protection mayinclude a substantial verification of the contents of the database;

(56) Whereas the right to prevent unauthorized extraction and/or re-utilization inrespect of a database should apply to databases whose makers are nationalsor habitual residents of third countries or to those produced by legal personsnot established in a Member State, within the meaning of the Treaty, only ifsuch third countries offer comparable protection to databases produced bynationals of a Member State or persons who have their habitual residence inthe territory of the Community;

(57) Whereas, in addition to remedies provided under the legislation of the Mem-ber States for infringements of copyright or other rights, Member States shouldprovide for appropriate remedies against unauthorized extraction and/or re-utilization of the contents of a database;

(58) Whereas, in addition to the protection given under this Directive to the structureof the database by copyright, and to its contents against unauthorized extractionand/or re-utilization under the sui generis right, other legal provisions in theMember States relevant to the supply of database goods and services continueto apply;

(59) Whereas this Directive is without prejudice to the application to databasescomposed of audiovisual works of any rules recognized by a Member State’slegislation concerning the broadcasting of audiovisual programmes;

(60) Whereas some Member States currently protect under copyright arrangementsdatabases which do not meet the criteria for eligibility for copyright protectionlaid down in this Directive; whereas, even if the databases concerned are eligiblefor protection under the right laid down in this Directive to prevent unautho-

Appendix 577

rized extraction and/or re-utilization of their contents, the term of protectionunder that right is considerably shorter than that which they enjoy under thenational arrangements currently in force; whereas harmonization of the crite-ria for determining whether a database is to be protected by copyright may nothave the effect of reducing the term of protection currently enjoyed by therightholders concerned; whereas a derogation should be laid down to that effect;whereas the effects of such derogation must be confined to the territories of theMember States concerned,

HAVE ADOPTED THIS DIRECTIVE:

Chapter I: Scope

article 1scope

1. This Directive concerns the legal protection of databases in any form.2. For the purposes of this Directive, ‘database’ shall mean a collection of indepen-

dent works, data or other materials arranged in a systematic or methodical wayand individually accessible by electronic or other means.

3. Protection under this Directive shall not apply to computer programs used in themaking or operation of databases accessible by electronic means.

article 2limitations on the scope

This Directive shall apply without prejudice to Community provisions relating to:(a) the legal protection of computer programs;(b) rental right, lending right and certain rights related to copyright in the field of

intellectual property;(c) the term of protection of copyright and certain related rights.

Chapter II: Copyright


1. In accordance with this Directive, databases which, by reason of the selection orarrangement of their contents, constitute the author’s own intellectual creationshall be protected as such by copyright. No other criteria shall be applied to de-termine their eligibility for that protection.

2. The copyright protection of databases provided for by this Directive shall notextend to their contents and shall be without prejudice to any rights subsistingin those contents themselves.

578 Appendix

article 4database authorship

1. The author of a database shall be the natural person or group of natural personswho created the base or, where the legislation of the Member States so permits,the legal person designated as the rightholder by that legislation.

2. Where collective works are recognized by the legislation of a Member State, theeconomic rights shall be owned by the person holding the copyright.

3. In respect of a database created by a group of natural persons jointly, the exclu-sive rights shall be owned jointly.

article 5restricted acts

In respect of the expression of the database which is protectable by copyright, theauthor of a database shall have the exclusive right to carry out or to authorize:(a) temporary or permanent reproduction by any means and in any form, in whole

or in part;(b) translation, adaptation, arrangement and any other alteration;(c) any form of distribution to the public of the database or of copies thereof. The

first sale in the Community of a copy of the database by the rightholder or withhis consent shall exhaust the right to control resale of that copy within theCommunity;

(d) any communication, display or performance to the public;(e) any reproduction, distribution, communication, display or performance to the

public of the results of the acts referred to in (b).

article 6exceptions to restricted acts

1. The performance by the lawful user of a database or of a copy thereof of any of theacts listed in Article 5 which is necessary for the purposes of access to the contentsof the databases and normal use of the contents by the lawful user shall not requirethe authorization of the author of the database. Where the lawful user is autho-rized to use only part of the database, this provision shall apply only to that part.

2. Member States shall have the option of providing for limitations on the rightsset out in Article 5 in the following cases:(a) in the case of reproduction for private purposes of a non- electronic database;(b) where there is use for the sole purpose of illustration for teaching or scien-

tific research, as long as the source is indicated and to the extent justified bythe non-commercial purpose to be achieved;

(c) where there is use for the purposes of public security or for the purposes ofan administrative or judicial procedure;

(d) where other exceptions to copyright which are traditionally authorizedunder national law are involved, without prejudice to points (a), (b) and (c).

3. In accordance with the Berne Convention for the protection of Literary and Ar-tistic Works, this Article may not be interpreted in such a way as to allow its ap-plication to be used in a manner which unreasonably prejudices the rightholder’slegitimate interests or conflicts with normal exploitation of the database.

Appendix 579

Chapter III: Sui Generis Right


1. Member States shall provide for a right for the maker of a database which showsthat there has been qualitatively and/or quantitatively a substantial investmentin either the obtaining, verification or presentation of the contents to preventextraction and/or re-utilization of the whole or of a substantial part, evaluatedqualitatively and/or quantitatively, of the contents of that database.

2. For the purposes of this Chapter:(a) ‘extraction’ shall mean the permanent or temporary transfer of all or a sub-

stantial part of the contents of a database to another medium by any meansor in any form;

(b) ‘re-utilization’ shall mean any form of making available to the public all or asubstantial part of the contents of a database by the distribution of copies,by renting, by on-line or other forms of transmission. The first sale of a copyof a database within the Community by the rightholder or with his consentshall exhaust the right to control resale of that copy within the Community;Public lending is not an act of extraction or re-utilization.

3. The right referred to in paragraph 1 may be transferred, assigned or grantedunder contractual licence.

4. The right provided for in paragraph 1 shall apply irrespective of the eligibility ofthat database for protection by copyright or by other rights. Moreover, it shall applyirrespective of eligibility of the contents of that database for protection by copyrightor by other rights. Protection of databases under the right provided for in paragraph1 shall be without prejudice to rights existing in respect of their contents.

5. The repeated and systematic extraction and/or re-utilization of insubstantialparts of the contents of the database implying acts which conflict with a normalexploitation of that database or which unreasonably prejudice the legitimate in-terests of the maker of the database shall not be permitted.

article 8rights and obligations of lawful users

1. The maker of a database which is made available to the public in whatevermanner may not prevent a lawful user of the database from extracting and/orre-utilizing insubstantial parts of its contents, evaluated qualitatively and/orquantitatively, for any purposes whatsoever. Where the lawful user is authorizedto extract and/or re-utilize only part of the database, this paragraph shall applyonly to that part.

2. A lawful user of a database which is made available to the public in whatevermanner may not perform acts which conflict with normal exploitation of thedatabase or unreasonably prejudice the legitimate interests of the maker of thedatabase.

3. A lawful user of a database which is made available to the public in any mannermay not cause prejudice to the holder of a copyright or related right in respect ofthe works or subject matter contained in the database.

580 Appendix

article 9exceptions to the sui generis right

Member States may stipulate that lawful users of a database which is made avail-able to the public in whatever manner may, without the authorization of its maker,extract or re-utilize a substantial part of its contents:(a) in the case of extraction for private purposes of the contents of a non-electronic

database;(b) in the case of extraction for the purposes of illustration for teaching or scien-

tific research, as long as the source is indicated and to the extent justified bythe non-commercial purpose to be achieved;

(c) in the case of extraction and/or re-utilization for the purposes of public securityor an administrative or judicial procedure.


1. The right provided for in Article 7 shall run from the date of completion of themaking of the database. It shall expire fifteen years from the first of January ofthe year following the date of completion.

2. In the case of a database which is made available to the public in whatever man-ner before expiry of the period provided for in paragraph 1, the term of protec-tion by that right shall expire fifteen years from the first of January of the yearfollowing the date when the database was first made available to the public.

3. Any substantial change, evaluated qualitatively or quantitatively, to the con-tents of a database, including any substantial change resulting from the accu-mulation of successive additions, deletions or alterations, which would result inthe database being considered to be a substantial new investment, evaluatedqualitatively or quantitatively, shall qualify the database resulting from thatinvestment for its own term of protection.

article 11beneficiaries of protection under

the sui generis right

1. The right provided for in Article 7 shall apply to database whose makers or right-holders are nationals of a Member State or who have their habitual residence inthe territory of the Community.

2. Paragraph 1 shall also apply to companies and firms formed in accordance withthe law of a Member State and having their registered office, central administra-tion or principal place of business within the Community; however, where sucha company or firm has only its registered office in the territory of the Community,its operations must be genuinely linked on an ongoing basis with the economyof a Member State.

3. Agreements extending the right provided for in Article 7 to databases made inthird countries and falling outside the provisions of paragraphs 1 and 2 shall beconcluded by the Council acting on a proposal from the Commission. The termof any protection extended to databases by virtue of that procedure shall notexceed that available pursuant to Article 10.

Appendix 581


article 12remedies

Member States shall provide appropriate remedies in respect of infringements of therights provided for in this Directive.

article 13continued application of other legal provisions

This Directive shall be without prejudice to provisions concerning in particularcopyright, rights related to copyright or any other rights or obligations subsistingin the data, works or other materials incorporated into a database, patent rights,trade marks, design rights, the protection of national treasures, laws on restric-tive practices and unfair competition, trade secrets, security, confidentiality, dataprotection and privacy, access to public documents, and the law of contract.

article 14application over time

1. Protection pursuant to this Directive as regards copyright shall also be availablein respect of databases created prior to the date referred to Article 16(1) whichon that date fulfill the requirements laid down in this Directive as regards copy-right protection of databases.

2. Notwithstanding paragraph 1, where a database protected under copyright ar-rangements in a Member State on the date of publication of this Directive doesnot fulfill the eligibility criteria for copyright protection laid down in Article 3(1),this Directive shall not result in any curtailing in that Member State of the re-maining term of protection afforded under those arrangements.

3. Protection pursuant to the provisions of this Directive as regards the right pro-vided for in Article 7 shall also be available in respect of databases the makingof which was completed not more than fifteen years prior to the date referredto in Article 16(1) and which on that date fulfill the requirements laid down inArticle 7.

4. The protection provided for in paragraphs 1 and 3 shall be without prejudiceto any acts concluded and rights acquired before the date referred to in thoseparagraphs.

5. In the case of a database the making of which was completed not more than fif-teen years prior to the date referred to in Article 16 (1), the term of protection bythe right provided for in Article 7 shall expire fifteen years from the first of Janu-ary following that date.

article 15binding nature of certain provisions

Any contractual provision contrary to Articles 6 (1) and 8 shall be null and void.

582 Appendix


1. Member States shall bring into force the laws, regulations and administrativeprovisions necessary to comply with this Directive before 1 January 1998.

When Member States adopt these provisions, they shall contain a referenceto this Directive or shall be accompanied by such reference on the occasion oftheir official publication. The methods of making such reference shall be laiddown by Member States.

2. Member States shall communicate to the Commission the text of the provisionsof domestic law which they adopt in the field governed by this Directive.

3. Not later than at the end of the third year after the date referred to in paragraph1, and every three years thereafter, the Commission shall submit to the EuropeanParliament, the Council and the Economic and Social Committee a report on theapplication of this Directive, in which, inter alia, on the basis of specific infor-mation supplied by the Member States, it shall examine in particular the appli-cation of the sui generis right, including Articles 8 and 9, and shall verify espe-cially whether the application of this right has led to abuse of a dominant positionor other interference with free competition which would justify appropriatemeasures being taken, including the establishment of non-voluntary licensingarrangements. Where necessary, it shall submit proposals for adjustment of thisDirective in line with developments in the area of databases.

article 17


583

A30. DIRECTIVE ON THE LEGAL PROTECTION

OF DESIGNS

DIRECTIVE 98/71/EC OF THE EUROPEAN PARLIAMENTAND OF THE COUNCIL of 13 October 1998on the legal protection of designs

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community and in particu-lar Article 100a thereof,

Having regard to the proposal by the Commission,


Acting in accordance with the procedure laid down in Article 189b of the Treaty,in the light of the joint text approved by the Conciliation Committee on 29 July1998,

(1) Whereas the objectives of the Community, as laid down in the Treaty, includelaying the foundations of an ever closer union among the peoples of Europe,fostering closer relations between Member States of the Community, and en-suring the economic and social progress of the Community countries by com-mon action to eliminate the barriers which divide Europe; whereas to that endthe Treaty provides for the establishment of an internal market characterisedby the abolition of obstacles to the free movement of goods and also for the in-stitution of a system ensuring that competition in the internal market is notdistorted; whereas an approximation of the laws of the Member States on thelegal protection of designs would further those objectives;

(2) Whereas the differences in the legal protection of designs offered by the legis-lation of the Member States directly affect the establishment and functioningof the internal market as regards goods embodying designs; whereas such dif-ferences can distort competition within the internal market;

(3) Whereas it is therefore necessary for the smooth functioning of the internalmarket to approximate the design protection laws of the Member States;

(4) Whereas, in doing so, it is important to take into consideration the solutionsand the advantages with which the Community design system will provideundertakings wishing to acquire design rights;

(5) Whereas it is unnecessary to undertake a full-scale approximation of the designlaws of the Member States, and it will be sufficient if approximation is limitedto those national provisions of law which most directly affect the functioningof the internal market; whereas provisions on sanctions, remedies and en-forcement should be left to national law; whereas the objectives of this limitedapproximation cannot be sufficiently achieved by the Member States actingalone;

584 Appendix

(6) Whereas Member States should accordingly remain free to fix the proceduralprovisions concerning registration, renewal and invalidation of design rightsand provisions concerning the effects of such invalidity;

(7) Whereas this Directive does not exclude the application to designs of national orCommunity legislation providing for protection other than that conferred byregistration or publication as design, such as legislation relating to unregistereddesign rights, trade marks, patents and utility models, unfair competition or civilliability;

(8) Whereas, in the absence of harmonisation of copyright law, it is important toestablish the principle of cumulation of protection under specific registereddesign protection law and under copyright law, whilst leaving Member Statesfree to establish the extent of copyright protection and the conditions underwhich such protection is conferred;

(9) Whereas the attainment of the objectives of the internal market requires thatthe conditions for obtaining a registered design right be identical in all theMember States; whereas to that end it is necessary to give a unitary definitionof the notion of design and of the requirements as to novelty and individualcharacter with which registered design rights must comply;

(10) Whereas it is essential, in order to facilitate the free movement of goods, toensure in principle that registered design rights confer upon the right holderequivalent protection in all Member States;

(11) Whereas protection is conferred by way of registration upon the right holderfor those design features of a product, in whole or in part, which are shownvisibly in an application and made available to the public by way of publica-tion or consultation of the relevant file;

(12) Whereas protection should not be extended to those component parts whichare not visible during normal use of a product, or to those features of such partwhich are not visible when the part is mounted, or which would not, in them-selves, fulfill the requirements as to novelty and individual character; whereasfeatures of design which are excluded from protection for these reasons shouldnot be taken into consideration for the purpose of assessing whether otherfeatures of the design fulfill the requirements for protection;

(13) Whereas the assessment as to whether a design has individual charactershould be based on whether the overall impression produced on an informeduser viewing the design clearly differs from that produced on him by the exist-ing design corpus, taking into consideration the nature of the product to whichthe design is applied or in which it is incorporated, and in particular the in-dustrial sector to which it belongs and the degree of freedom of the designer indeveloping the design;

(14) Whereas technological innovation should not be hampered by grantingdesign protection to features dictated solely by a technical function; whereasit is understood that this does not entail that a design must have an aestheticquality; whereas, likewise, the interoperability of products of different makesshould not be hindered by extending protection to the design of mechan-ical fittings; whereas features of a design which are excluded from protec-tion for these reasons should not be taken into consideration for the purposeof assessing whether other features of the design fulfill the requirements forprotection;

(15) Whereas the mechanical fittings of modular products may nevertheless con-stitute an important element of the innovative characteristics of modular

Appendix 585

products and present a major marketing asset and therefore should be eligiblefor protection;

(16) Whereas a design right shall not subsist in a design which is contrary to pub-lic policy or to accepted principles of morality; whereas this Directive does notconstitute a harmonisation of national concepts of public policy or acceptedprinciples of morality;

(17) Whereas it is fundamental for the smooth functioning of the internal marketto unify the term of protection afforded by registered design rights;

(18) Whereas the provisions of this Directive are without prejudice to the applica-tion of the competition rules under Articles 85 and 86 of the Treaty;

(19) Whereas the rapid adoption of this Directive has become a matter of urgencyfor a number of industrial sectors; whereas full-scale approximation of the lawsof the Member States on the use of protected designs for the purpose of permit-ting the repair of a complex product so as to restore its original appearance,where the product incorporating the design or to which the design is appliedconstitutes a component part of a complex product upon whose appearancethe protected design is dependent, cannot be introduced at the present stage;whereas the lack of full-scale approximation of the laws of the Member Stateson the use of protected designs for such repair of a complex product should notconstitute an obstacle to the approximation of those other national provisionsof design law which most directly affect the functioning of the internal mar-ket; whereas for this reason Member States should in the meantime maintainin force any provisions in conformity with the Treaty relating to the use of thedesign of a component part used for the purpose of the repair of a complexproduct so as to restore its original appearance, or, if they introduce any newprovisions relating to such use, the purpose of these provisions should be onlyto liberalise the market in such parts; whereas those Member States which,on the date of entry into force of this Directive, do not provide for protectionfor designs of component parts are not required to introduce registration ofdesigns for such parts; whereas three years after the implementation datethe Commission should submit an analysis of the consequences of the pro-visions of this Directive for Community industry, for consumers, for compe-tition and for the functioning of the internal market; whereas, in respect ofcomponent parts of complex products, the analysis should, in particular,consider harmonisation on the basis of possible options, including a remunera-tion system and a limited term of exclusivity; whereas, at the latest one yearafter the submission of its analysis, the Commission should, after consultationwith the parties most affected, propose to the European Parliament and theCouncil any changes to this Directive needed to complete the internal marketin respect of component parts of complex products, and any other changeswhich it considers necessary;

(20) Whereas the transitional provision in Article 14 concerning the design of acomponent part used for the purpose of the repair of a complex product so asto restore its original appearance is in no case to be construed as constitutingan obstacle to the free movement of a product which constitutes such a com-ponent part;

(21) Whereas the substantive grounds for refusal of registration in those MemberStates which provide for substantive examination of applications prior to reg-istration, and the substantive grounds for the invalidation of registered designrights in all the Member States, must be exhaustively enumerated,

586 Appendix

HAVE ADOPTED THIS DIRECTIVE:


For the purpose of this Directive:(a) ‘design’ means the appearance of the whole or a part of a product resulting from

the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

(b) ‘product’ means any industrial or handicraft item, including inter alia partsintended to be assembled into a complex product, packaging, get-up, graphicsymbols and typographic typefaces, but excluding computer programs;

(c) ‘complex product’ means a product which is composed of multiple componentswhich can be replaced permitting disassembly and reassembly of the product.

article 2scope of application

1. This Directive shall apply to:(a) design rights registered with the central industrial property offices of the Mem-

ber States;(b) design rights registered at the Benelux Design Office;(c) design rights registered under international arrangements which have effect

in a Member State;(d) applications for design rights referred to under (a), (b) and (c).

2. For the purpose of this Directive, design registration shall also comprise thepublication following filing of the design with the industrial property office ofa Member State in which such publication has the effect of bringing a designright into existence.

article 3protection requirements

1. Member States shall protect designs by registration, and shall confer exclusiverights upon their holders in accordance with the provisions of this Directive.

2. A design shall be protected by a design right to the extent that it is new and hasindividual character.

3. A design applied to or incorporated in a product which constitutes a componentpart of a complex product shall only be considered to be new and to have indi-vidual character:(a) if the component part, once it has been incorporated into the complex prod-

uct, remains visible during normal use of the latter, and(b) to the extent that those visible features of the component part fulfill in them-

selves the requirements as to novelty and individual character.4. ‘Normal use’ within the meaning of paragraph (3)(a) shall mean use by the end

user, excluding maintenance, servicing or repair work.

article 4novelty

A design shall be considered new if no identical design has been made available tothe public before the date of filing of the application for registration or, if priority is

Appendix 587

claimed, the date of priority. Designs shall be deemed to be identical if their featuresdiffer only in immaterial details.

article 5individual character

1. A design shall be considered to have individual character if the overall impres-sion it produces on the informed user differs from the overall impression producedon such a user by any design which has been made available to the public beforethe date of filing of the application for registration or, if priority is claimed, thedate of priority.

2. In assessing individual character, the degree of freedom of the designer in devel-oping the design shall be taken into consideration.

article 6disclosure

1. For the purpose of applying Articles 4 and 5, a design shall be deemed to havebeen made available to the public if it has been published following registrationor otherwise, or exhibited, used in trade or otherwise disclosed, except wherethese events could not reasonably have become known in the normal course ofbusiness to the circles specialised in the sector concerned, operating within theCommunity, before the date of filing of the application for registration or, if pri-ority is claimed, the date of priority. The design shall not, however, be deemed tohave been made available to the public for the sole reason that it has been dis-closed to a third person under explicit or implicit conditions of confidentiality.

2. A disclosure shall not be taken into consideration for the purpose of applyingArticles 4 and 5 if a design for which protection is claimed under a registereddesign right of a Member State has been made available to the public:(a) by the designer, his successor in title, or a third person as a result of infor-

mation provided or action taken by the designer, or his successor in title; and(b) during the 12-month period preceding the date of filing of the application or,

if priority is claimed, the date of priority.3. Paragraph 2 shall also apply if the design has been made available to the public

as a consequence of an abuse in relation to the designer or his successor in title.

article 7designs dictated by their technical function

and designs of interconnections

1. A design right shall not subsist in features of appearance of a product which aresolely dictated by its technical function.

2. A design right shall not subsist in features of appearance of a product which mustnecessarily be reproduced in their exact form and dimensions in order to permitthe product in which the design is incorporated or to which it is applied to be me-chanically connected to or placed in, around or against another product so thateither product may perform its function.

3. Notwithstanding paragraph 2, a design right shall, under the conditions set out inArticles 4 and 5, subsist in a design serving the purpose of allowing multiple assem-bly or connection of mutually interchangeable products within a modular system.

588 Appendix

article 8designs contrary to public policy or morality

A design right shall not subsist in a design which is contrary to public policy or toaccepted principles of morality.

article 9scope of protection

1. The scope of the protection conferred by a design right shall include any designwhich does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in de-veloping his design shall be taken into consideration.


Upon registration, a design which meets the requirements of Article 3(2) shall beprotected by a design right for one or more periods of five years from the date of fil-ing of the application. The right holder may have the term of protection renewedfor one or more periods of five years each, up to a total term of 25 years from thedate of filing.

article 11invalidity or refusal of registration

1. A design shall be refused registration, or, if the design has been registered, thedesign right shall be declared invalid:(a) if the design is not a design within the meaning of Article 1(a); or(b) if it does not fulfill the requirements of Articles 3 to 8; or(c) if the applicant for or the holder of the design right is not entitled to it under

the law of the Member State concerned; or(d) if the design is in conflict with a prior design which has been made available

to the public after the date of filing of the application or, if priority is claimed,the date of priority, and which is protected from a date prior to the said dateby a registered Community design or an application for a registered Commu-nity design or by a design right of the Member State concerned, or by anapplication for such a right.

2. Any Member State may provide that a design shall be refused registration, or, ifthe design has been registered, that the design right shall be declared invalid:(a) if a distinctive sign is used in a subsequent design, and Community law or

the law of the Member State concerned governing that sign confers on theright holder of the sign the right to prohibit such use; or

(b) if the design constitutes an unauthorised use of a work protected under thecopyright law of the Member State concerned; or

(c) if the design constitutes an improper use of any of the items listed in Article6b of the Paris Convention for the Protection of Industrial Property, or ofbadges, emblems and escutcheons other than those covered by Article 6b ofthe said Convention which are of particular public interest in the MemberState concerned.

Appendix 589

3. The ground provided for in paragraph 1(c) may be invoked solely by the personwho is entitled to the design right under the law of the Member State concerned.

4. The grounds provided for in paragraph 1(d) and in paragraph 2(a) and (b) maybe invoked solely by the applicant for or the holder of the conflicting right.

5. The ground provided for in paragraph 2(c) may be invoked solely by the personor entity concerned by the use.

6. Paragraphs 4 and 5 shall be without prejudice to the freedom of Member Statesto provide that the grounds provided for in paragraphs 1(d) and 2(c) may also beinvoked by the appropriate authority of the Member State in question on its owninitiative.

7. When a design has been refused registration or a design right has been declaredinvalid pursuant to paragraph 1(b) or to paragraph 2, the design may be regis-tered or the design right maintained in an amended form, if in that form it com-plies with the requirements for protection and the identity of the design isretained. Registration or maintenance in an amended form may include regis-tration accompanied by a partial disclaimer by the holder of the design rightor entry in the design Register of a court decision declaring the partial invalid-ity of the design right.

8. Any Member State may provide that, by way of derogation from paragraphs 1 to7, the grounds for refusal of registration or for invalidation in force in that Stateprior to the date on which the provisions necessary to comply with this Direc-tive enter into force shall apply to design applications which have been made priorto that date and to resulting registrations.

9. A design right may be declared invalid even after it has lapsed or has beensurrendered.

article 12rights conferred by the design right

1. The registration of a design shall confer on its holder the exclusive right to use itand to prevent any third party not having his consent from using it. The afore-mentioned use shall cover, in particular, the making, offering, putting on themarket, importing, exporting or using of a product in which the design is incor-porated or to which it is applied, or stocking such a product for those purposes.

2. Where, under the law of a Member State, acts referred to in paragraph 1 couldnot be prevented before the date on which the provisions necessary to complywith this Directive entered into force, the rights conferred by the design right maynot be invoked to prevent continuation of such acts by any person who hadbegun such acts prior to that date.

article 13limitation of the rights conferred

by the design right

1. The rights conferred by a design right upon registration shall not be exercised inrespect of:(a) acts done privately and for non-commercial purposes;(b) acts done for experimental purposes;(c) acts of reproduction for the purposes of making citations or of teaching, pro-

vided that such acts are compatible with fair trade practice and do not un-

590 Appendix

duly prejudice the normal exploitation of the design, and that mention ismade of the source.

2. In addition, the rights conferred by a design right upon registration shall not beexercised in respect of:(a) the equipment on ships and aircraft registered in another country when these

temporarily enter the territory of the Member State concerned;(b) the importation in the Member State concerned of spare parts and accesso-

ries for the purpose of repairing such craft;(c) the execution of repairs on such craft.

article 14transitional provision

Until such time as amendments to this Directive are adopted on a proposal from theCommission in accordance with the provisions of Article 18, Member States shallmaintain in force their existing legal provisions relating to the use of the design of acomponent part used for the purpose of the repair of a complex product so as to re-store its original appearance and shall introduce changes to those provisions onlyif the purpose is to liberalise the market for such parts.

article 15exhaustion of rights

The rights conferred by a design right upon registration shall not extend to acts relat-ing to a product in which a design included within the scope of protection of the de-sign right is incorporated or to which it is applied, when the product has been put onthe market in the Community by the holder of the design right or with his consent.

article 16relationship to other forms of protection

The provisions of this Directive shall be without prejudice to any provisions of Com-munity law or of the law of the Member State concerned relating to unregistereddesign rights, trade marks or other distinctive signs, patents and utility models, type-faces, civil liability or unfair competition.

article 17relationship to copyright

A design protected by a design right registered in or in respect of a Member State inaccordance with this Directive shall also be eligible for protection under the law ofcopyright of that State as from the date on which the design was created or fixed inany form. The extent to which, and the conditions under which, such a protection isconferred, including the level of originality required, shall be determined by eachMember State.

article 18revision

Three years after the implementation date specified in Article 19, the Commissionshall submit an analysis of the consequences of the provisions of this Directive for

Appendix 591

Community industry, in particular the industrial sectors which are most affected,particularly manufacturers of complex products and component parts, for consum-ers, for competition and for the functioning of the internal market. At the latest oneyear later the Commission shall propose to the European Parliament and the Coun-cil any changes to this Directive needed to complete the internal market in respectof component parts of complex products and any other changes which it considersnecessary in light of its consultations with the parties most affected.

article 19implementation

1. Member States shall bring into force the laws, regulations or administrative pro-visions necessary to comply with this Directive not later than 28 October 2001.

When Member States adopt these provisions, they shall contain a referenceto this Directive or shall be accompanied by such reference on the occasion oftheir official publication. The methods of making such reference shall be laiddown by Member States.

2. Member States shall communicate to the Commission the provisions of nationallaw which they adopt in the field governed by this Directive.

article 20entry into force

This Directive shall enter into force on the 20th day following its publication in theOfficial Journal of the European Communities.

article 21addressees


593

table of cases

ABKCO Music, Inc. v. Harrisongs Music,Ltd., 722 F.2d 988, 998 (2d Cir. 1983),5.4.1 n.555

ABKCO Music & Records Inc. v. MusicCollection Int’l Ltd, [1995] RPC 657 (Ct.App. Civ. Div. 1994), 3.1.2.2 n.38

Aitken, Hazen, Hoffman, Miller, P.C. v.Empire Constr. Co., 542 F. Supp. 252, 259(D. Neb. 1982), 5.2.1.2 n.310

Alfred Bell & Co., Ltd. v. Catalda Fine Arts,Inc., 191 F.2d 99 (2d Cir. 1951),5.1.1.1.B.v n.119

Allarcom Pay Television Ltd. v. GeneralInstrument Corp., 69 F.3d 381, 387 (9thCir. 1995), 3.1.2.2 n.34

Alva Studios, Inc. v. Winninger, 177 F. Supp.265, 267 (S.D.N.Y. 1959), 5.1.1.1.A n.51

American Banana Co. v. United Fruit Co.,213 U.S. 347, 357 (1909), 3.1.1 n.17

American Geophysical Union v. Texaco, Inc.,60 F.3d 913 (2d Cir. 1994), 5.5.1.1.B n.871

Arica Inst. Inc. v. Palmer, 970 F.2d 1067,1075–1077 (2d Cir. 1992), 5.1.1.1.B.iv n.98

Arum v. Claire & Troyenne, Court ofCassation, Comm., Fin., & Econ. Div.March 21, 1995, 166 R.I.D.A. 278(1995), 5.1.1.1.B.viii n.162

Atari, Inc. v. JS&A Group, Inc., 597 F. Supp.5 (N.D.Ill. 1983), 5.5.1.3.B n.903

Atlas Film v. Janus Film, German FederalSupreme Court, Jan. 27, 1978 (Case I ZR97/76), 10 I.I.C. 358 (1979), 4.1.1.4.B.ii,4.1.1.4.B.ii n.96

Baker v. Selden, 101 U.S. 99, 102–103(1879), 5.1.1.1.A n.27, 5.1.1.1.B.iv n.102,5.1.1.1.B.vii n.141

Bartsch v. Metro-Goldwyn-Mayer, Inc., 391F.2d 150 (2d Cir.), cert. denied, 393 U.S.826 (1968), 5.2.2.1.A n.409

Benny v. Loew’s, Inc., 239 F.2d 532 (9th Cir.1956), aff’d by an equally divided Court,356 U.S. 43 (1958), 5.5.1.2.A n.879

Bleistein v. Donaldson Lithographing Co.,188 U.S. 239, 251 (1903), 5.1.1.1.A n.40,5.1.1.1.B.iv n.99

Bodley Head Ltd. v. Flegon, [1972] R.P.C.587, 3.3.2.2 n.226

Bong v. Alfred S. Campbell Art Co., 214 U.S.236, 245–247 (1909), 4.2.2.1 n.161,4.2.2.1 n.166

Boosey & Hawkes Music Publishers Ltd. v.Walt Disney Co., 145 F.3d 481, 491–492 (2d Cir. 1998), 3.3.1.1.A n.148,3.3.1.2 n.167, 3.3.1.2 n.169,5.2.2.1.A n.409

Bremen v. Zapata Off-Shore Co., 407 U.S. I,10 (1972), 3.3.1.3 n.182

Callaghan v. Myers, 128 U.S. 617, 647(1888), 5.1.1.2.B n.190

Campbell Connelly & Co. Ltd. v. Noble, IW.L.R. 252 (1963), 3.3.2.2.C

Campbell v. Acuff-Rose Music, Inc., 510U.S. 569 (1994), 5.5.1.2.A

Caroline of Monaco v. Burda GmbH, Courtof Appeals, Paris, March 19, 1984, 18I.I.C. 823 (1987), 3.1.2.1.B n.32

Chappell & Co. v. Fields, 210 F. 864, 866(2d Cir. 1914), 4.2.2.1 n.167

Clifford Davis v. WEA Records, [1975] AllE.R. 237, 5.2.2 n.369

Columbia Broadcasting System, Inc. v.Scorpio Music Distributors, Inc., 569 F.Supp. 47, (E.D. Pa. 1983), aff’d withoutop. 738 F.2d 424 (3d Cir. 1984), 5.5.1.4n.910

Columbia Pictures Industries, Inc. v. Aveco,Inc., 800 F.2d 59 (3rd Cir. 1986),5.4.1.1.B n.647

Columbia Pictures Industries, Inc. v.Professional Real Estate Investors, Inc.,866 F.2d 278 (9th Cir. 1989), 5.4.1.1.Bn.648

Community for Creative Non-Violence v.Reid, 490 U.S., 730, 751–752 (1988),5.2.1.4 n.337

Composers, Authors and PublishersAssociation of Canada Ltd. v. Interna-tional Good Music, Inc., 37 D.L.R.2d I, 7 (Canada Sup. Ct. 1963),3.1.2.2 n.34

594 Table of Cases

Computer Assocs. Int’l, v. Altai, Inc., 126F.3d 365, 371 (2d Cir.1997), 3.1.2.1.An.30

Consorts Huston et. autres v. Sté TurnerEntertainment, Court of Cassation 1st Civ.Chamber, May 28, 1991, 149 R.I.D.A. 197(1991), 3.3.2.2.C, 3.3.2.2.C n.271

Consorts Wegmann v. Elsevier Science Ltd.,Court of Cassation, 1st Civil chamber, 16July 16, 1997, 176 R.I.D.A 402 (1998),3.1.2.1.B n.32

Corcovado Music Corp. v. Hollis Music,Inc., 981 F.2d 679 (2d Cir. 1993), 3.3.1.3,3.3.2.2.C n.270

Creative Technology, Ltd. v. Aztec SystemPTE Ltd., 61 F.3d 696, 702 (9th Cir.1995), 3.3.1.1.A n.148, 3.3.1.2

de Villiers v. Soton, Court of Cassation, 1stCivil Chamber, May 5, 1993, 158 R.I.D.A.205 (1993), 5.1.1.1.B.i n.71

Def Lepp Music v. Stuart-Brown, (1986)R.P.C. 273. 12 E.I.P.R. 254 (1990),3.3.1.1.A n.140

Denbicare U.S.A. Inc. v. Toys “R” Us, Inc.,84 F.3d 1143, 1150 (9th Cir.), cert. denied,519 U.S. 873 (1996), 5.5.1.4 n.911

Deutsche Grammophon v. Metro, Case 78/70 [1971] ECR 487, 5.5.1.4 n.907

DRG Inc. v. Datafile Ltd., (1987) 18 C.P.R.(3d) 538, 545–546, 550, 27 C.I.P.R. 136(Fed. Ct.), aff’d (1991) [117 N.R. 308], 35C.P.R. (3d) 243 (Fed. C.A.), 5.1.1.1.An.26, 5.1.1.1.B.iv n.99

DSC Communications Corp. v. DGITechnologies, Inc., 81 F.3d 597, 601 (5thCir. 1996), 5.5.3 n.975

Dun v. Lumbermen’s Credit Association,209 U.S. 20 (1908), 5.6.1.2 n.1005

The Eleftheria, 2 All E.R. 641 (1969),3.3.1.3, 3.3.1.3 nn.181

Elton John v. James, [1991] 18 F.S.R. 397,449, 5.2.2 n.369

Esquire, Inc. v. Ringer, 591 F.2d 796(D.C.Cir. 1978), 5.1.1.1.B.viii n.169

Fabris v. Loudmer, Court of Cassation (1stCiv. Chamber), January 22, 1991, 23I.I.C. 294 (1992), 5.5.1.2.D n.898

Fédèration Française de RandonnéePédestre v. Editions Franck Mercier,Court of Cassation, 1st Civil Chamber,June 30, 1998, 178 R.I.D.A. 236 (1998),5.1.1.1.A n.50, 5.1.1.1.B.iv n.101

Feist Publications, Inc. v. Rural TelephoneService Co., 499 U.S. 340 (1991),5.1.1.1.A, 5.1.1.1.B.vi n.137

Francis Day & Hunter v. Twentieth CenturyFox, 4 All E.R. 192 (1939), 5.1.1.1.B.in.68

Friedman v. Sociétè Galba Films, Court ofAppeals, Paris, April 24, 1974 7 I.I.C. 130(1976), 4.1.1.4.B.ii n.101

G. Ricordi & Co. v. Columbia GramophoneCo., 258 F. 72–74 (S.D.N.Y. 1919),4.2.2.1 nn.157–158

GB Mktg. USA, Inc. v. GerolsteinerBrunnen GmbH & Co., 782 F. Supp. 763,773 (W.D.N.Y. 1991), 3.1.2.2 n.39

Gershwin Publishing Corp. v. ColumbiaArtists Management, Inc., 443 F.2d 1159,1162 (2d Cir. 1971), 5.4.1.1.C n.703

Gieules v. Sagne, Court of Cassation, I CivilChamber, Nov. 9, 1993, 161 R.I.D.A. 273(1994), 5.1.1.1.B.v n.119

Gilliam v. American BroadcastingCompanies, Inc., 538 F.2d 14 (2d Cir.1976), 5.4.2.2

Harolds Stores, Inc. v. Dillard Dept. Stores,Inc., 82 F.3d 1533, 1555–1556 (10th Cir.1996), 5.6.1.2 n.1004

Harper & Row Publishers, Inc. v. NationEnterprises, 471 U.S. 539, 554–555(1985), 5.4.2.3 n.827, 5.5 n.854

Heim v. Universal Pictures Co., 154 F.2d480 (2d Cir. 1946), 5.1.1.3.B.i n.222

Hermann Luchterhand Verlag GmbH v.Albert Langer-Georg Müller VerlagGmBH, German Federal Supreme Court,April 16, 1975 (Case No. I ZR 40/73) 7I.I.C. 134 (1976), 3.3.2.2 n.226

Holland v. Vivian Van Damm Productions,Ltd., [Ch. 1936], in E. J. McGillivray,Copyright Cases 1936–45, 69, 76 (1949),5.4.1.1.A.ii

Houghton Mifflin Co. v. Stackpole Sons, Inc.,104 F.2d 306, 308, 311, 42 U.S.P.Q. 96 (2dCir.), cert. denied, 308 U.S. 597, 43 U.S.P.Q.521 (1939), 4.2.2.1 n.159, 5.2.2.1.A n.411

Hubbard Broadcasting, Inc. v. SoutherSatellite Sys., Inc., 593 F. Supp. 808,810–811, (D Minn. 1984), aff’d, 777 F.2d393, (8th Cir. 1985), cert. denied, 479U.S. 1005 (1986), 5.2.2.1.A n.412

Huston v. La Cinq, Court of Cassation 1stCiv. Chamber, May 28, 1991, 149 R.I.D.A.197 (1991), 3.3.2.2.C, 3.3.2.2.C n.271

Table of Cases 595

Independent Television Publications Ltd. v.Time Out Ltd., [Ch. Div. 1984] F.S.R. 64,5.1.1.1.B.vi n.136

Itar-Tass Russian News Agency v. RussianKurier Inc., 153 F.3d 82 (2d Cir. 1998),3.3.2.1.A, 3.3.2.1.A n.207, 3.3 n.123

ITSI T.V. Productions v. CaliforniaAuthority of Racing Fairs, 785 F. Supp.854, 866 (E.D. Cal. 1992), 3.3.1.1.An.148

Kieselstein-Cord v. Accessories by Pearl,Inc., 632 F.2d 989, 993 (2d Cir. 1980),5.1.1.1.B.viii n.170

Kilbe v. Trudel, 945 F. Supp. 1268, 1270 (D.Ariz. 1996), 3.1.2 n.25

Kluwer v. Lamoth, 169 R.I.D.A. 129, 173(1996), 5.2.1.2

Lamothe v. Atlantic Recording Corp., 847F.2d 1403 (9th Cir. 1988), 5.4.2.1 n.807

Le Brun v. SA Braesheather, Cass. 1st Civ.Chamber, Oct. 18 1994, 164 R.I.D.A.304, 308 (1995), 5.2.1.2 n.315

Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir.1997), 5.4.1.1.A.ii n.587

Levy v. Rutley, 6 L.R.-C.P. 523, 529 (1871),5.2.1.2 n.314

Lockman Foundation v. EvangelicalAlliance Mission, 930 F.2d 764, 767 (9thCir. 1991), 3.3.1.2 nn.167–170

London Films Productions Ltd. v. Intercon-tinental Communications, Inc., 580 F.Supp.47, 48–49 (S.D.N.Y. 1984), 3.1.2n.21, 3.3.1.1.A, 3.3.1.1.A n.148

Los Angeles News Service v. ReutersTelevision Int’l, Ltd., 149 F.3d 987 (9thCir. 1998), 3.1.2.1.B n.32

Macmillan & Co. Ltd. v. Cooper, [1923] 40T.L.R. 186, 188 (1924), 5.1.1.1.B.vi n.136

MAI Systems Corp. v. Peak Computer, Inc.,991 F.2d 511 (9th Cir. 1993), cert.dismissed, 510 U.S. 1033 (1994),5.5.1.3.B n.904

Millar v. Taylor, 4 Burr 2303, 98 Eng. Rep.201 (K.B. 1769), 1.1

Mirage Editions, Inc. v. Albuquerque A.R.T.Co., 856 F.2d 1341, 1343 (9th Cir. 1988),5.4.1.1.A.ii n.587, 5.4.1.1.A.ii n.590

Morrissey v. Procter & Gamble Co., 379F.2d 675 (1st Cir. 1967), 5.1.1.2.A n.183

Motel 6, Inc. v. N. 6 Motel Ltd., (1981) 127D.L.R. (3d) 267, 56 C.P.R. (2d) 44, 54(Fed. Ct.), 5.1.1.1.B.iv n.99

Murray v. British Broadcasting Corp., 81 F.3d287, 293, (2d Cir. 1996), 3.3.1.2 n.166

National Enquirer, Inc. v. News Group,Ltd., 670 F. Supp. 962, 970 (S.D. Fla.1987), 3.1.2.1.B n.32

National Geographic Soc’y v. ClassifiedGeographic, Inc., 27 F. Supp. 655(D.Mass. 1939), 5.4.1.1.A.ii n.586

Nelson v. Rye & Cocteau Records, Ltd.,[1996] 2 All E.R. 186, I WLR 1378,5.2.2.2.A n.429

Nichols v. Universal Pictures Corp., 45 F.2d119 (2d Cir. 1930), 5.1.1.1.B.i n.71

Novelty Textile Mills, Inc. v. Joan FabricsCorp., 558 F.2d 1090 (2d Cir. 1977),5.1.1.1.B.iv n.99

Oddo v. Ries, 743 F.2d 630, 634 (9th Cir.1984), 5.2.2.2.A n.429

On Command Video Corp. v. ColumbiaPictures Industries, 777 F. Supp. 787(N.D. Cal. 1991), 5.4.1.1.B.iv n.689,5.4.1.1.B n.648

O’Sullivan v. Managment Agency & Music,[1985] Q.B.428., 5.2.2 n.369

Parfums Givenchy, Inc. v. Drug Emporium,Inc., 38 F.3d 477 (9th Cir. 1994), cert.denied, 514 U.S. 1004 (1995), 5.5.1.4n.909

Pearce v. Ove Arup Partnership Ltd., Courtof Appeal (Civil Division) [1999] All E.R.769, [1999] F.S.R. 525, 3.3.1.1.A n.144

Phil Collins v. Imtrat HandelsgesellschaftGmBh, Joined Cases C-92/92 and C-326/92, 3 C.M.L.R. 773 (1993), 2.1.3.2,3.2.4.3, 3.2.4.3 n.120

Piper Aircraft Co. v. Reyno, 454 U.S. 235,255 (1981), 3.3.1.2 n.165

Potter v. Broken Hill, 3 C.L.R. 479 (HighCourt of Australia) (1906), 3.3.1.1.A,3.3.1.1.A nn.137–138

Quality King Distributors, Inc. v. L’AnzaResearch International, Inc., 523 U.S.135 (1998), 5.5.1.4

Radio Telefis Eiresann (RTE) and Indepen-dent Television Publications Ltd. (ITP) v.Commission, Cases C-242 and 242/91 P[1995] ECR I 743, 5.5.3 n.972

Redwood Music Ltd. v. Chappell & Co., Ltd.,[Q.B. 1982] R.P.C. 109, 120, 5.1.1.1.B.vn.123

596 Table of Cases

Repp v. Webber, 132 F.3d 882, 889 (2d Cir.1997), 5.4.1 n.557

Rey v. Lafferty, 990 F.2d 1379, 1390 (1stCir. 1993), 5.2.2.1.A n.410

Reyher v. Children’s Television Workshop,533 F.2d 87, 92 (2d Cir.), 5.1.1.2.A n.184

Richmond v. Weiner, 353 F.2d 41, 46. (9th Cir.1965), cert. denied, 384 U.S. 928, reh’g de-nied, 384 U.S. 994 (1966), 5.2.1.2 n.322

Robert Stigwood Group Ltd. v. O’Reilly, 530F.2d 1096, 1100 (2d Cir.), 3.1.2.2 n.37

Rose v. Information Services, Ltd.,[Chancery Div. 1987] F.S.R. 254,5.1.1.1.B.i n.68

Scania v. Diesel Technic de L’Ouest, Courtof Cassation, April 7, 1998, 177 R.I.D.A.255, 256 (1998), 3.3.2.1.A n.202

Schmid Brothers Inc. v. Genossenschaft derFranziskanerinnen von Siessen e.V.,German Federal Supreme Court, Dec. 19,1975 (Case No. I ZR 110/74), at 8 I.I.C.276–278, 280, 3.1.2.1.A, 3.1.2.1.B

Schroeder v. Macaulay, [1974] 3 All E. R.616, 5.2.2 n.369

Sega Enterprises, Ltd. v. Accolade, Inc., 977F.2d 1510, 1527–28 (9th Cir. 1992),5.5.1.1.B n.868, 5.5.1.3.B n.902

Shapiro, Bernstein & Co. v. H.L. Green Co.,316 F.2d 304, 307 (2d Cir. 1963),5.4.1.1.C n.704

Sheldon v. Metro-Goldwyn Pictures Corp.,81 F.2d 49, 54 (2d Cir.), cert. denied, 298U.S. 669 (1936), 5.1.1.1.A n.37

Sinanide v. La Maison Kosmeo, [1928] [K.B.Div.] 44 T.L.R. 371, 5.4.1 n.555

Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., 3 C.P.R. (3d) 81(B.C.) (1984), 5.1.1.1.A n.36

Smith v. Montoro, 648 F.2d 602, 605 (9thCir. 1981), 5.4.2.1 n.807

Sony Corp. of America v. Universal CityStudios, Inc., 464 U.S. 417, 434–442(1984), 5.4.1.1.C nn.705–706

Spiliada Maritime Corp. v. Cansulex Ltd.,[1987] AC 460, 3.3.1.2

Steele v. Bulova Watch Co., 344 U.S. 280,286–287 (1952), 3.1.2 n.20, 3.1 n.8

Subafilms, Ltd. v. MGM-Pathe Communica-tions Co., 24 F.3d 1088, 1094 (9th Cir.1994), 3.1.2.2, 3.1.2.2 n.35

Ted Arnold Ltd. v. Silvercraft Co., 259 F. Supp.733 (S.D.N.Y. 1966), 5.1.1.1.B.viii n.169

Tele-Cine Film Produktion GmbH v.Constantin Film GmbH & OceaniaProduzioni Internazionali Cinema-tografiche SRL, German FederalSupreme Court, Jan 27, 1978(Case: I ZR 4/77) 10 I.I.C. 363(1979), 4.1.1.4.B.ii n.102

Tele-Direct (Publications) Inc. v. AmericanBusiness Information, Inc., 76 C.P.R. 3d296, 303–304, (1997), rev. denied, 1998,5.1.1.1.A n.45

Thermopac & Borne v. Seprosy, Court ofCassation, Civ. I, March 28, 1995, 165R.I.D.A. 326 (1995), 5.1.1.1.B.viii n.162

Turner Entertainment v. Huston, Court ofAppeal, Paris 4th Chamber, July 6, 1989,143 R.I.D.A. 329, 335 (1989), 3.3.2.2.Cn.272

Twin Books Corp. v. Walt Disney Co., 83F.3d 1162, 1165–67 (9th Cir. 1996),3.1.2.3 n.42, 5.1.1.3.B.i

Tyburn Productions Ltd. v. Conan Doyle, IAll E.R. 909 (1990), 3.3.1.1.A

United Dictionary Co. v. G. & C. Merriam Co.,208 U.S. 260, 264 (1908), 3.1.2.3 n.42

United States v. Postal, 589 F.2d 862, 876–877 (5th Cir. 1979), 2.1 n.17

Universal Pictures Co. v. Harold LloydCorp., 162 F.2d 354, 359 (9th Cir. 1947),5.1.1.1.B.ii n.77

University of London Press, Ltd. v.University Tutorial Press, Ltd., [1916] 2Ch. 601, 608–609, 5.1.1.1.A n.29

Update Art, Inc. v. Modiin Publishing, 843F.2d 67, 73 1784 (2d Cir. 1988), 3.1.2.1.Bn.32

Van Dale v. Romme, Hoge Raad, Jan. 41991, 5.1.1.1.A n.47

Vargas v. Esquire, Inc., 164 R.2d 522, 526(7th Cir. 1947), 5.4.2.1 n.805

Walker v. Time-Life Films, Inc., 784 F.2d44, 50, (2d Cir.), 5.1.1.2.A n.184

Walt Disney Productions v. Air Pirates, 581F.2d 751 (9th Cir. 1978), cert. denied,439 U.S. 1132 (1949), 5.5.1.2.A n.878

Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 668(1834), 5.1.1.2.B n.190

Williams & Wilkins Co. v. United States,487 F.2d 1345 (1973), aff’d by an equallydivided Court, 420 U.S. 376 (1975),5.5.1.1.B n.869

597

subject index

abridgmentscopyright protection of, 5.1.1.1.B.vrights for, 5.4.1.1.A.ii, 5.4.2.2

abuse, of copyright, 5.5.3actors, ownership by, 5.2.1.5.B.i, 5.2.1.5.B.iiadaptations

copyright exemptions for, 5.5.1, 5.5.1.6.Acopyright protection of, 5.1.1, 5.1.1.1.B.i,

5.1.1.1.B.vfor educational uses, 5.5.1.5for incidental uses, 5.5.1.3multilateral copyright treaties for,

2.1.2.1.A, 2.1.2.1.Bnational treatment of, 3.2.2.1ownership determination of, 5.2.1.5.Afor private uses, 5.5.1.1for public uses, 5.5.1.2rights for, 5.4.1.1.A.ii, 5.4.2.2statutory licenses and, 5.5, 5.5.1.6

administrative regulations, for satellitetransmissions, 2.2.4

admission fees, to public performances,5.4.1.1.B

advertisements, copyright protection of,5.1.1.1.B.i, 5.1.1.1.B.iv

aesthetic merit, as copyright standard,5.1.1.1.A, 5.1.1.1.B.iv

affixation of notice. See noticeAfrica, copyright protection in, 1, 2.1.2.2.Aalienability, ownership transfer and, 5.2.2anonymous works

paternity rights for, 5.4.2.1term of protection of, 5.3.1.1.A.iii

anthologiescopyright exemptions for, 5.5.1.5copyright protection of, 2.1.2.1.B.ii,

5.1.1, 5.1.1.1.B.i, 5.1.1.1.B.viterm of protection for, 5.3.1.1.A.ii

anti-circumvention protection, for digitaltechnologies, 2.1.2.3, 5.4.1.3, 5.6

antitrust rules, against foreign conduct,3.1.1, 3.3.2.2.A

Anton Piller Order, 5.6.1.1

applied artcopyright protection of, 1.2.1, 5.1.1.1.B.iii,

5.1.1.1.B.iv, 5.1.1.1.B.viii, 5.1.1.1.B.viiin.173

national treatment of, 2.1.2.1.B.ii,2.1.2.2.B.iii, 3.2.4.3, 5.1.1.1.B.viii

term of protection for, 2.3.1.3, 2.3.2.3,5.3.1.1.B.ii

architectural workscopyright protection of, 2.1.2.1.B.ii,

5.1.1.1.B, 5.1.1.1.B.ivforeign protectibility of, 4.1.1.1.B.iii

archival copies, copyright exemptions for,5.5.1.3.A, 5.5.1.3.B, 5.5.1.5

arrangements, musical, protection of,5.1.1.1.B.v, 5.1.2.1

art reproductions/restorationscopyright protection of, 5.1.1.1.A,

5.1.1.1.B.veconomic rights for, 5.4.1.1.A.ii

artistic worksBerne Convention description of,

2.1.2.1.B, 5.1.1copyright exemptions for, 5.5.1.5copyright protection of, 1.1, 5.1.1, 5.1.1.1.Aintegrity rights for, 5.4.2.2neighboring rights protection of, 1.2.2, 5.1as protectible vs. unprotectible, 5.1.1.1,

5.1.1.2public exhibition rights for, 5.4.1.1.B.vterm of protection for, 5.3.1.1traditional legal protection of, 1, 1.1,

1.2.1, 1.2.2Asia, copyright protection in, 1, 2.1.2.2.Aassignment of copyright. See transfer of

copyrightassignment presumption, for cinemato-

graphic works, 5.2.1.5.B.i, 5.2.1.5.B.in.359, 5.2.1.5.B.i n.361

attachment, point offoreign protectibility and, 4.1, 4.1.1.1,

4.1.1.1.B, 4.1.1.2.B, 4.1.2.1.Bmoral rights protection and, 5.4.2

598 Subject Index

attachment, point of (continued)in multilateral copyright treaties,

2.1.2.2.B, 2.1.2.3, 4.1in neighboring rights treaties, 2.2.1.2,

2.2.1.3, 2.2.1.4, 2.2.2, 2.2.3, 4.1.2.1.Bfor performers and performances,

4.1.2.1.Bin trade arrangements, 2.3.1.1, 2.3.2.2for U.S. protection of foreign works,

4.2.2, 4.2.2.1, 4.2.2.2, 4.2.2.3, 4.2.2.4,4.2.2.5, 4.2.2.6

attorney fees, award of, 2.3.1.4, 2.3.2.4,5.6.2 n.1008, 5.6.2 n.1022

attribution rightsin multilateral copyright treaties,

2.1.2.1.A, 2.1.2.1.B.ivin neighboring rights treaties, 2.2.3paternity rights and, 5.4.2.1U.S. protection of, 4.2.3, 5.4.2.1

audience. See public receptionAudio Home Recording Act (1992), 5.5.1.6.Baudio recordings. See home audiotaping;

phonograms; sound recordingsaudiovisual works

Berne Convention position on, 5.2.1.5.B.icopyright exemptions for, 5.5.1.5national treatment of, 5.2.1.5.Aownership determination of, 5.2, 5.2.1.5ownership transfer of, 5.2.2.2.Bpublic exhibition rights for, 5.4.1.1.B.i,

5.4.1.1.B.vrental rights for, 5.4.1.1.A.iiiRome Convention position on,

5.2.1.5.B.iIauthor-producer relationships, 5.2.1.5.A,

5.2.1.5.B, 5.4.2.5authors’ death

and copyright extension, 1.1, 2.1.2.1.Areproduction protection after, 1.2.1,

2.1.2.1.B.iii, 2.1.2.2.Aand term of protection, 5.3.1.1.A.i,

5.3.1.1.B.i, 5.3.2.3authors’ rights. See also specific right

alienability of, 5.2.2in Berne Convention, 2.1.2.1.A, 2.1.2.1.A

n.38, 2.1.2.1.B, 2.1.2.1.B n.69collecting societies and, 5.2.2.3in continental vs. common law, 1.2.1,

5.1.1.4library lending rights and, 5.4.1.1.A.iiinatural rights basis of, 1, 1.1, 1.2.1protectible subject matter for, 5.1.1.1,

5.1.1.1.B, 5.4.1.2.Drenewal of, 5.1.1.3.B.vtransfer of, 5.2.2, 5.2.2.1.A

authorshipchoice of law for, 3.3.2.1, 3.3.2.1.Acollaborative (joint), 5.2, 5.2.1.2copyright protection and, 5.1.1.2.Adetermination of, 2.1.2.2.B.iii, 5.2foreign protectibility and, 4.1.1.1.B.i,

4.2.2.1historical perspectives of, 1.2.2individual, 5.2, 5.2.1.1misuse and abuse of, 5.5.3neighboring rights relationship with,

5.1.2, 5.1.2.1paternity rights as, 5.4.2.1

auxiliary rights, for digital technologies,5.4.1.3

Belgiumownership transfer in, 5.2.2.1.C,

5.2.2.1.Dwithdrawal rights in, 5.4.2.4

Berne Convention, for the Protection ofLiteracy and Artistic Works

authorship determination in, 5.2.1.1,5.2.5.5.B.i

back door to, 2.1.2.1.A, 4.1.1.1.A.iiBerlin Act (1908), 2.1.2.1.A, 5.1.1.3Berne Act (1886), 2.1.2.1.ABerne Additional Protocol (1914),

2.1.2.1.A, 2.1.2.1.B.vBrussels Act (1948), 4.1.1.1, 4.1.1.1.B.ii,

4.1.1.4.A, 5.1.1.1.B.viiicopyright exemptions in, 5.5, 5.5.1,

5.5.1.2, 5.5.1.3.A, 5.5.1.6.C, 5.5.2economic rights in, 5.4, 5.4.1.1.A,

5.4.1.1.A.i n.562, 5.4.1.1.A.i n.568,5.4.1.1.A.iii, 5.4.1.1.B, 5.4.1.2, 5.4.1.3

foreign protectibility through, 4.1.1,4.1.1.1

infringement remedies in, 5.6, 5.6.1.1,5.6.1.1 n.993

minimum standards of, 1, 1.1, 1.2.1,1.2.2, 2.1.2.1.A, 3.2.2.1, 4.1.1.1

moral rights in, 5.4.2, 5.4.2.1, 5.4.2.2,5.4.2.3 n.823

national treatment terms in, 3.2.2.1,3.2.3.1, 3.2.4.3

neighboring rights relationship to, 5.1.2Paris Act (1971): background for,

2.1.2.1.A, 2.1.2.1.A n.69; foreignprotectibility through, 4.1.1,4.1.1.1.A.ii, 4.1.1.1.B, 4.1.1.2,4.1.1.4.A; moral rights in, 2.1.2.1.B.iv,2.2.3; subject matter in, 5.1.1, 5.1.1.1.B;term of protection in, 5.3.1.1, 5.3.2.1

Paris Additional Act (1896), 2.1.2.1.A

Subject Index 599

regional copyright vs., 2.1.3.1, 2.1.3.2Rome Act (1928), 2, 2.1.2.1.ARome Convention relationship with,

2.2.1.1, 2.2.1.6Safeguard Clause of, 2.1.2.2.A, 5.5.1.6.Cstatutory license requirements in,

5.5.1.6, 5.5.1.6.A, 5.5.1.6.A n.928Stockholm Act (1967): foreign

protectibility by, 4.1.1.1.B.iii, 4.1.1.1n.23, 4.1.1.4.A; terms of, 2.1.2.1.A,2.1.2.1.A n.69, 5.2.1.5.B.i

subject matter scope of, 2.1.2.1.B,2.1.2.1.B.ii, 4.1.1.1.A.i, 5.1, 5.1.1.1.B

term of protection in, 5.3, 5.3.1.1, 5.3.2.1WIPO guide to, 4.1.1.1.B, 4.1.1.1.B.ii n.54,

4.1.2.1.B, 5.1.1.1.B, 5.1.2.1, 5.1.2.4Berne Convention Implementation Act

(1988), 2.1, 2.1 n.19, 5.1.1.3.BBerne Union

foreign protectibility through, 4.1.1.1.B,4.1.1.4.B.i

members of, 2.1.2.1.A, 2.1.2.1.Bnon-Union relations with, 2.1.2.1.B.v,

2.1.2.2, 2.1.3.1, 2.1.3.2residual powers and relations among,

2.1.2.1.B.vbilateral copyright treaties, 2.1.1, 4.1, 4.1.1,

4.1.1.3, 4.1.1.4.BBIRPI, on neighboring rights, 2.2.1.1black box analysis, copyright exemptions

for, 5.5.1.1.Bbook publishing. See literary worksbootlegging, 4.2.3., 5.1.2.1, 5.3.1.2border control measures, for infringed

goods, 2.3.1.4, 2.3.2.1, 2.3.2.4Braille reproductions, copyright exemp-

tions for, 5.5.1.5broadcasts and broadcasters

copyright exemptions for, 5.5.1.3.A,5.5.2, 5.5.2.1, 5.5.2.2, 5.5.2.3

copyright protection of, 1, 5.1.1copyright treaties for, 2.1.2.1.A,

2.1.2.2.B.iv, 2.1.3.2definition of, 5.1.2.3economic rights for, 5.4.1.1.B,

5.4.1.1.B.iii, 5.4.1.2, 5.4.1.2.Cforeign copyright infringement of, 3.1.2.2foreign protectibility of, 4.1.2.1.B.iiineighboring rights for, 1.2.2, 2.2.1.1,

2.2.1.4, 2.2.4, 3.2.3.2, 3.2.4.3, 5.1.2,5.1.2.3, 5.4.1.2

ownership determination of, 5.2.1.1statutory licenses for, 5.5.1.6.A, 5.5.2.2,

5.5.2.3term of protection for, 5.3.1.2

trade arrangements for, 2.3.1.1, 2.3.2.2,2.3.2.4

Brussels Convention (1968), on Jurisdictionand Enforcement of Judgments,3.3.1.1.A, 3.3.1.1.B

Brussels Satellite Convention, 2.2.2, 2.2.4,4.1 n.21, 5.1.2.3

Buenos Aires Agreement (1910), 2.1.2.2.Abuildings. See architectural works

cable transmissionsbroadcasting rights and, 5.4.1.1.B.iiineighboring rights for, 2.2.4, 5.4.1.2.Cperformers’ rights and, 5.4.1.2.Apublic communication rights and,

5.4.1.1.B.ivpublic performance rights and, 5.4.1.1.B.istatutory licenses for, 5.5.2.3, 5.5.2.3

n.967Canada

copyright exemptions in, 5.5.1.2.Ainfringement remedies in, 5.6.1.1moral rights protection in, 5.4.2, 5.4.2.2ownership transfer in, 5.2.2, 5.2.2.1.B,

5.2.2.2.Btrade arrangements with, 2.3.1works made for hire in, 5.2.1.4

Caracas Convention (1911), 2.1.3.1cartoons, copyright protection of,

5.1.1.1.B.ii, 5.1.1.1.B.ivcatalogues, copyright protection of,

5.1.1.1.A, 5.1.1.1.B.vicensorship power, 2.1.2.1.B.vCentral America, agreements with, 2.1.3.1,

2.3.1Chace Act, 2.1.1, 4.1.1.3chain of title, authorship determination

and, 5.2charts

copyright protection of, 1.1, 2.1.1public exhibition rights for, 5.4.1.1.B.v

choice of lawwith contractually prescribed law,

3.3.2.2designated by contracting parties,

3.3.2.2.A, 3.3.2.2.Bfor foreign copyright infringements, 3,

3.1.2.1, 3.3.2harmonization of, 3.3.2.1, 3.3.2.1.B,

3.3.2.2with no contractually prescribed law,

3.3.2.1for ownership determinations, 3.3.2.1,

3.3.2.1.A, 4.1for ownership transfer, 5.2.2.2.A

600 Subject Index

choice of law (continued)with protecting country law vs. contract

law, 3.3.2.2.Ctreaty applications of, 2, 2.1, 3.3

choreographic workscopyright protection of, 5.1.1.1.B.iipublic exhibition rights for, 5.4.1.1.B.v

cinematographic worksadaptation rights for, 5.4.1.1.A.iiauthorship determination of, 5.2, 5.2.1.5,

5.2.1.5.Acopyright protection of, 5.1.1.1.B,

5.1.1.1.B.iicopyright treaties for, 2.1.2.1.A,

2.1.2.1.B, 2.1.2.2.B.iieconomic rights for, 5.4.1.1.A.i,

5.4.1.1.A.iiforeign copyright infringement of, 3.1.2.2foreign protectibility of, 4.1.1.1.B,

4.1.1.1.B.iii, 4.1.1.4.B.iimoral rights for, 5.4.2.2, 5.4.2.5.Bneighboring rights for, 5.2.1.5.B.iiownership determination of, 5.2, 5.2.1.1ownership transfer of, 5.2.1.5.A,

5.2.1.5.B.i, 5.2.1.5.B.i n.359, 5.2.2.1.Apublic distribution rights for, 2.1.2.3.public exhibition rights for, 5.4.1.1.B.vrental rights for, 5.4.1.1.A.iiiterm of protection of, 5.3.1.1.A.ii,

5.3.1.1.B.i, 5.3.2.3trade arrangements for, 2.3.1.2, 2.3.2.4traditional legal protection for, 1.1,

2.3.1.2CISAC (Confédération Internationale des

Sociétés d’Auteurs et Compositeurs),5.2.2.3

civil lawas authors’ right basis, 1, 1.2.1, 5.1.1.1.A,

5.1.1.4copyright exemptions and, 5.5in copyright infringement, 3.3.1.1.B,

3.3.1.3, 5.4.1.1.C, 5.6.2, 5.6.3economic rights in, 5.4.1, 5.4.1.2moral rights in, 5.4.2, 5.4.2.1, 5.4.2.2,

5.4.2.4, 5.4.2.5as neighboring right basis, 1.2.2, 5.1,

5.4.1.2ownership transfer and, 5.2.2, 5.2.2.1,

5.2.2.1.Bcoercive remedies, for copyright infringe-

ment, 5.6.1collaborative works

authorship and, 5.2, 5.2.1.2consent for exploitation of, 5.2.1.2,

5.2.1.3

multilateral copyright for, 2.1.2.1.A,2.1.2.1.B.iii

term of protection of, 5.3.1.1.A.iicollecting organizations

copyright exemptions and, 5.5.1.1.Bequitable remuneration and, 3.2.3.1

n.96, 5.5.1.1.Bownership transfer and, 5.2.2.3public lending rights and, 5.4.1.1.A.iiireproduction rights and, 5.2.2.3,

5.5.1.1.Bstatutory licenses for, 5.5.1.1.B, 5.5.2

collective worksauthorship determination of, 5.2, 5.2.1.1,

5.2.1.3copyright protection of, 2.1.2.1.B.ii,

5.1.1, 5.1.1.1.B.i, 5.1.1.1.B.vterm of protection of, 5.3.1.1.A.ii,

5.3.2.3commissioned works. See works made for hirecommon law

authors’ rights and, 1.2.1as copyright basis, 1, 1.1, 1.2.1, 5.1,

5.1.1.1.A, 5.1.1.4copyright exemptions and, 5.5, 5.5.1.2.Ain copyright infringement, 3.3.1.1.A,

5.4.1.1.C, 5.6.2economic rights in, 5.4.1, 5.4.1.2foreign works protection and, 4.2.1, 4.2.3moral rights in, 5.4.2, 5.4.2.2, 5.4.2.3,

5.4.2.5.Bneighboring rights and, 1.2.1, 5.1,

5.1.2.1, 5.4.1.2ownership transfer and, 5.2.2, 5.2.2.1,

5.2.2.1.B, 5.2.2.2.Aterm of protection and, 5.3.1.1

communication rights. See publiccommunication rights

comparison of terms ruleapplications of, 5.3.2.1, 5.3.2.2, 5.3.2.3in multilateral copyright treaties,

2.1.2.1.A, 2.1.2.1.B.iiicompensation systems. See equitable

remunerationcompilations, copyright protection of,

5.1.1.1.B.vicompliance, with copyright treaties, 2.1,

2.1.2.1.Acomposers

ownership by, 5.2.1.5.Aterm of protection and, 5.3.1.1.B.i

compulsory licenses. See statutory licensescomputer code

copyright exemptions for, 5.5.1.1.Bcopyright protection of, 5.1.1.1.B.vii

Subject Index 601

computer-generated workscopyright protection of, 5.1.1.1.B.viiterm of protection for, 5.3.1.1.A.i

computer languages, translation rights for,5.4.1.1.A.i

computer programsauthors’ right for, 1, 1.2.1, 5.1.1.1.B.viiauthorship determination and, 5.2,

5.2.1.1, 5.2.1.4circumvention protection for, 2.1.2.3,

5.4.1.3, 5.6copyright exemptions for, 5.5.1.1.B,

5.5.1.3.Bcopyright protection of, 5.1, 5.1.1.1.B,

5.1.1.1.B.i, 5.1.1.1.B.viiinventiveness standard for, 5.1.1.1.B.vii,

5.1.1.2.Anational treatment of, 3.2.1, 3.2.2.1public distribution rights for, 2.1.2.3.rental rights for, 5.4.1.1.A.iiitrade arrangements for, 2.3.1.2, 2.3.1.4,

2.3.2.1, 2.3.2.3, 2.3.2.3 n.338,2.3.2.4

Computer Software Directive, EuropeanUnion, 5.1.1.1.B.vii, 5.1.1.2.A,5.5.1.1.B, 5.5.1.3.B

Conan Doyle, Sir Arthur, 3.3.1.1.Aconcepts, copyright protection for, 2.1.2.3,

2.3.2.3condensations

copyright protection of, 5.1.1.1.B.veconomic rights for, 5.4.1.1.A.ii

conflicts. See dispute settlementConflicts, Restatement of, Second, 3.3.2.2,

3.3.2.2.A, 3.3.2.2.B, 3.3.2.2 n.222,3.3.2.2 nn.226–227

conflicts of law. See choice of lawconnecting factor. See attachment, point ofconsent

censorship and, 2.1.2.1.B.v, 2.1.2.1.B.vn.115

in collaborative authorship, 5.2.1.2,5.2.1.3

constitutions. See also national treatmentas copyright source, 1.1, 2.1self-execution of treaties and, 2.1, 2.1

nn.19–20contracting parties

absence of choice of law by, 3.3.2.2.Bchoice of law by, 3.3.2.2, 3.3.2.2.A

contracting statescopyright infringement jurisdiction for,

3.3.1.1.Bmultilateral copyright and, 2.1.2.2.B,

2.1.2.3

in neighboring rights treaties, 2.2.1.2,2.2.1.3, 2.2.1.4, 2.2.1.5, 2.2.2, 2.2.3

as point of attachment, 4.1.1.2.B,4.1.2.1.B.iii, 4.1.2.2

term of protection and, 5.3.2.2contracts and contract rights

applicable law, in foreign copyrightinfringement, 3.3.2.2, 3.3.2.2.A

for collaborative works, 5.2.1.2, 5.2.1.5.B.icopyright law conflicts with, 3.3.2.2.Cforum choices in, 3.3, 3.3.1, 3.3.1.3jurisdiction choices in, 3.1.2national treatment of, 3.2.3.1for ownership transfer, 5.2.2, 5.2.2.1,

5.2.2.1.A, 5.2.2.1.B, 5.2.2.1.C, 5.2.2.1.Din trade arrangements, 2.3.1.3

contributory infringement, of copyright,5.4.1.1.C, 5.4.1.3

Convention for the Protection of Producersof Phonograms Against UnauthorizedDuplication of Their Phonograms. SeeGeneva Phonograms Convention

Convention on the Law Applicable toContractual Obligations. See RomeConvention

Convention Relating to the Distribution ofProgramme-Carrying SignalsTransmitted by Satellite. See BrusselsSatellite Convention

copies. See also private copyingarchival, 5.5.1.3.A, 5.5.1.3.Bauthorized vs. unauthorized, 5.4.1.1.Ccopyright exemptions for, 5.5, 5.5.1,

5.5.1.5, 5.5.1.6.Bas copyright requirement, 5.1.1.3.A,

5.1.1.3.B.iiiephemeral, 5.4.1.1.A.i, 5.4.1.1.A.i n.569,

5.5.1.3.Acopying rights. See reproduction rightsCopyright, Designs and Patents Act (1988),

of Englandcopyright exemptions in, 5.5.1.2.C,

5.5.1.6, 5.5.1.6.B, 5.5.2.1economic rights in, 5.4.1.1.A.iii, 5.4.1.1.Cinfringement remedies in, 5.6.1.2moral rights in, 5.4.2, 5.4.2.1, 5.4.2.2subject matter protection in, 1.1, 5.1,

5.1.1.1.B.i, 5.1.1.1.B.viii, 5.1.2Copyright Act (1790), of United States, 1.1Copyright Act (1871), of Germany, 1.2.1Copyright Act (1909), of United States, 4.2,

4.2.2.3, 5.1.1.3.B, 5.2, 5.3Copyright Act (1911), of England, 1.1Copyright Act (1957), of France, 1.2.1Copyright Act (1965), of Germany, 1.2.1

602 Subject Index

Copyright Act (1976), of United Statesamendments to, 5.1.1.1.B.iv, 5.1.1.3.Bcontractual conflicts in, 3.3.2.2.Cforeign infringement of, 3.1.2.1.B,

3.1.2.2, 3.1.2.3ownership determination in, 3.3.2.1.Aterms of, 4, 4.2, 4.2.1, 4.2.2, 4.2.3, 5.1.1,

5.2, 5.3Copyright Act (1985), of France, 1.2.1copyright exemptions. See also specific

country or subject matterbasis of, 5.5, 5.5.1, 5.5.1.1.A, 5.5.1.2.A,

5.5.1.6.A, 5.5.2, 5.5.3in Berne Convention, 5.5, 5.5.1, 5.5.1.2,

5.5.1.3.A, 5.5.1.6.C, 5.5.2in Copyright, Designs and Patents Act,

5.5.1.2.C, 5.5.1.6, 5.5.1.6.B, 5.5.2.1for educational purposes, 5.5.1.1.A,

5.5.1.2.C, 5.5.1.5, 5.5.1.6.B, 5.5.1.6.C,5.5.2.1

equitable remuneration and, 5.5, 5.5.1.5,5.5.1.6

exclusive rights and, 1.1, 5.2.2.1, 5.5,5.5.1, 5.5.2

national treatment of, 5.5, 5.5.1.5and public good, 5.5, 5.5.1, 5.5.1.2, 5.5.1.5

copyright extensions. See term extensionscopyright formalities

and copyright infringement, 5.1.1.3.A,5.1.1.3.B.ii

for first publications, 5.1.1.3.B.i,5.1.1.3.B.vi

noncompliance impact of, 5.1.1.3.B,5.1.1.3.B.vi

public good and, 5.1.1.3.B, 5.1.1.3.Bn.218, 5.1.1.3.B.vi

requirements of, 1.1, 2.1.1, 2.1.2.1.A,2.1.2.2.B.ii, 5.1.1.3.A

term of protection and, 5.3.2.1U.S. requirements of, 2.1.1, 2.1.2.1.A,

2.1.2.2.A, 4.1, 4.1 n.21, 5.1.1.3.Bwaivers of, 2.3.1.1for works prior to 1989, 5.1.1.3.A,

5.1.1.3.Bcopyright infringement. See also exploitation

acts of, in more than one country, 3,3.1.2, 3.1.2.1, 3.1.2.3

choice of forum for, 3.3, 3.3.1, 3.3.1.1,3.3.1.2, 3.3.1.3

choice of law for, 3, 3.3, 3.3.2, 3.3.2.1,3.3.2.2

civil law traditions and, 3.3.1.1.Bcommon law traditions and, 3.3.1.1.Acontract clauses for, 3.3, 3.3.1, 3.3.1.3,

3.3.2.2, 3.3.2.2.Adirect vs. contributory, 3.1.2.2

economic tests of, 5.4.1, 5.4.1.1.Celements of, in more than one country, 3,

3.1.2, 3.1.2.2foreign, 3, 3.1.2, 3.3.1, 3.3.2formality requirements and, 5.1.1.3.A,

5.1.1.3.B.iijurisdiction determination for, 3,

3.1.2.1.A, 3.1.2.2, 3.3.1, 3.3.1.1remedies for, 3.1.2.1.B, 5.6, 5.6.1, 5.6.2,

5.6.3secondary liability for, 3, 5.4.1.1.C,

5.4.1.3territoriality and, 3, 3.1, 3.1.2, 3.3.1.1.Awillful vs. innocent, 5.6.2, 5.6.2 n.1021,

5.6.3copyright law

common law basis of, 1, 1.1, 1.2.1, 5.1,5.1.1.1.A, 5.1.1.4

contract law conflicts with, 3.3.2.2.Cforeign protectibility through, 4.1, 4.1.1,

4.1.1.1, 4.1.1.2, 4.1.1.3, 4.1.1.4formal requirements for, 1.1, 2.1.1,

2.1.2.1.A, 2.1.2.2.B.ii, 2.3.1.1misuse and abuse of, 5.5.3neighboring rights vs., 2.2territoriality of, 3, 3.1, 3.1.2theories of, 1, 1.2.1trade connections with, 2, 2.1.3.2, 2.3, 3.2.1traditional principles of, 1, 1.1, 2, 2.3.2.3

n.338copyright liability. See liabilitycopyright limitations, 5.5

in moral rights, 5.4.2.5.Bfor performance, broadcast, and

communication rights, 5.5.2for reproduction and adaptation rights,

5.5.1copyright notice. See noticecopyright protection. See also protectibility

as authors’ right premise, 1, 1.1of exclusive rights, 5.5, 5.5.1, 5.5.2, 5.5.3exemptions and, 5.5, 5.5.1, 5.5.2, 5.5.3remedies, 5.6, 5.6.1, 5.6.2, 5.6.3rights and, 5.4, 5.4.1, 5.4.2statutory licenses and, 5.5, 5.5.1, 5.5.2,

5.5.3subject matter of, 5.1, 5.1.1, 5.1.2

copyright restoration. See restoration ofcopyright

copyright terms. See term of protectioncopyright transfer. See transfer of copyrightcopyright treaties

bilateral, 2.1.1, 4.1, 4.1.1, 4.1.1.3chronological principle of, 4.1.1.4.B.iiforeign protectibility with, 4.1, 4.1.1.4,

4.1 n.21, 4.2

Subject Index 603

hierarchical principle of, 4.1.1.4,4.1.1.4.A, 4.1.1.4.B, 4.1.1.4.B.i

multilateral, 2.1.2, 2.1.2.1.B.i, 2.1.2.2.B.i,4.1, 4.1.1, 4.1.1.3, 4.1.2

regional, 2.1.3self-execution debate about, 2.1, 2.1

nn.19–20copyright vesting, authors and, 5.1.2.4,

5.2.1.3corporate entities, authorship determination

and, 4.1.1.1.B.i, 5.2.1.1costs, award of, in trade arrangements,

2.3.1.4, 2.3.2.4counterfeit goods, 2.3.2.1. See also piracycountry of origin. See also foreign works

in copyright treaties, 2.1.1, 2.1.2, 2.1.2.2.Adefinition of, 2.1.2.1.Bin designs and models protection,

5.1.1.1.B.viiiin foreign copyright infringement,

3.3.2.1, 3.3.2.1.A, 3.3.2.1.Bformality requirements of, 5.1.1.3.Aterm of protection and, 5.3.2.1.A, 5.3.2.1.Bin U.S. protection of foreign works, 4.2.2,

4.2.2.1creative work

collaborative, 5.2, 5.2.1.2copyright infringement and, 3.3.2.1,

3.3.2.1.Aforeign protectibility of, 4.1national treatment for, 3.2, 3.2.2.1,

3.2.2.1 n.75, 3.2.2.2ownership and transfer of, 3.3

creativitycomputer programs and, 5.1.1.1.B.vii,

5.1.1.2.Aas copyright standard, 5.1, 5.1.1,

5.1.1.1.A, 5.1.1.1.B.ivcriminal sanctions

as copyright infringement remedy, 5.6.3for neighboring rights infractions, 2.2.2,

2.2.4in trade arrangements, 2.3.1.4, 2.3.2.4

Crown and Parliamentary copyright, forofficial texts, 5.1.1.2.B

cultural collection societies. See collectingorganizations

customs clearance, of infringed works, 5.6,5.6.1.1

damage awardsfor foreign copyright infringements,

3.1.2.1.B, 5.6.2statutory, 5.6.2, 5.6.2 n.1022for trade arrangement infractions,

2.3.1.4, 2.3.2.4

dance, copyright protection of, 5.1.1.1.B.iiDatabase Directive, European Union,

5.1.1.1.B.v, 5.1.2, 5.3.1.2, 5.4.1.2.Ddatabases

copyright protection of, 2.1.3.2,5.1.1.1.B.vi

national treatment of, 3.2.2.2, 3.2.4.1neighboring rights for, 5.4.1.2.Dnonoriginal, 3.2.4.1re-utilization use of, 5.4.1.2.D, 5.4.1.2.D

n.770term of protection for, 5.3.1.2

decompilation, copyright exemptions for,5.5.1.1.B

deposit. See registration depositderivative works. See also specific type

copyright protection of, 5.1.1, 5.1.1.1.B.i,5.1.1.1.B.v

definition of, 5.1.1.1.B.v, 5.4.1.1.A.iineighboring rights for, 5.1.2.1ownership transfer of, 5.2.2.1.Brights for, 5.4.1.1.A.ii, 5.4.2, 5.4.2.2,

5.4.2 n.791term of protection for, 5.3.1.1

derogatory treatment, authors’ protectionagainst, 5.4.2.2

designs and modelscopyright protection of, 2.1.2.1.B.ii,

5.1.1.1.B.iv, 5.1.1.1.B.viiieconomic rights for, 5.4.1.1.Ainational treatment of, 3.2, 3.2.2.2

destination rights, 5.4.1.1.A.iii n.591destruction of works, as infringement

remedy, 5.6.1.1developing countries

multilateral copyright treaties and,2.1.2.2.A

reproduction and translation in,5.5.1.6.C, 5.5.1.6.C n.947

trade arrangements impact on, 2.3.1.1,2.3.1.4, 2.3.2.1

dictionaries, copyright protection of,5.1.1.1.A

Digital Millennium Copyright Act (1998),4.2.2.2, 4.2.2.3, 5.4.1.1.C n.710

digital technologies. See also computerprograms; global transmission

auxiliary rights for, 5.4.1.3broadcasting rights and, 5.4.1.1.B.iiicopyright infringement and, 3.3.2.1,

5.4.1.1.Ccopyrighted works in, 2.1.2.3, 3,

5.1.1.1.B.viilicenses governing, 3.2.3.1, 5.5.1.6.Aneighboring rights for, 2.2.3reproduction rights and, 5.4.1.1.A.i

604 Subject Index

directories, copyright protection of,5.1.1.1.A, 5.1.1.1.B.vi

directors, ownership by, 5.2.1.5.A,5.2.1.5.B.i

disclosure rights, U.S. protection of, 4.2.3discretionary stays, of foreign copyright

infringement, 3.1.2.1.Adisplays, public, economic rights for,

5.4.1.1.B.ivdisposition of works, as infringement

remedy, 5.6, 5.6.1.1dispute settlement. See also copyright

infringementin multilateral copyright treaties,

2.1.2.1.B.v, 2.1.2.2.A, 2.1.2.2.B.vin neighboring rights treaties, 2.2.1.6in trade arrangements, 2.3, 2.3.2.4, 3.2.1

distortion, of works, authors’ protectionagainst, 5.4.2.2

distribution rights. See also publicdistribution rights

circumvention technology and, 5.4.1.3first sale doctrine and, 5.4.1.1.A.iii, 5.5.1.4

divulgation right, 5.4.2.3documentaries

copyright exemptions for, 5.5.1.3.Acopyright protection of, 5.1.1.1.B.ii

domestic law. See also national treatmentcopyright applications of, 2.1, 3.1.1,

3.1.2.3domestic manufacturing

as copyright requirement, 5.1.1.3.A,5.1.1.3.B, 5.1.1.3.B.iv

in copyright treaties, 2.1.1, 2.1.2.1.Adomicile, in foreign works protection,

3.3.1.1.B, 4.2.2, 4.2.2.1, 4.2.2.2double-actionability rule, 3.3.1.1.Adramatic works

copyright protection of, 1.2.1, 2.1.2.1.B.ii,2.1.2.2.B.ii, 5.1.1.1.B.ii, 5.1.1.1.B.v

rights for, 5.4.1.1.A.ii, 5.4.1.1.B.ii,5.4.1.1.B.v, 5.4.2.2

drawingscomputer-generated, 5.1.1.1.B.viicopyright protection of, 1.1, 2.1.2.1.B.ii,

5.1.1.1.B.iv, 5.1.1.1.B.viii n.171droit de repentir. See withdrawal rightsdroit de suite. See resale royalty rightdualist theory, of copyright, 1.2.1duality of art (noncumulative), as national

approach, 5.1.1.1.B.viii

economic rights, 5.4.1. See also exploita-tion; specific right

author transfer of, 5.2.2, 5.4.1.2.A, 5.4.1.2.Bauxiliary rights for, 5.4.1.3

in Berne Convention, 5.4, 5.4.1.1.A,5.4.1.1.A.i n.562, 5.4.1.1.A.i n.568,5.4.1.1.A.iii, 5.4.1.1.B, 5.4.1.2, 5.4.1.3

copyright protection of, 2.1.1, 2.1.2.1.B.iv,5.4.1.1

exhaustion doctrine and, 5.4.1.1.A.iii,5.5.1.4

foreign copyright infringements and,3.1.2.1.B, 3.3.2.1.A, 3.3.2.2.B

in Geneva Phonograms Convention,5.4.1.2.B

historical perspectives of, 1, 1.1, 1.2.1national treatment of, 3.2, 3.2.1, 3.2.3,

3.2.3.1, 5.4.1.1.A, 5.4.1.1.Bneighboring rights treaties for, 2.2.3,

5.4.1.2ownership determination and, 5.2.1.1,

5.2.1.4, 5.2.1.5.Ain Rome Convention, 5.4.1.2, 5.4.1.2.A,

5.4.1.2.B, 5.4.1.2.Csecondary liability for, 3, 5.4.1.1.Cterm of protection of, 5.3.1.1in trade arrangements, 2.3.1.3in TRIPS Agreement, 5.4.1, 5.4.1.1.A ,

5.4.1.1.A.iii, 5.4.1.2, 5.4.1.2.A,5.4.1.2.C

in Universal Copyright Conventions,5.4.1.1.A.iii, 5.4.1.1.B

in WIPO Copyright Treaty, 5.4.1.1.A.i,5.4.1.1.A.iii, 5.4.1.1.B, 5.4.1.1.B.iii,5.4.1.1.B.iv, 5.4.1.3

in WIPO Performances and PhonogramsTreaty, 5.4.1.2, 5.4.1.2.A, 5.4.1.2.B,5.4.1.3

education. See instructionElectronic Commerce Directive, European

Union, 5.4.1.1.C, 5.4.1.1.D n.716electronic copyright licenses, 3.2.3.1electronic media. See databases; digital

technologieseligible country, point of attachment and,

4.2.2.6employee/employer relationships

original ownership and, 5.2.1.1, 5.2.1.4in U.S. protection of foreign works, 4.2.2,

4.2.2.1in works made for hire, 5.2.1.4

encryption technologies, circumventionprotection for, 2.1.2.3, 5.4.1.3, 5.6

encyclopediasauthorship determination and, 5.2copyright protection of, . 2.1.2.1.B.ii,

5.1.1, 5.1.1.1.B.viterm of protection for, 5.3.1.1.A.ii, 5.3.2.3

engineering manuals, copyright protectionof, 5.1.1.1.B.vii

Subject Index 605

England. See also United Kingdomcopyright infringement cases of,

3.3.1.1.A, 3.3.1.3, 3.3.2.2.Ccopyright traditions of, 1, 1.1, 1.2.1, 5.1.1.3economic rights in, 5.4.1.1.A.i,

5.4.1.1.A.ii, 5.4.1.2.Downership transfer in, 5.2.2, 5.2.2.1.B

engravingcopyright protection of, 1.1, 5.1.1.1.B.ivrights for, 5.4.1.1.Ai, 5.4.2.2

entertainment products, exploitation of, 3,3.2.1, 5.4.1.1.C

ephemeral copiescopyright exemptions for, 5.5.1.3.Areproduction rights for, 5.4.1.1.A.i,

5.4.1.1.A.i n.569equitable remuneration. See also statutory

licensescollecting societies and, 3.2.3.1 n.96,

5.5.1.1.Bcopyright exemptions and, 5.5, 5.5.1.5,

5.5.1.6in multilateral copyright treaties,

2.1.2.1.B.ivnational treatment of, 3.2.3, 3.2.3.1in neighboring rights treaties, 2.2.1.3, 2.2.3ownership transfer and, 5.2.2.1.B,

5.2.2.2.Bfor performance and communication

rights, 5.5.2, 5.5.2.1, 5.5.2.2for private copying, 5.5.1.6.B, 5.5.1.6.B

n.935for public lending, 5.4.1.1.A.iiitrade agreements for, 2.3.1.1, 2.3.2.4

essays, copyright protection of, 5.1.1.1.B.viiEurope. See also specific country

authors’ rights, acts of, 1.2.1copyright: acts of, 1.1, 1.2.1; treaties of,

2.1.1, 2.1.2European Economic Community, trade

arrangements with, 2.1.3.2, 2.3, 2.3.2European Union

copyright arrangements of, 2.1.3.2,2.3.1.1, 5.1.1.1.A

formality, prohibition of, 5.1.1.3.Aharmonization by, 5.1.1.1.A, 5.1.1.1.B.iv,

5.1.1.1.B.vii, 5.4.1.2.Dmost-favored-nation exemption of, 3.2.4.3term of protection in, 5.3.2.1.B, 5.3.2.3

evidential presumption, infringementremedies and, 5.6.3

exclusive rightscopyright for, 1.1, 2.1.2.2.B.iv,

5.4.1.1.A.iiiexemptions and limitations on, 1.1,

5.2.2.1, 5.5, 5.5.1, 5.5.2

national treatment of, 3.2.3.1, 3.3.2.1.Aand neighboring rights, 2.2.3, 5.4.1.2.A,

5.4.1.2.B, 5.5, 5.5.1, 5.5.2, 5.5.3ownership transfer of, 5.2.2, 5.2.2.1.A,

5.2.2.2.A, 5.2.2.2.Btrade arrangements and, 2.3.2.4

exhaustion doctrine, economic rights and,5.4.1.1.A.iii, 5.5.1.4

exhibitions. See public exhibitionsexploitation. See also economic rights

of entertainment products, 3, 3.2.1,5.4.1.1.C

intangible forms of, 5.4.1.1.Bof joint works, 5.2.1.2, 5.2.1.3, 5.2.1.5.B.iownership transfer and, 5.2.2, 5.2.2.1,

5.2.2.1.Atangible forms of, 5.4.1.1.Atechnological, 3, 3.1.2, 3.2.1, 5.4.1.2.A

expressionscomputer programs and, 5.1.1.1.B.vii,

5.1.1.2.Acopyright protection for, 2.1.2.3, 2.3.2.3,

5.1.1.1.B.v, 5.1.1.2.Adistribution rights and, 5.4.1.1.A.iiiideas vs., 5.1.1.2.A

extraterritoriality. See territoriality

fabric designs, copyright protection of,5.1.1.1.B.iv

fair dealing defensecopyright exemptions and, 5.5in foreign copyright infringement, 3.3.2.1.B

fair use doctrinedivulgation rights and, 5.4.2.3and economic rights, 5.5, 5.5.1.1.Aas statutory codification, 5.5

fictional worksadaptation rights for, 5.4.1.1.A.iicopyright protection of, 5.1.1.1.B.v,

5.1.1.2.Afilms. See cinematographic worksfilmstrips. See audiovisual worksfines, as infringement remedies, 5.6.3first publication

copyright formalities and, 5.1.1.3.B.i,5.1.1.3.B.vi

foreign protectibility and, 4.1.1.1.B.ii,4.1.1.2.B, 4.2, 4.2.2

as point of attachment, 2.1.2.2.B.i, 2.2.1.3trade arrangements and, 2.3.1.1, 2.3.2.2

first sale doctrine, economic rights and,5.4.1.1.A.iii, 5.5.1.4

fixationaudiovisual works and, 5.2.1.5.B.iias copyright protection requirement,

5.1.1.4

606 Subject Index

fixation (continued)definition of, 5.1.1.4economic rights and, 2.3, 5.4.1.2.Ain neighboring rights protection, 2.2.1.2,

2.2.1.3, 2.2.1.4, 4.1.2.1.B.iiterm of protection and, 5.3.1.2trade arrangements and, 2.3.1.1, 2.3.2.2,

2.3.2.4in U.S. protection of foreign works, 4.2.2,

4.2.2.4foreign works. See also country of origin

bilateral copyright protection of, 2.1.1,4.1, 4.1.1, 4.1.1.3, 4.1.1.4.B

copyright treaties governance of, 4.1.1.4,4.1.1.4.A, 4.1.1.4.B

formality prohibition for, 5.1.1.3.Amultilateral copyright protection of,

2.1.2, 4.1, 4.1.1, 4.1.1.4.B, 4.1.2neighboring rights protection of, 5.1.2protectibility determination of, 4, 4.2.1,

4.2.2protectibility of, in U.S., 4.2, 4.2.1, 4.2.2,

4.2.3U.S. works as, protectibility of, 4.1, 4.1.1,

4.1.2formalities. See copyright formalities;

neighboring rights formalitiesforum, choice of. See also choice of law

civil law traditions, 3.3.1.1.Bcommon law traditions, 3.3.1.1.Acontract clauses for, 3.3, 3.3.1, 3.3.1.3for foreign copyright infringement, 3.3.1,

3.3.1.1, 3.3.1.2, 3.3.1.3, 3.3.2.1national treatment obligations as, 3.3subject matter jurisdiction and, 3.3.1.1

forum non conveniens, 3.3.1.1.A, 3.3.1.2,3.3.1.3

Francecopyright-contract conflict cases of,

3.3.2.2.Ccopyright exemptions in, 5.5.1.2, 5.5.2.1copyright protection in, 1.2.1, 2.1.1economic rights in, 5.4.1.1.A.ii,

5.4.1.1.A.iii, 5.4.1.1.B.iiiinfringement remedies in, 5.6.1.1moral rights protection in, 5.4.2, 5.4.2.1,

5.4.2.2, 5.4.2.4, 5.4.2.5neighboring rights in, 5.4.1.2, 5.4.1.2.Aownership determination in, 5.2.1.1,

5.2.1.2, 5.2.1.3, 5.2.1.4, 5.2.1.5.Aownership transfer in, 5.2.1.5.A, 5.2.2,

5.2.2.1.A, 5.2.2.1.C, 5.2.2.1.D, 5.2.2.2private copying in, 5.5.1.6Bstatutory license requirements in,

5.5.1.6.B

term of protection in, 5.3.1.1.A.iunity of art approach of, 5.1.1.1.B.viii

fraud, statutes of, ownership transfer and,5.2.2.1.C

freedom of contract. See contracts andcontract rights

future works, in ownership transfer, 5.2.2.1.D

GATT Council (General Agreement onTariffs and Trade), 2.3.1.2, 2.3.2.1. Seealso TRIPS Agreement

Geneva Phonograms Convention, 2.2.2,4.1.2.2, 5.1.2.2, 5.1.2.4, 5.3.1.2,5.4.1.2.B

Germanycopyright exemptions in, 5.5.1.1.A,

5.5.1.2.A, 5.5.1.5, 5.5.2.1copyright infringement in, 3.1.2.1,

5.4.1.1.Ccopyright traditions of, 1.2.1, 2.1.1,

5.1.1.1.B.ieconomic rights in, 5.4.1.1.A.i,

5.4.1.1.A.ii, 5.4.1.1.A.iii, 5.4.1.1.B.i,5.4.1.1.B.iii

infringement remedies in, 5.6.1.1,5.6.1.2, 5.6.2

moral rights protection in, 5.4.2, 5.4.2.1,5.4.2.2, 5.4.2.4, 5.4.2.5

motion picture and performers protec-tion in, 5.1.2

neighboring rights in, 5.4.1.2, 5.4.1.2.Aownership determination in, 5.2.1.1,

5.2.1.2, 5.2.1.3, 5.2.1.4, 5.2.1.5.Aownership transfer in, 5.2.1.5.A, 5.2.2,

5.2.2.1.A. 5.2.2.1, 5.2.2.1.B, 5.2.2.1.C,5.2.2.1.D, 5.2.2.2.A

partial cumulative approach of,5.1.1.1.B.viii

private copying in, 5.5.1.6.Bstatutory license requirements in,

5.5.1.6.A, 5.5.1.6.Bterm of protection in, 5.3.1.1.B.ii,

5.3.2.1.A, 5.3.2.3global transmission. See also satellite

transmissionscopyright burdens with, 3copyright infringement with, in more

than one country, 3.1.2.1, 3.1.2.2graphic art

authors’ right for, 1.2.1copyright protection of, 5.1.1.1.B.viiipublic exhibition rights for,

5.4.1.1.B.vgray-market goods, economic rights and,

5.4.1.1.A.iii. See also exhaustion doctrine

Subject Index 607

habitual residence, country ofin foreign copyright infringement,

3.3.2.1.A, 3.3.2.2.Bforeign protectibility and, 4.1.1.1.Boriginal ownership and, 5.2.1.5.B.i

harmonization trendsof choice of law, 3.3.2.1.B, 3.3.2.2by European Union, 5.1.1.1.A, 5.1.1.1.B.iv,

5.1.1.1.B.vii, 5.4.1.2.Dof film rights, 5.2.1.5.B.iof trade, 2.1.3.2, 2.3, 2.3.2universal copyright vs., 3, 3.3.2.1

home audiotapingnational treatment of, 3.2.1, 3.2.3.1, 3.2.4.2statutory licenses for, 5.5.1.6, 5.5.1.6.B

home videotapingliability for, 5.4.1.1.Cnational treatment of, 3, 3.2.1, 3.2.3.1,

3.2.4.2remuneration systems for, 3.2.3.1 n.96statutory licenses for, 5.5.1.6, 5.5.1.6.B

homestyle exemption, for public perfor-mance transmissions, 5.5.2.2

Hugo, Victor, 2.1.2.1.A

idea-expression distinction, 5.1.1.2.Aideas

computer programs and, 5.1.1.1.B.vii,5.1.1.2.A

copyright protection for, 2.1.2.3, 2.3.2.3,5.1.1.2.A

IFFRO (International Federation ofReproduction Rights Organizations),5.2.2.3, 5.5.1.6.B n.935

illustrations, copyright protection of, 1.2.1,5.1.1.1.B.iv

importersfirst sale doctrine and, 5.5.1.4infringement remedies for, 5.6.1.1national treatment and, 3.2.1, 3.2.1

n.60, 3.2.3trade arrangements and, 2.3, 2.3.1.4

impoundmentas infringement remedy, 5.6, 5.6.1.1in trade arrangements, 2.3.1.4, 2.3.2.1,

2.3.2.4imprisonment. See penal sanctionsinalienable rights

in copyright-contract conflicts,3.3.2.2.C

with ownership transfers, 5.2.2.1with resale royalty right, 5.4.1.1.A.iii

independent contractors. See works madefor hire

India, trade arrangements with, 2.3.2

individual authorship, 5.2, 5.2.1.1individual works, term of protection of,

5.3.1.1.A. iindustrial property

copyright protection of, 2.1.2.1.B.ii,5.1.1.1, 5.1.1.1.B.iv, 5.1.1.1.B.viii

national treatment for, 3.2, 3.2.2.2information management. See also digital

technologiescopyright liability limitations for, 5.4.1.1.Crights for, 5.4.1.3, 5.4.1.3 n.773

infringement. See copyright infringementinfringing goods, 2.3.1.4, 2.3.2.4injunctive relief, as remedy, 5.6.1.1, 5.6.1.2instruction

performance and communicationsexemptions for, 5.5.2.1

reproduction exemptions for, 5.5.1.1.A,5.5.1.2.C, 5.5.1.5, 5.5.1.6.B, 5.5.1.6.C

instruction manualscopyright exemptions for, 5.5.1.2.Ccopyright protection of, 5.1.1.1.A,

5.1.1.1.B.i, 5.1.1.1.B.vii, 5.1.1.2.Bintangible works

copyright exemptions for, 5.5.2economic rights for, 5.4.1.1.Bnational treatment of, 3.2.3.1.

integrated circuit designs, nationaltreatment of, 3.2, 3.2.2.2

integrity rights, 5.4.2.2adaptation rights and, 5.4.1.1.A.iiin multilateral copyright treaties,

2.1.2.1.A, 2.1.2.1.B.ivin neighboring rights treaties, 2.2.3U.S. protection of, 4.2.3, 5.4.2.2

intellectual property. See also TRIPSAgreement

most-favored-nation requirement and,3.2.4, 3.2.4.1, 3.2.4.2, 3.2.4.3

national treatment of, 3.2, 3.2.2.1,3.2.2.2, 3.2.3.2, 3.2.4

Intellectual Property Code (1992), ofFrance, 1.2.1, 2.1.3.2, 5.4.1.1.B.iii

Inter-American copyright agreements,2.1.2.2.A, 2.1.3.1, 4.1, 4.1.1.3

interactive transmissions, on-demand,2.1.2.3, 3.1.2.2

interdiction, of pirated works, 2.3.1.4,2.3.2.1, 2.3.2.4, 5.6

International Convention for the Protec-tion of Performers, Producers ofPhonograms and BroadcastingOrganizations. See Rome Convention

International Labor Organization (I.L.O.),on neighboring rights, 2.2.1.1

608 Subject Index

international law, territoriality in, 3, 3.1.1,3.1.2, 3.3

International TelecommunicationsConvention, 2.2.4

Internetbroadcasting rights and, 5.4.1.1.B.iiipublic communication rights for,

5.4.1.1.B.ivInternet copying, liability for, 5.4.1.1.CInternet service providers, secondary

copyright liability of, 3, 5.4.1.1.Cinventiveness standard, for computer

programs, 5.1.1.1.B.vii, 5.1.1.2.AItaly

copyright protection in, 1.2.2, 2,2.1.2.1.A, 2.1.3.2

duality of art approach of, 5.1.1.1.B.viiiwithdrawal rights in, 5.4.2.4

Japancopyright exemptions in, 5.5.1.1.A,

5.5.1.2.C, 5.5.1.5, 5.5.2.1economic rights in, 5.4.1.1.A.iiinfringement remedies in, 5.6.2ownership determination in, 5.2.1.2,

5.2.1.4trade arrangements with, 2.3.2

joint authorship, 5.2, 5.2.1.2joint works. See collaborative worksjudicial opinions, copyright protection of,

5.1.1.2.Bjurisdiction. See also choice of law

for copyright infringement, in multiplecountries, 3.1.2.1.A, 3.1.2.2

for foreign copyright infringement, 3.3.1,3.3.1.1, 3.3.2, 3.3.2.2

territoriality of, 3, 3.1.1, 3.1.2, 3.1.2.1.Atreaty determination of, 2, 2.1

KOPIOSTO (collecting organization), 5.2.2.3

labels, copyright protection of, 5.1.1.1.B.ivlanguages. See computer languages;

translationsLatin America, copyright treaties of,

2.1.2.2.Alegislative enactments, copyright protec-

tion of, 5.1.1.2.Blending of works. See library lending; public

lending rightslevies, for private copying, 5.5.1.6.Bliability, for copyright infringement

centralization of, 3, 5.6.3criminal, 5.6.3exceptions to, 2.1.2.1.B.iv, 2.2.1.5, 2.2.4,

2.3.2.4, 3.2.4.3

limitations on, 5.4.1.1.Csecondary, 3, 5.4.1.1.C, 5.4.1.3

library lending, economic rights and, 5.4.1,5.4.1.1.A.iii

library photocopying, copyright consider-ations of, 5.4.1.1.C, 5.5.1.5

licenses. See transfer of copyrightlicensing. See statutory licensesLicensing Act (1694), of England, 1.1literary works

Berne Convention description of,2.1.2.1.B. ii, 5.1.1

copyright protection of, 1.1, 5.1.1,5.1.1.1.A, 5.1.1.1.B.i

neighboring rights protection of, 1.2.2,5.1

as protectible vs. unprotectible, 5.1.1.1,5.1.1.2

public exhibition rights for, 5.4.1.1.B.vrecitation rights for, 5.4.1.1.B.iiterm of protection for, 5.3.1.1traditional legal protection of, 1, 1.1,

1.2.1, 1.2.2, 2.1lithography

copyright protection of, 5.1.1.1.B.iveconomic rights for, 5.4.1.1.A.i

Lugano Convention (1988), 3.3.1.1.A,3.3.1.1.B

Magill decision, 5.5.3management information rights. See

information managementmandatory deposit. See registration depositmanuals. See specific typemanufacturing requirements. See domestic

manufacturingmaps

copyright protection of, 1.1, 2.1.1,5.1.1.1.B.iv

public exhibition rights for, 5.4.1.1.B.vmarketing rights. See distribution rightsmaterial reciprocity

in copyright treaties, 2.1.1, 2.1.2.1.Ain foreign copyright infringement,

3.3.2.1national treatment vs., 3.2, 3.2.2.1,

3.2.2.1 n.69, 3.2.3.1resale royalty right and, 5.4.1.1.A.iiiin trade arrangements, 2.3, 2.3.1.1

mechanical recording licenses, 5.5.1.6.Amerger doctrine, of idea-expression

distinction, 5.1.1.2.AMexico, trade arrangements with, 2.3.1mime. See pantomimemisappropriation, as copyright infringe-

ment, 5.4.1

Subject Index 609

misuse, of copyright, 5.5.3models. See designs and modelsmodifications, of works, authors’ protection

against, 5.4.2.2monetary remedies, for copyright

infringement, 3.1.2.1.B, 3.1.2.1.B n.32,5.1.1.3.B, 5.6.2

monist theory, of copyright, 1.2.1Montevideo Treaty (1889), 2.1.3.1moral rights, 5.4.2. See also specific right

in conventions and treaties, 5.4.2,5.4.2.1, 5.4.2.2, 5.4.2.3 n.823

foreign copyright infringements and,3.3.2.1.A, 3.3.2.2.C

foreign protectibility of, 4.2.3historical perspectives of, 1.2.1, 1.2.2limitations of, 5.4.2.5.Bmultilateral copyright treaties for,

2.1.2.1.A, 2.1.2.1.B.ivneighboring rights treaties for, 2.2.3ownership transfer and, 5.2.1.5.A, 5.2.2,

5.2.2.1, 5.2.2.1.Bterm of protection of, 5.3.1.1in trade arrangements, 2.3.2.1waiver of, 5.4.2.5.A

most-favored-nation treatmentexemptions under, 3.2.4.3rights subject to, 3.2.4.2trade arrangements and, 2.3.2.1works subject to, 3.2.4.1

motion pictures. See cinematographic worksmultilateral copyright treaties, 2.1.2, 4.1,

4.1.1, 4.1.1.4.B, 4.1.2musical arrangements, protection of,

5.1.1.1.B.v, 5.1.2.1musical works

adaptation rights for, 5.4.1.1.A.iiauthors’ right for, 1.2.1collecting organizations for, 5.2.2.3,

5.5.2, 5.5.2 n.951computer-generated, 5.1.1.1.B.viicopyright exemptions for, 5.5.1.5, 5.5.1.6,

5.5.1.6.Acopyright infringement tests of, 5.4.1,

5.4.1.1.Ccopyright protection of, 1.1, 5.1.1.1.B.iiicopyright treaties for, 2.1.2.1.A,

2.1.2.1.B.ii, 2.1.2.2.B.iiintegrity rights for, 5.4.2.2performing rights societies and, 5.2.2.3public exhibition rights for, 5.4.1.1.B.vrecitation rights for, 5.4.1.1.B.iistatutory licenses for, 5.5.1.6, 5.5.1.6.A,

5.5.1.6.A n.928mutilation, of works, authors’ protection

against, 5.4.2.2

national sovereigntyin copyright traditions, 1.2.1, 2.1.2.1.B.vnational treatment and, 3.2territoriality and, 3.1, 3.1.1in U.S. protection of foreign works, 4.2.2,

4.2.2.1, 4.2.2.2national treatment

for applied art, 5.1.1.1.B.viiiauthorship determination and, 5.2.1.1,

5.2.1.2, 5.2.1.3, 5.2.1.5.Ain bilateral copyright treaties, 2, 2.1,

2.1.1as choice of law rule, 3.3of copyright, 3, 3.2, 3.3of copyright exemptions, 5.5, 5.5.1.5,

5.5.1.6.Bin copyright treaties, 2.1.2.1, 2.1.2.2,

2.1.2.3, 2.1.3.1, 2.1.3.2, 3.2, 3.2 n.58economic rights and, 5.4.1in foreign copyright infringement,

3.3.2.1, 3.3.2.1.Aforeign protectibility and, 4.1.1.1.B.i,

4.1.1.2.B, 4.1.2.1.B.iin neighboring rights treaties, 2.2.1.2,

2.2.1.3, 2.2.1.4, 2.2.2, 2.2.3, 3.2of non-Union authors, 2.1.2.1.B.vof ownership transfer, 5.2.2of private copying, 5.5.1.6.Bof remedies, for copyright infringement,

3.2.4, 5.6, 5.6.1.1, 5.6.2, 5.6 n.976rights subject to, 3.2.3term of protection and, 5.3.2.1trade arrangements and, 2.3.1.1, 2.3.2.1,

2.3.2.2, 2.3.2.2 n.334, 3.2, 3.2.1in U.S. protection of foreign works, 4.2.2,

4.2.2.1, 4.2.2.2works subject to, 3.2.2WTO applications of, 3.2.1, 3.2.2.2,

3.2.4.1, 3.2.4.3nationality. See also national treatment

as point of attachment, 4.2.2, 4.2.2.1,4.2.2.2

natural person, original ownership and,5.2.1.1

natural rights, authors’ right as, 1, 1.1, 1.2.1neighboring rights

civil law basis of, 1.2.2, 5.1copyright vs., 2.2, 5.1exclusive rights and, 2.2.3, 5.5, 5.5.1,

5.5.2, 5.5.3exemptions and, 5.5, 5.5.1, 5.5.2, 5.5.3foreign protectibility and, 4.1.2, 4.1.2.1,

4.1.2.2, 4.2.3historical perspectives of, 1.2.2, 2ownership and, 5.2, 5.2.1, 5.2.1.5.B.ii,

5.2.2

610 Subject Index

neighboring rights (continued)remedies and, 5.6, 5.6.1, 5.6.2, 5.6.3rights, 5.4, 5.4.1, 5.4.2statutory licenses and, 5.5, 5.5.1, 5.5.2,

5.5.3subject matter, 5.1, 5.1.1, 5.1.2term of protection for, 5.3, 5.3.1, 5.3.1.2,

5.3.2, 5.3.2.3neighboring rights formalities, 5.1.2.4neighboring rights treaties, 2.2.1, 2.2.2,

2.2.3, 2.2.4, 5.1emergence of, 1.2.2, 2, 2.2foreign protectibility and, 4.1

Netherlandscopyright standards of, 5.1.1.1.A,

5.1.1.1.B.v, 5.1.1.1.B.viiownership determination in, 5.2.1.2

news. See press informationnonexclusive ownership, transfer of, 5.2.2,

5.2.2.1.A, 5.2.2.2.A, 5.2.2.2.Bnonprofit use. See instruction; public goodnonprotectibility, categorical rule of,

2.1.2.1.B.iiNorth America. See also specific country

copyright agreements of, 2.1.3.1North American Free Trade Agreement

(NAFTA), 2.3.1ownership and term provisions in, 2.3.1.3protection conditions of, 2.3.1.1,

5.1.1.1.A, 5.1.1.3.Brights and remedies in, 2.3.1.4subject matter of, 2.3.1.2

North American Free Trade AgreementImplementation Act, 2.3.1.2, 5.1.1.3.B

notice, mandatory affixation ofas copyright requirement, 1.1, 2.1.1,

2.1.2.1.A, 2.1.2.2.B.ii, 5.1.1.3.A,5.1.1.3.B

as neighboring rights requirement, 2.2.2,5.1.2.4

U.S. copyright requirement for,5.1.1.3.B.i, 5.1.1.3.B.ii, 5.1.1.3.B.vi

notice of intent, for copyright restorationenforcement, 5.1.1.3.B.vi

novels, copyright protection of, 5.1.1.1.B.viinovelty, as copyright standard, 5.1.1.1.A

object code, in computer programs,5.1.1.1.B.vii, 5.5.1.1.B

offensive works, copyright traditions for,1.1

official texts, copyright protection of,5.1.1.2.B

offshore acts, foreign copyright infringe-ment and, 3.3.1.3 n.182, 3.3.2.1

on-demand transmissionseconomic rights for, 5.4.1.1.B,

5.4.1.1.B.ivinteractive, 2.1.2.3, 3.1.2.2

Online Copyright Infringement LiabilityAct, 5.4.1.1.C, 5.4.1.1.C n.710

Organization of American States (O.A.S.),2.1.3.2 n.180, 4.2.2, 4.2.2.5

origin, country of. See country of originoriginal ownership. See ownership of

copyrightoriginality

as copyright standard, 5.1.1.1.A,5.1.1.1.A n.49, 5.1.1.1.B.i, 5.1.1.1.B.v,5.1.1.2.A

of performances, 5.1.2.1ownership of copyright. See also transfer of

copyrightaudiovisual works and, 5.2.1.5choice of law for, 3.3.2.1, 3.3.2.1.A, 4.1collaborative (joint), 5.2, 5.2.1.2collective, 5.2, 5.2.1.3determination of, 3.3.2.1, 3.3.2.1.A, 4.1,

5.2foreign protectibility and, 4.1, 4.2individual, 5.2, 5.2.1.1in multilateral copyright treaties,

2.1.2.1.B.iii, 2.1.2.2.B.iiiworks made for hire and, 5.2, 5.2.1.4

paintingscopyright protection of, 1.1, 2.1.2.2.B.ii,

5.1.1.1.B.ivintegrity rights for, 5.4.2.2

Pan-American Conventions, 2.1.3.1pantomime

copyright protection of, 5.1.1.1.B.iipublic exhibition rights for, 5.4.1.1.B.v

parody, copyright exemptions for, 5.5.1.2.Apartial cumulative art, as national

approach, 5.1.1.1.B.viiipatents

national treatment of, 3.2.2.2trade arrangements and, 2.3.2.1

paternity rights, 5.4.2.1. See also authorshippenal sanctions

as copyright infringement remedy, 5.6.3for neighboring rights infractions, 2.2.2,

2.2.4for trade arrangement infractions,

2.3.1.4performance date, term of protection and,

5.3.1.2performance place, copyright contract

conflicts and, 3.3.2.2.B

Subject Index 611

performances. See also public performance;WIPO Performances and PhonogramsTreaty

authors’ rights for, 1, 1.2.1collecting organizations for, 5.2.2.3copyright exemptions for, 5.5.2, 5.5.2.1,

5.5.2.2, 5.5.2.3copyright protection of, 1.1, 2.1.1,

2.1.2.1.A, 2.1.2.2.B.ivdefinitions of, 5.4.1.1.B.ieconomic rights for, 5.4.1.1.B.i, 5.4.1.2,

5.4.1.2.Aforeign protectibility of, 4.1.1.1.B. ii,

4.1.2, 4.2.3national treatment of, 3.2.3.2, 3.2.4.3neighboring rights for, 1.2.2, 2.1, 2.2.3,

5.1.1, 5.1.2, 5.4.1.2term of protection for, 5.3.1.2

performerseconomic rights for, 2.2.3, 3.2.3.2,

5.4.1.2.Aexclusive rights for, 5.4.1.2.Aforeign protectibility of, 4.1.2.1.B.ineighboring rights for, 2.2.1.1, 2.2.1.2,

5.4.1.2term of protection for, 5.3.1.2trade arrangements for, 2.3.1.1, 2.3.2.2,

2.3.2.3 n.314, 2.3.2.4personal jurisdiction

choice of forum and, 3.3.1contract basis of, 3.1.2copyright infringement and, 3.3.1.1.A

personal rights. See moral rightsphonograms. See also Geneva Phonograms

Convention; Rome Convention; soundrecordings; WIPO Performances andPhonograms Treaty

copyright exemptions for, 5.5.1.3.Adefinition of, 5.1.2.2economic rights for, 5.4.1.1.A.i,

5.4.1.1.A.i n.567, 5.4.1.1.A.iii, 5.4.1.2,5.4.1.2.A, 5.4.1.2.B

exclusive rights for, 5.4.1.2.Bforeign protectibility of, 4.1, 4.1.2.1,

4.1.2.1.B.ii, 4.1.2.2, 4.2.1national treatment of, 3.2.2.1, 3.2.3.2,

3.2.4.3neighboring rights for, 1.2.2, 2.2.1.1,

2.2.1.3, 4.2.3, 5.1.2, 5.1.2.2, 5.4.1.2public distribution rights for, 2.1.2.3.,

2.2.3, 5.5.1.6.Arental rights for, 5.4.1.1.A.iiireproduction rights for, 5.4.1.1.A.i,

5.4.1.1.A.i n.567, 5.4.1.2.A, 5.4.1.2.B,5.4.1.2.B n.747

term of protection for, 5.3.1.2trade arrangements for, 2.3.2.2, 2.3.2.3

n.341, 2.3.2.4unauthorized duplication of, 2.2.2

photocopyingcopyright exemptions for, 5.5.1.1.B,

5.5.1.5economic rights for, 5.4.1.1.A.i,

5.4.1.1.Cin libraries, 5.4.1.1.C, 5.5.1.5statutory licenses for, 5.5.1.6.B, 5.5.1.6.B

n.935unauthorized, national treatment of, 3,

3.2.3.1, 3.2.3.1 n.96photographs

authors’ right for, 1.2.1copyright protection of, 1.1, 2.1.2.1.B.ii,

2.1.2.2.B.iii, 2.1.2.3, 5.1.1.1.B.iii,5.1.1.1.B.iv

joint authorship of, 5.2.1.2neighboring rights for, 1.2.2public exhibition rights for, 5.4.1.1.B.vterm of protection of, 2.3.1.3, 2.3.2.3,

5.3.1.1.B.ipictorial works

copyright protection of, 5.1.1.1.B.viiipublic exhibition rights for,

5.4.1.1.B.vpiracy

border control measures for, 2.3.1.4,2.3.2.1, 2.3.2.4

economic rights and, 5.4.1.1.A.iiisanctions against, 2.2.2, 2.2.4, 2.3.1.4,

5.6.3plays. See dramatic workspoetry, copyright protection of,

5.1.1.1.B.viipoint of attachment. See attachment, point

ofpresentations. See audiovisual workspresidential proclamation, in U.S. protection

of foreign works, 4.2.2, 4.2.2.3press information, copyright applications

for, 3.1.2.1.B, 3.1.2.1.B n.32, 4.1.1.1.A.i,5.5, 5.5.1.2.B

pretrial relief, for copyright infringement,5.6.1.1

prior treaty coverage, foreign protectibilitythrough, 4.1.1.1.A.ii

priority rulesin multilateral copyright treaties,

2.1.2.2.A, 2.1.2.2.B.vfor ownership transfer, 5.2.2.2.B

privacy, personal, copyright exemptionsfor, 5.5, 5.5.1.2.D

612 Subject Index

private copying. See also photocopyingcopyright exemptions and, 5.5, 5.5.1.1,

5.5.1.6as copyright infringement, 3.3.2.1,

4.1.1.1.B.ii, 5.4.1economic rights and, 5.4.1.1.A.ii,

5.4.1.1.A.iiisecondary liability for, 5.4.1.1.Cstatutory licenses for, 5.5.1.6, 5.5.1.6.B,

5.5.1.6.B n.935private study, copyright exemptions for,

5.5.1.1.A, 5.5.1.5private taping. See home audiotaping;

home videotapingprivilege

most-favored-nation obligation and,3.2.4.3

sovereign, in copyright traditions, 1.2.1,2.1.2.B.v

procedures, copyright protection for,2.1.2.3, 2.3.2.3

producers, ownership by, 5.2.1.5.A, 5.2.1.5.Bproduct labels, copyright protection of,

5.1.1.1.B.ivprofits, monetary remedies and, 5.6.2property rights. See economic rightsprotectibility

copyright and, 4.1.1, 4.1.1.1, 4.1.1.2,4.1.1.3, 4.1.1.4

of foreign works in U.S., 4.2, 4.2.1, 4.2.2,4.2.3

of moral rights, 4.2.3neighboring rights and, 4.1.2, 4.1.2.1,

4.1.2.2, 4.2.3of published vs. unpublished works,

4, 4.1.1.1.B.i, 4.2.1, 4.2.2, 4.2.2.2of U.S. works in other countries, 4.1,

4.1.1, 4.1.2protectible subject matter

classes of, 5.1.1.1.Bdetermination of, 5.1.1.1protection standards for, 5.1.1.1.A

protecting countrydefinition of, 4.1

protection, statutory. See copyrightprotection

protectionism, 3.1prototypes. See designs and modelspseudonymous works

paternity rights for, 5.4.2.1term of protection of, 5.3.1.1.A.iii

public communication rightscopyright exemptions for, 5.5.2, 5.5.2.1,

5.5.2.2, 5.5.2.3economic rights for, 5.4.1.1.B, 5.4.1.1.B.i,

5.4.1.1.B.iv

public distribution rightscopyright exemptions for, 5.5in copyright treaties, 2.1.2.3, 2.1.3.2economic rights and, 5.4.1.1.A.iii,

5.4.1.1.A.iii n.591foreign infringement of, 3.1.2.2, 3.1.2.3formality requirements for, 5.1.1.3.Bin neighboring rights treaties, 2.2.3,

4.2.3performers’ exclusive transfer of,

5.4.1.2.Ain trade arrangements, 2.3.1.4

public domaincopyright formalities and, 5.1.1.3.B,

5.1.1.3.B n.218, 5.1.1.3.B.viderivative works protection and,

5.1.1.1.B.vin multilateral copyright treaties,

2.1.2.1.B.vterm of protection and, 5.2.3.1

public exhibitionseconomic rights for, 5.4.1.1.B.ivsubject matter, 5.4.1.1.B.i, 5.4.1.1.B.v

public goodauthors’ rights and, 1, 1.1, 1.2.1copyright exemptions for, 5.5, 5.5.1,

5.5.1.2, 5.5.1.5library lending rights and, 5.4.1.1.A.iii

public lending rightseconomic rights and, 5.4.1, 5.4.1.1.A.iiinational treatment of, 3.2.3.1, 3.2.4.2performers’ exclusive transfer of,

5.4.1.2.Apublic performance

case law doctrines of, 5.4.1.1.Bcopyright exemptions for, 5.5.2, 5.5.2.1,

5.5.2.2definitions of, 5.4.1.1.B, 5.4.1.1.B.iveconomic rights for, 5.4.1.1.B, 5.4.1.1.B.ineighboring rights for, 5.4.1.2in satellite transmission infringements,

2.2.4, 3.1.2.2public reception. See also satellite

transmissionscopyright exemptions for, 5.5.2.2,

5.5.2.3as copyright infringement element,

3.1.2.2performance rights and, 5.4.1.1.B.i,

5.4.1.1.B.iiipublication date, term of protection, 5.3,

5.3.1.1.A.i, 5.3.1.1.A.ii, 5.3.1.1.A.iiipublication place

foreign protectibility and, 4.1.1.1.B.iiin U.S. protection of foreign works, 4.2.2,

4.2.2.2

Subject Index 613

published workscopyright exemptions for, 5.5copyright protection of, 1, 1.1, 5.1.1.1.B.viicopyright treaties for, 2.1.1, 2.1.2.1.B.ii,

21.2.2.B.idefinition of, 2.1.2.2.B.i, 4.1.1.1.B.iiforeign protectibility of, 4.1.1.1.B.ii,

4.1.1.2.B, 4.2.2U.S. protection of foreign, 4.2.2, 4.2.2.2

quotations, copyright exemptions for, 5.5,5.5.1.2.C

radio programs, transmission to hospitals,5.4.1.1.B

recipe books, copyright protection of,5.1.1.1.B.vii

reciprocity. See material reciprocityrecitation, economic rights for, 5.4.1.1.B,

5.4.1.1.B.iirecords. See phonograms; sound

recordingsregional copyright arrangements, 2.1.3,

4.1, 4.1.1.1.A.ii, 4.1.1.3registration

authorship determination by, 5.2.1.1as copyright requirement, 1.1, 2.1.1,

2.1.2.1.A, 2.1.2.2.B.ii, 5.1.1.3.A,5.1.1.3.B

term of protection and, 5.2.3.1.AU.S. copyright requirement for,

5.1.1.3.B.iiregistration deposit

as copyright requirement, 2.1.1,2.1.2.1.A, 2.1.2.2.B.ii, 5.1.1.3.A

U.S. copyright requirement for,5.1.1.3.B.iii

remediescoercive, 5.6.1for foreign copyright infringements,

3.1.2.1.B, 5.6monetary, 5.6.2national treatment of, 3.2.4, 5.6, 5.6.2,

5.6 n.976neighboring rights and, 5.6, 5.6.1, 5.6.2,

5.6.3permanent, 5.6.1.2temporary, 5.6.1.1in trade arrangements, 2.3.1.4, 2.3.2.4, 5.6

remuneration. See equitable remunerationrenewal

copyright-contractual conflicts and,3.3.2.2.C

copyright requirements for, 1.1, 2.1.1,5.1.1.3.B.v

term of protection and, 5.3.2.1.A

Rental and Related Rights Directive,European Union, 5.4.1.2.A, 5.4.1.2.B,5.4.1.2.C, 5.4.1.2.D

rental rights. See also public distributionrights

economic rights and, 5.4.1.1.A.iiiperformers’ exclusive transfer of, 5.4.1.2.Aof phonogram producers, 5.4.1.2.B

reprisal, in multilateral copyright treaties,2.1.2.1.A

reproduction rightscollecting organizations and, 5.2.2.3,

5.5.1.1.Bcopyright exemptions for, 5.5, 5.5.1in developing countries, 5.1.1.6.C n.947,

5.5.1.6.Cfor digital electronics, 2.1.2.3economic rights and, 5.4.1.1.A.i,

5.4.1.1.A.iii, 5.5.1.6for educational uses, 5.5.1.1, 5.5.1.2.C,

5.5.1.5, 5.5.1.6.B, 5.5.1.6.CEuropean laws on, 1.2.1, 2.1.1exclusive transfer of, 5.4.1.2.A, 5.4.1.2.Bexhaustion doctrine and, 5.5.1.4for incidental uses, 5.5.1.3in multilateral copyright treaties,

2.1.2.1.A, 2.1.2.1.A n.69, 2.1.2.2.B.ivfor private uses, 5.5.1.1for public uses, 5.5.1.2statutory licenses for, 5.5, 5.5.1.6,

5.5.1.6.B, 5.5.1.6.B n.935in trade arrangements, 2.3.1.4unauthorized vs. authorized, 2.1.1,

5.4.1.1.Creputational interests, of authors, 5.4.2.2.

See also moral rights; privacyresale royalty right

in copyright treaties, 2.1.2.1.B.iv, 2.1.3.2economic rights and, 5.4.1.1.A.iiiin foreign copyright infringement,

3.3.2.1.Bnational treatment of, 3.1.2, 3.2.3.1in neighboring rights treaties, 2.2.1.1

research, copyright exemptions for,5.5.1.1.A, 5.5.1.1.B, 5.5.1.5, 5.5.1.6.C

Restatement of Conflicts, Second, 3.3.2.2,3.3.2.2.A, 3.3.2.2.B, 3.3.2.2 n.222,3.3.2.2 nn.226–227

restoration of copyrightenforcement notice for, 5.1.1.3.B.virequirements for, 4.2.2.6, 5.1.1.3.B.vi

restorations, art, copyright protection of,5.1.1.1.A

restraining orders, 5.6.1.1retransmission media, broadcasting rights

and, 5.4.1.1.B.iii

614 Subject Index

retroactivityunder Berne convention, 2.3.2.3 n.341,

2.3.2.4 n.351, 4.1.1.1.A.ii, 5.3.3foreign protectibility and, 4.1.1.1.A.ii,

4.1.2.1.A, 4.2.2.6under multilateral copyright treaties,

2.1.2.1.B, 2.1.2.3under neighboring rights treaties, 2.2.1.6in trade arrangements, 2.3.1.2

reverse engineering, copyright exemptionsfor, 5.5.1.1.B

reversionary rights, ownership transferand, 5.2.2.1.B, 5.2.2.1.B n.417

rights. See also specific typecopyright treaties for, 2.1.1, 2.1.2.1.A,

2.1.2.1.B.ivforeign protectibility and, 4.1, 4.2.3historical perspectives on, 1, 1.1, 1.2.1,

1.2.2, 5.4national treatment of, 3.2.3, 3.2.4,

3.2.4.2neighboring rights treaties for, 2.2.3in trade arrangements, 2.3.1.4, 2.3.2.4

rights collecting societies, 5.2.2.3rights transfer. See transfer of copyrightRome Contracts Convention. See Rome

ConventionRome Convention

authorship determination in, 5.2.5.5.B.iibroadcasters protection by, 2.2.1.4,

5.1.2.3choice of law in, 3.3.2.2, 3.3.2.2.Aconditions and exceptions of, 2.2.1.5, 3.2,

3.2.4.3, 5.1.2.4economic rights in, 5.4.1.2, 5.4.1.2.A,

5.4.1.2.B, 5.4.1.2.Cforeign protectibility through, 4.1.2.1history of, 2.2.1.1institutional and structural provisions of,

2.2.1.6moral rights in, 5.4.2performer protection by, 2.2.1.2, 5.1.2.1phonogram producer protection by,

2.2.1.3, 5.1.2.2relationship with other conventions,

2.2.1.1, 2.2.1.6, 2.2.2, 2.2.3term of protection in, 5.3.1.2, 5.3.3

royalties. See economic rights; equitableremuneration; resale royalty right

SABAM (collecting organization), 5.2.2.3SACD (Société des Auteurs et Compositeurs

Dramatique), 5.2.2.3SACEM (Société des Auteurs, Compositeurs

et Editeurs de Musique), 5.2.2.3

safe harborsfor digital technologies infringement,

5.4.1.1.Cfor phonogram rentals, 5.4.1.1.A.iii

Safeguard Clause, of Berne Convention,2.1.2.2.A, 5.5.1.6.C

sale of ownership. See also transfer ofcopyright

distribution rights with, 5.4.1.1.A.iiisatellite transmissions

broadcasting rights and, 5.4.1.1.B.iii,5.4.1.2.C

choice of law for, 3.3.2.1.Bcopyright treaties for, 2.1.3.2, 3, 3.1.2.2direct vs. emitted, 2.2.4, 2.2.4 nn.269–

270neighboring rights treaties for, 2.2.4,

2.2.4 n.265, 2.2.4 n.271, 5.1.2.3public communication rights and,

5.4.1.1.B.ivstatutory licenses for, 5.5.2.3

scènes à faire doctrine, of idea-expressiondistinction, 5.1.1.2.A

scholarship. See instruction; intellectualproperty; research

science worksauthors’ right for, 1.2.1multilateral copyright for, 2.1.2.2.B.ii

screenwriters, ownership by, 5.2.1.5.Ascriptwriters, ownership by, 5.2.1.5.Asculpture

copyright protection of, 1.1, 5.1.1.1.B.iv,5.1.1.1.B.viii

rights for, 5.4.1.1.B.v, 5.4.2.2secondary cable transmissions, copyright

exemptions for, 5.5.2.3, 5.5.2.3 n.967secondary liability, for copyright infringe-

ment, 3, 5.4.1.1.C, 5.4.1.3seizure of goods

as infringement remedy, 5.6, 5.6.1.1in trade arrangements, 2.3.1.4, 2.3.2.1,

2.3.2.4self-execution debate, on copyright treaties,

2.1, 2.1 nn.19–20shorter term, rule of the. See comparison of

terms rulesignals, programme-carrying. See also

broadcasts and broadcastersbroadcasting rights and, 5.4.1.1.B.iiicopyright infringements of, 3.1.2.2,

3.3.2.1.Bdefinitions of, 2.2.4 n.266, 2.2.4 n.269,

2.2.4 n.270distribution rights for, 2.2.4 n.265, 2.2.4

n.271

Subject Index 615

neighboring rights for, 5.1.2.3statutory licenses for, 5.5.2.3

slogans, copyright protection of, 5.1.1.1.B.isocialism, as copyright approach, 1 n.1software. See computer programsSoftware Directive, European Union,

5.1.1.1.B.vii, 5.1.1.2.A, 5.5.1.1.B,5.5.1.3.B

songs. See musical workssound cards, copyright infringement of,

3.3.1.2sound recordings. See also phonograms

adaptation rights for, 5.4.1.1.A.iiauthors’ right for, 1, 1.2.1copyright protection of, 5.1.1, 5.1.1.1.B.vdefinition of, 5.1.2.2economic rights for, 5.4.1.1.A.iforeign copyright infringement of,

3.3.2.1, 3.3.2.1.Bforeign protectibility of, 4.1, 4.2.2.4,

4.2.3formalities for copyright of, 5.1.1.3.A,

5.1.1.3.B, 5.1.1.3.B.i, 5.1.1.3.iiineighboring rights for, 1.2.2, 5.1.2,

5.1.2.2ownership determination of, 5.2.1.1public performance rights and,

5.4.1.1.B.irental rights for, 5.4.1.1.A.iiistatutory licenses for, 5.5.1.6.Atrade arrangements for, 2.3.1.1, 2.3.1.4traditional legal protection for, 1, 1.1,

3.3.2.1source code, in computer programs,

5.1.1.1.B.vii, 5.5.1.1.BSouth America

copyright agreements of, 2.1.3.1trade arrangements with, 2.3.2

Soviet Union, copyright treaties of,2.1.2.2.A

Spaincopyright exemptions in, 5.5.1.2,

5.5.1.6.Bownership transfer in, 5.2.2.1.Dwithdrawal rights in, 5.4.2.4

speeches, copyright protection of,2.1.2.1.B.ii, 5.1.1.2.B

state authorityin contractual choice of law, 3.3.2.2.Ain foreign works protection, 4.2.1, 4.2.3territoriality in, 3.1.1

Statute of Anne, 1.1, 5.1.1.3statutes, copyright protection of, 5.1.1.2.Bstatutory damage awards, 5.6.2, 5.6.2

n.1022

statutory licenses. See also equitableremuneration

as copyright limitations, 5.5, 5.5.1.6developing countries use of, 5.5.1.6.C,

5.5.1.6.C n.947for electronic rights, 3.2.3.1in multilateral copyright treaties,

2.1.2.1.A, 2.1.2.1.B, 2.1.2.2.B.ivfor musical works, 5.5.1.6.A, 5.5.1.6.A

n.928in neighboring rights treaties, 2.2.2for performance and communication

rights, 5.5.2, 5.5.2.1, 5.5.2.2for private copying, 5.5.1.6.B, 5.5.1.6.B

n.935territoriality and, 3, 3.1.2.1.B

stories, computer-generated, 5.1.1.1.B.viisubject matter. See also specific subjects

classes of, 5.1.1.1.B, 5.1.1.2copyright protection of, 2.1.2.2.B.ii, 5.1,

5.1.1, 5.1.1.1.A, 5.1.1.1.B.viii, 5.1.2fixation requirements for, 2.2.1.2,

2.2.1.3, 2.2.1.4, 4.1.2.1.B.ii, 5.1.1.4foreign protectibility scope of, 4.1,

4.1.1.1.A.i, 4.1.1.2.A, 4.2formalities for protection of, 5.1.1.3,

5.1.2.4neighboring rights, 5.1.2as protectible vs. unprotectible, 5.1.1.1,

5.1.1.2subsidies, for authors, 3.2.3.1sui generis design statute

economic rights in, 5.4.1.2.Dsubject matter protection in, 5.1,

5.1.1.1.B.viii, 5.1.2

tangible workscopyright protection of, 5.1.2.1economic rights for, 5.4.1.1.Aforeign protectibility and, 4.1.1.1.B.ii,

4.1.1.2.Anational treatment of, 3.2.3.1.

tax benefits, for authors, 3.2.3.1technical drawings, copyright protection

of, 5.1.1.1.B.ivtechnical manuals, copyright protection of,

5.1.1.1.B.vtechnological exploitation

of copyright works, 3, 3.1.2, 3.2.1national treatment of, 3.2.1of performances, 5.4.1.2.A

technological inventionscopyright protection of, 5.1.1.1,

5.1.1.1.B.ivas copyright protection systems, 5.4.1.3

616 Subject Index

television programs. See also cabletransmissions; satellite transmissions

integrity rights and, 5.4.2.2neighboring rights for, 5.4.1.2.Cstatutory licenses for, 5.5.2.3transmission to hospitals, 5.4.1.1.B

term extensions, for copyright, 1.1, 5.3after authors’ death, 1.2.1, 2.1.2.1.A,

2.1.2.1.B.iii, 2.1.2.2.Aterm of protection

in Berne Convention, 5.3, 5.3.1.1, 5.3.2.1consecutive, 5.3.2.2in copyright treaties, 2.1.2.1.A,

2.1.2.1.B.iii, 2.1.2.2.B.iii, 2.1.3.2,5.3.1.1

foreign copyright infringement and,3.3.2.1.B

foreign protectibility and, 4.1limitations of, 1.1in neighboring rights treaties, 2.2.1.3,

2.2.1.5, 2.2.3, 2.2.4, 5.3.1.2ownership transfer and, 5.2.2.1.Bretroactive, 5.3.3in Rome Convention, 5.3.1.2, 5.3.3for special classes of works, 5.3.1.1.A.i,

5.3.1.1.Bin trade arrangements, 2.3.1.3, 2.3.2.3for traditional literary/artistic works,

5.3.1.1.Ain TRIPS Agreement, 5.3.1.1.A.i,

5.3.1.1.A.i n.466, 5.3.1.1.B.ii, 5.3.1.2,5.3.3

in Universal Copyright Conventions,5.3.1.1.A.i, 5.3.1.1.B.ii, 5.3.2.2, 5.3.3

in WIPO Copyright Treaty, 5.3.1.1.B.iTerm of Protection Directive, European

Union, 5.1.1.1.B.iv, 5.2.1.5, 5.3.1.1,5.3.2.3, 5.4.1.2.D

termination of copyright, 5.2.2.1.Bterritoriality, 3.1

of acts defeating protection, outside theprotecting country, 3, 3.1.2, 3.1.2.3

of copyright infringement, 3.1, 3.1.2,3.3.1.1.A

of copyright infringement acts, in morethan one country, 3, 3.1.2, 3.1.2.1

of copyright infringement elements, inmore than one country, 3, 3.1.2,3.1.2.2

in copyright law, 3, 3.1.2, 3.3effects-based test of, 3.1.2.2in international law, 3.1.1, 3.3resale royalty right and, 5.4.1.1.A.iiiof statutory licenses, 5.5.1.6.Atreaty applications of, 2, 2.1

textbooks. See instruction manualsTokyo Round, of GATT, 2.3.2.1trade agreements

copyright connections with, 2, 2.1.3.2,2.3

impact on developing countries, 2.3.1.1,2.3.1.4, 2.3.2.1

infringement remedies in, 2.3.1.4,2.3.2.4, 5.6

most-favored-nation feature of, 2.3.2.1,3.2.4

overview of, 2.1.3.2, 2.3, 2.3.1, 2.3.2trade disputes, settlement procedures for,

2.3, 2.3.2.4, 3.2.1, 3.2.2.2trade economics

foreign copyright infringement and,3.3.2.1.A, 3.3.2.1.B

of national treatment, 3.2, 3.2.1, 3.2.3in trade agreements, 2.3.1.3

Trade-Related Aspects of IntellectualProperty Rights, Agreement on. SeeTRIPS Agreement

trade secrets, national treatment of,3.2.2.2

trademarkscopyright protection of, 5.1.1.1.B.ivmoral rights for, 5.4.2.1, 5.4.2.2national treatment of, 3.2.2.2territoriality and, 3.1.1, 3.1.2 n.20trade arrangements and, 2.3.2.1

transfer of copyrightchoice of forum law and, 3.3, 3.3.2,

3.3.2.2.Bin civil vs. common law, 1, 5.2.1.5.Abetween co-authors, 5.2.1.5.Acontinental authors’ rights and, 1.2.1contracts for, 5.2.2, 5.2.2.1, 5.2.2.1.A,

5.2.2.1.B, 5.2.2.1.C, 5.2.2.1.Dexclusive vs. nonexclusive, 5.2.2,

5.2.2.1.A, 5.2.2.2.A, 5.2.2.2.Bexploitation and, 5.2.2, 5.2.2.1,

5.2.2.1.Afirst sale doctrine and, 5.4.1.1.A.iii,

5.5.1.4formality requirements for, 5.2.2.2.Afuture works rights with, 5.2.2.1.Dlimitations of, 5.2.2.1priority ordering for, 5.2.2.2.Bremuneration with, 5.2.2.1.Crules governing, 5.2.2scope of, 5.2.2.1.Aterm/termination of, 5.2.2.1.Bin trade arrangements, 2.3.1.3

transitory action, for foreign copyrightinfringement, 3.3.1.1.A

Subject Index 617

translationscopyright protection of, 5.1.1, 5.1.1.1.B.i,

5.1.1.1.B.vin developing countries, 5.1.1.6.C n.947,

5.5.1.6.Cmultilateral copyright treaties for,

2.1.2.1.A, 2.1.2.1.B.iv, 2.1.2.2.B.ivof official texts, 5.1.1.2.Brights for, 5.4.1.1.A.ii, 5.4.2.2trade arrangements for, 2.3.1.4

transmissions. See broadcasts andbroadcasters; specific type

treaties. See also specific treaty or typecopyright traditions in, 1.2.1, 1.2.2, 2.1exceeding minimum terms of, 3.1 n.59,

3.2, 3.2.1, 3.2 n.58TRIPS Agreement

copyright exemptions in, 5.5economic rights in, 5.4.1, 5.4.1.1.A,

5.4.1.1.A.iii, 5.4.1.2, 5.4.1.2.A,5.4.1.2.C

foreign protectibility through, 4.1.1.1,4.1.2.1.A, 4.2.3

harmonization trends of, 2.1, 2.3, 2.3.2, 3national treatment terms of, 3.2.2.2,

3.2.3.2, 3.2.4.3ownership and term provisions in,

2.3.2.3protection conditions in, 2.3.2.2, 3.2regional copyright vs., 2.1.3.1, 2.1.3.2rights and remedies in, 2.3.2.4, 5.6,

5.6.1.1, 5.6.2subject matter of, 2.3.1.2, 2.3.2.1,

2.3.2.3, 5.1.1, 5.1.1.1.Bterm of protection in, 5.3.1.1.A.i,

5.3.1.1.A.i n.466, 5.3.1.1.B.ii, 5.3.1.2,5.3.3

treaties borrowing from, 2.1.2.3, 2.2.3,2.3.1

typewriting, economic rights for, 5.4.1.1.A.i

UNESCOin copyright treaties, 2.1.2.2.Ain neighboring rights treaties, 2.2.1.1, 2.2.4

unfair competitioncopyright protection and, 5.1.1.1.B.inational treatment and, 3.2.2.2phonogram producers protection from,

2.2.2territoriality and, 3.1.1, 3.1.2 n.20U.S. doctrines on, 4.2.3, 5.1.2.1

United Kingdom. See also Englandcopyright act of, 1.1, 5.1, 5.1.1.1.B.icopyright exemptions in, 5.5.1.2.A,

5.5.1.2.C, 5.5.1.6, 5.5.2.1, 5.5.2.2

copyright infringement in, 5.4.1.1.C,5.6.1.1, 5.6.1.2

copyright treaties of, 2.1.1, 2.1.2.1.Aeconomic rights in, 5.4.1.1.A.ii,

5.4.1.1.A.iii, 5.4.1.2, 5.4.1.2.Dmoral rights protection in, 5.4.2, 5.4.2.1,

5.4.2.2ownership determination in, 5.1.1.1,

5.2.1.2, 5.2.1.3ownership transfer in, 5.2.2, 5.2.2.1.Bstatutory license requirements in,

5.5.1.6.Bterm of protection in, 5.3.1.1.A.i,

5.3.2.1.A, 5.3.2.3United Nations (U.N.), in U.S. protection of

foreign works, 4.2.2, 4.2.2.5United States (U.S.)

copyright acts of, 1.1, 2.1.1copyright-contract conflict cases of,

3.3.2.2.Ccopyright exemptions in, 5.5.1.1.A,

5.5.1.1.B, 5.5.1.3.A, 5.5.1.3.B, 5.5.1.5copyright infringement in, 3.3.1.1.A,

3.3.1.2, 3.3.2.1, 5.4.1.1.C, 5.6.1.1, 5.6.2copyright treaties of, 2.1, 2.1.2.1.A,

2.1.2.2.A, 4.1, 4.1 n.21economic rights in, 5.4.1.1.A.i,

5.4.1.1.A.ii, 5.4.1.1.A.iii, 5.4.1.1.Bforeign works protection in, 4.2, 4.2.1,

4.2.2, 4.2.3formality requirements for copyright,

2.1.1, 2.1.2.1.A, 2.1.2.2.A, 4.1, 4.1n.21, 5.1.1.3.B

moral rights protection by, 4.2.3, 5.4.2,5.4.2.1, 5.4.2.3, 5.4.2.4

neighboring rights in, 5.4.1.2neighboring rights treaties of, 2.2.1.1,

4.1, 4.2.3ownership determination in, 5.2, 5.2.1.1,

5.2.1.2, 5.2.1.4ownership transfer in, 5.2.2, 5.2.2.1.Bprivate copying in, 5.5.1.6.Bpublic performance right in, 5.4.1.1.B,

5.4.1.1.B.istatutory license requirements in,

5.5.1.6.Aterm of protection in, 5.3, 5.3.1.1.A,

5.3.1.2, 5.3.2.1, 5.3.2.3trade agreements of, 2.3

United States workscriteria for, 5.1.1.3.A n.202, 5.1.1.3.B.ii

n.223foreign protectibility of, 4.1, 4.1.1, 4.1.2prior to 1989, 4.1.1.1.A.ii, 4.2.2.2,

5.1.1.3.A, 5.1.1.3.B

618 Subject Index

unity of art (cumulative), as nationalapproach, 5.1.1.1.B.viii

Universal Copyright Conventions (U.C.C.)economic rights under, 5.4.1.1.A.iii,

5.4.1.1.Bforeign protectibility through,

4.1.1.1.A.ii, 4.1.1.2, 4.1.1.4.B.iformality requirements in, 5.1.1.3.Amultilateral copyright treaties of, 2.1.2.2neighboring rights relationship to, 5.1.2regional copyright vs., 2.1.3.1Rome Convention relationship with,

2.2.1.6term of protection in, 5.3.1.1.A.i,

5.3.1.1.B.ii, 5.3.2.2, 5.3.3unjust enrichment, monetary remedies

and, 5.6.2unprotectible works, 2.1.2.1.B.ii, 5.1.1.2unpublished works

copyright exemptions for, 5.5multilateral copyright for, 2.1.2.1.B.ii,

21.2.2.B.iprotectibility of, 4.1.1.1.B.i, 4.1.1.2.B,

4.2.1Uruguay Round, of GATT, 2.3.1.2, 2.3.2.1Uruguay Round Agreements Act, 4.2.2.6,

5.1.1.3.B, 5.1.1.3.B.viutilitarian works. See also specific type

authors’ rights of, 1.2.1copyright protection of, 1, 1.1, 5.1.1.1.A,

5.1.1.1.B.i, 5.1.1.1.B.vii

vicarious liability, for copyright infringe-ment, 5.4.1.1.C, 5.4.1.3

videotapes. See also home videotapingcopyright protection of, 5.1.1.1.B.iiownership issues of, 5.1.2.5.B.ii, 5.2.2.1.Apublic vs. private viewing of, 5.4.1.1.B,

5.4.1.1.B.ivisual works

copyright protection of, 5.1.1.1.B.ivintegrity rights for, 5.4.2.2resale royalty rights for, 5.4.1.1.A.iii

waiversof copyright formalities, 2.3.1.1of moral rights, 5.4.2.5.A

Washington Treaty (1908), 2.1.3.1

White Fang case, 4.1.1.4.B.ii, 4.1.1.4.B.iin.102

Wilde, Oscar, 5.4.1.1.A.iiwillfulness, infringement remedies and,

5.6.2 n.1021, 5.6.3WIPO Copyright Treaty

economic rights in, 5.4.1.1.A.i,5.4.1.1.A.iii, 5.4.1.1.B, 5.4.1.1.B.iii,5.4.1.1.B.iv, 5.4.1.3

most-favored-nation obligation and,3.2.4.3

remedies in, 5.6rights in, 2, 5.4, 5.4 n.549, 5.6subject matter in, 5.1.1.1.Bterm of protection in, 5.3.1.1.B.i

WIPO Guide to the Berne Convention,4.1.1.1.B, 4.1.1.1.B.ii n.54, 4.1.2.1.B,5.1.1.1.B, 5.1.2.1, 5.1.2.4

WIPO Performances and PhonogramsTreaty

background of, 2, 2.1.2.3copyright exemptions in, 5.5economic rights in, 5.4.1.2, 5.4.1.2.A,

5.4.1.2.B, 5.4.1.3moral rights in, 5.4.2, 5.4.2.2neighboring rights terms of, 2.2.3,

5.1.2.1points of attachment in, 4.1.2.1.Brights and remedies in, 5.6

wired transmissions. See cable transmis-sions

wireless transmission. See satellitetransmissions

withdrawal rights, 4.2.3, 5.4.2.4works made for hire

definition of, 5.2.1.4motion picture ownership and, 5.2.1.5.Aownership of, 5.2, 5.2.1.1, 5.2.1.4term of protection for, 5.3.2.3

World Trade Organization (WTO)copyright restoration and, 5.1.1.3.B.vidispute settlement procedures of, 3.2.1,

3.2.2.2, 3.3.2.1foreign protectibility and, 4.1, 4.1.1.1,

4.2.2.6national treatment and, 3.2.1, 3.2.2.2,

3.2.4.1, 3.2.4.3in trade arrangements, 2.3, 2.3.2.2

International Copyright: Principles, Law, and Practice

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