The WTO has a huge impact on international copyright law.
Originally named the General Agreement on Tariffs and Trade (GATT), it
included non-discriminatory provisions such as national treatment,
provisions related the elimination of quantitative restrictions, and
freedom of transit. The GATT of 1947 was the beginning of a series of
trade negotiations over the span of fifty years.
Despite the achievements of the GATT negotiation rounds, there were loopholes in the trading system. As the acronym of the GATT indicates, GATT scope was limited only to tariffs and trade in goods. The GATT did not contain rules aimed at the liberalization of trade in services. More importantly, the GATT did not address any sort of copyright protection in all of its provisions.
Against this background, the GATT parties decided, at their 1986 Punta del Este Ministerial Meeting, to launch the Uruguay Round. The agenda covered traditional GATT subjects such as tariffs, non-tariff barriers, subsidies, and safeguards. It also added, among other things, intellectual property protection. Almost seven years later, the Uruguay Round came to an end. In 1994, the WTO institution was established. In addition to the establishment of the WTO, the Uruguay Round resulted in several agreements including the TRIPS Agreement. The WTO agreements are treated as part of a "single undertaking". In other words, WTO members cannot forum shop which agreement(s) they accept. Once a country becomes a WTO member, it will have to accept all the agreements including the TRIPS Agreement.
There are several reasons that induced countries to include intellectual property protection in the WTO agenda. In WIPO and the international conventions it administers, there are no enforcement mechanism and formal dispute settlement process. Protection of intellectual property is achieved through persuasion and cooperation among countries. In other words, WIPO and the Berne Convention are teethless. Pursuant to the WTO, any member that does not abide by requirements set forth in the TRIPS Agreement, and for that matter other trade agreements, for protecting copyright is at risk of trade sanctions.
The TRIPS Agreement requires countries to continue their practice of applying the same standards to foreigners as they do to their nationals. Also, the TRIPS Agreement requires members to comply with Articles 1 through 21 of the Berne Convention (1971) and its appendix. Hence, the TRIPS Agreement did not create new standards for copyright protection. Rather, the TRIPS Agreement adopted the same protection afforded to copyright under the Berne Convention. Now, members of the WTO- whether they are parties to the Berne Convention or not- are required to adhere the TRIPS Agreement. In essence, this requirement increased compliance with the Berne Convention albeit in an indirect way especially for those countries who are not parties to the Berne Convention.
The TRIPS Agreement does not protect moral rights of authors. This exclusion was written for the benefit of the USA which feared that its inadequate protection of moral rights could be incompatible with the TRIPS Agreement and could be challenged by other WTO members before the WTO dispute settlement mechanism.
Copyright protects the expression of thoughts but not the ideas themselves. However, the TRIPS Agreement does not determine whether a work as a whole should be protected -including original expressions, non-original expressions, and facts- or if the original expressive elements of a work are protected. In other words, the TRIPS Agreement neither adopts the "work as a whole" approach nor the "element by element" approach. The matter is left to national laws.
The TRIPS Agreement makes a new addition to the list of works protected under the Berne Convention. Under the TRIPS Agreement, computer programmes, whether in source or object code, are protected as literary works. In addition, the TRIPS Agreement protects compilations of data or other material-an area not previously covered by copyright- which by reason of selection or arrangement of their contents constitutes intellectual creations. Copyright protection does not extend to the actual data contained in the compilations but without prejudice to any copyright subsisting in the data or material that a member may choose to grant. This provision thus permits countries to afford protection to data.
Among the exclusive rights granted to authors, the TRIPS Agreement provides the new right of rental. Authors of computer programs and cinematographic works have the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. Rental rights need not be granted to cinematographic works unless the rental of such work by third parties has led to widespread copying of such works which is materially impairing the exclusive right of reproduction granted to authors. For computer programs, the new rental right does not apply to rentals where the program itself is not the essential object of the rental.
Under the TRIPS Agreement, any term of protection which is calculated on a basis other than the life of a natural person must be at least fifty years from the first authorized publication of the work. In the case of failing such an event, term of protection runs for fifty years from the making of the work. However, this rule does not apply to photographic works or works of applied art. The language incorporated in the TRIPS Agreement is similar to that of the Berne Convention.
The TRIPS Agreement provides exceptions or limitations to the exclusive rights of authors. The limitation applies in "certain cases" which do not conflict with a "normal exploitation" of the work and does not unreasonably prejudice the "legitimate interests" of the right holder. Although the language of the TRIPS Agreement is similar to that of the Berne Convention, it is noticed that the limitation extends to all rights covered by the TRIPS Agreement, not just the reproductive right as stated in the Berne Convention.
The TRIPS Agreement did not define the terms "certain cases", "normal exploitation", and "legitimate interests." However, WTO panel cases shed light on the meanings of these words. First, the limitation for reproduction in "certain cases" means that the case must be well defined in the sense of legal certainty and limited in its scope. Limitation of the exclusive right must be interpreted narrowly so as not to forgo the rights of the copyright holder.
A use of a work conflicts with a "normal exploitation" if it enters into economic competition with the ways in which authors normally extract value from the work. How right holders normally extract value is to be assessed both empirically and normatively. The empirical element involves an economic analysis of the degree of market displacement caused by the free use of the works at issue. The normative element is to be judged by considering those who are eligible to take advantage of the exception, not just those who are known to be taking advantage of it.
The final element of the limitation requires that the use may not unreasonably prejudice the legitimate interests of the author. An assessment of unreasonable prejudice involves an economic analysis of the loss of income to right holders. Thus, a single photocopy of a journal article might not unreasonably prejudice an author's interest, but multiple copies of that article distributed to a large number of people would unreasonably prejudice an author's interest and therefore be prohibited under TRIPS's standard.
The TRIPS Agreement includes specific provisions on domestic enforcement of copyright. Member must guarantee the availability of fair and equitable enforcement procedures sufficient to permit effective action against any act of infringement. These domestic enforcement actions must not be unnecessarily complicated, time-consuming or costly. Decisions on the merits must be given to the parties, with the opportunity for them to seek judicial review of administrative action and appellate review of initial judicial decisions. In addition, alleged infringers are to be guaranteed certain basic procedures designed to ensure fairness, such as written notice of claims, indemnification in the case of wrongful injunctions or other abuse of process, and a prompt hearing in the event of ex parte procedures.
The TRIPS Agreement expressly deals with the question of available remedies for a copyright infringement. These measures could be divided into provisional measures, civil remedies, criminal penalties, and measures taken at the border. Provisional measures include search and seizure of infringing copies, and evidence of infringement on a protective basis in an interlocutory proceeding. These measures have the purpose of preventing infringements from occurring and preserving relevant evidence. Civil remedies- payment of expenses and counsel fees- compensate the owner of rights for economic injury suffered because of infringement. Criminal sanctions -imprisonment and/or monetary fines- are intended to punish those who commit acts of infringement, theft, or piracy of copyright to deter further infringement. The final category of remedies is measures to be taken at the borders such as seizure. Border measures are different from other enforcement measures in that they involve actions by customs authorities at the borders, rather than by the judicial authorities.
The TRIPS Agreement is tied to the WTO dispute settlement mechanism. In the Understanding on Rules and Procedures Governing the Settlement of Disputes (DSU), the WTO provides a unified dispute resolution regime for disputes that arise under all agreements including TRIPS. The WTO dispute settlement process is efficient with strict deadlines and precisely delineated procedures extending from the moment a complaining WTO member initiates consultations with another member, to the establishment of a panel of experts to review the complaint in a more formal way, through the process of adjudication and appeal, to the formal adoption of the report of a panel or of the Appellate Body.
If WTO members do not honor their obligations under the TRIPS Agreement they could be subject to complaint(s) before WTO panels. Compared with the Berne Convention and the UCC, if a certain WTO member is found to be in violation of TRIPS it will be asked to provide legal relief and remedy; otherwise the member in question will be subject to retaliation in the form of trade sanctions (tariff increase, concession withdrawal and the like).
As of 2010, 29 intellectual property cases have arisen under the WTO dispute settlement mechanism. Of these 29 cases, 4 cases addressed copyright. Those copyright cases have been resolved either through mutually agreed solution or by a panel decision. Until now, all copyright cases, have dealt with domestic copyright legislations. In those copyright cases, the complainants claimed that the respondents' legislation lacked certain provisions that were necessary to comply with the TRIPS Agreement.
Despite the achievements of the GATT negotiation rounds, there were loopholes in the trading system. As the acronym of the GATT indicates, GATT scope was limited only to tariffs and trade in goods. The GATT did not contain rules aimed at the liberalization of trade in services. More importantly, the GATT did not address any sort of copyright protection in all of its provisions.
Against this background, the GATT parties decided, at their 1986 Punta del Este Ministerial Meeting, to launch the Uruguay Round. The agenda covered traditional GATT subjects such as tariffs, non-tariff barriers, subsidies, and safeguards. It also added, among other things, intellectual property protection. Almost seven years later, the Uruguay Round came to an end. In 1994, the WTO institution was established. In addition to the establishment of the WTO, the Uruguay Round resulted in several agreements including the TRIPS Agreement. The WTO agreements are treated as part of a "single undertaking". In other words, WTO members cannot forum shop which agreement(s) they accept. Once a country becomes a WTO member, it will have to accept all the agreements including the TRIPS Agreement.
There are several reasons that induced countries to include intellectual property protection in the WTO agenda. In WIPO and the international conventions it administers, there are no enforcement mechanism and formal dispute settlement process. Protection of intellectual property is achieved through persuasion and cooperation among countries. In other words, WIPO and the Berne Convention are teethless. Pursuant to the WTO, any member that does not abide by requirements set forth in the TRIPS Agreement, and for that matter other trade agreements, for protecting copyright is at risk of trade sanctions.
The TRIPS Agreement requires countries to continue their practice of applying the same standards to foreigners as they do to their nationals. Also, the TRIPS Agreement requires members to comply with Articles 1 through 21 of the Berne Convention (1971) and its appendix. Hence, the TRIPS Agreement did not create new standards for copyright protection. Rather, the TRIPS Agreement adopted the same protection afforded to copyright under the Berne Convention. Now, members of the WTO- whether they are parties to the Berne Convention or not- are required to adhere the TRIPS Agreement. In essence, this requirement increased compliance with the Berne Convention albeit in an indirect way especially for those countries who are not parties to the Berne Convention.
The TRIPS Agreement does not protect moral rights of authors. This exclusion was written for the benefit of the USA which feared that its inadequate protection of moral rights could be incompatible with the TRIPS Agreement and could be challenged by other WTO members before the WTO dispute settlement mechanism.
Copyright protects the expression of thoughts but not the ideas themselves. However, the TRIPS Agreement does not determine whether a work as a whole should be protected -including original expressions, non-original expressions, and facts- or if the original expressive elements of a work are protected. In other words, the TRIPS Agreement neither adopts the "work as a whole" approach nor the "element by element" approach. The matter is left to national laws.
The TRIPS Agreement makes a new addition to the list of works protected under the Berne Convention. Under the TRIPS Agreement, computer programmes, whether in source or object code, are protected as literary works. In addition, the TRIPS Agreement protects compilations of data or other material-an area not previously covered by copyright- which by reason of selection or arrangement of their contents constitutes intellectual creations. Copyright protection does not extend to the actual data contained in the compilations but without prejudice to any copyright subsisting in the data or material that a member may choose to grant. This provision thus permits countries to afford protection to data.
Among the exclusive rights granted to authors, the TRIPS Agreement provides the new right of rental. Authors of computer programs and cinematographic works have the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. Rental rights need not be granted to cinematographic works unless the rental of such work by third parties has led to widespread copying of such works which is materially impairing the exclusive right of reproduction granted to authors. For computer programs, the new rental right does not apply to rentals where the program itself is not the essential object of the rental.
Under the TRIPS Agreement, any term of protection which is calculated on a basis other than the life of a natural person must be at least fifty years from the first authorized publication of the work. In the case of failing such an event, term of protection runs for fifty years from the making of the work. However, this rule does not apply to photographic works or works of applied art. The language incorporated in the TRIPS Agreement is similar to that of the Berne Convention.
The TRIPS Agreement provides exceptions or limitations to the exclusive rights of authors. The limitation applies in "certain cases" which do not conflict with a "normal exploitation" of the work and does not unreasonably prejudice the "legitimate interests" of the right holder. Although the language of the TRIPS Agreement is similar to that of the Berne Convention, it is noticed that the limitation extends to all rights covered by the TRIPS Agreement, not just the reproductive right as stated in the Berne Convention.
The TRIPS Agreement did not define the terms "certain cases", "normal exploitation", and "legitimate interests." However, WTO panel cases shed light on the meanings of these words. First, the limitation for reproduction in "certain cases" means that the case must be well defined in the sense of legal certainty and limited in its scope. Limitation of the exclusive right must be interpreted narrowly so as not to forgo the rights of the copyright holder.
A use of a work conflicts with a "normal exploitation" if it enters into economic competition with the ways in which authors normally extract value from the work. How right holders normally extract value is to be assessed both empirically and normatively. The empirical element involves an economic analysis of the degree of market displacement caused by the free use of the works at issue. The normative element is to be judged by considering those who are eligible to take advantage of the exception, not just those who are known to be taking advantage of it.
The final element of the limitation requires that the use may not unreasonably prejudice the legitimate interests of the author. An assessment of unreasonable prejudice involves an economic analysis of the loss of income to right holders. Thus, a single photocopy of a journal article might not unreasonably prejudice an author's interest, but multiple copies of that article distributed to a large number of people would unreasonably prejudice an author's interest and therefore be prohibited under TRIPS's standard.
The TRIPS Agreement includes specific provisions on domestic enforcement of copyright. Member must guarantee the availability of fair and equitable enforcement procedures sufficient to permit effective action against any act of infringement. These domestic enforcement actions must not be unnecessarily complicated, time-consuming or costly. Decisions on the merits must be given to the parties, with the opportunity for them to seek judicial review of administrative action and appellate review of initial judicial decisions. In addition, alleged infringers are to be guaranteed certain basic procedures designed to ensure fairness, such as written notice of claims, indemnification in the case of wrongful injunctions or other abuse of process, and a prompt hearing in the event of ex parte procedures.
The TRIPS Agreement expressly deals with the question of available remedies for a copyright infringement. These measures could be divided into provisional measures, civil remedies, criminal penalties, and measures taken at the border. Provisional measures include search and seizure of infringing copies, and evidence of infringement on a protective basis in an interlocutory proceeding. These measures have the purpose of preventing infringements from occurring and preserving relevant evidence. Civil remedies- payment of expenses and counsel fees- compensate the owner of rights for economic injury suffered because of infringement. Criminal sanctions -imprisonment and/or monetary fines- are intended to punish those who commit acts of infringement, theft, or piracy of copyright to deter further infringement. The final category of remedies is measures to be taken at the borders such as seizure. Border measures are different from other enforcement measures in that they involve actions by customs authorities at the borders, rather than by the judicial authorities.
The TRIPS Agreement is tied to the WTO dispute settlement mechanism. In the Understanding on Rules and Procedures Governing the Settlement of Disputes (DSU), the WTO provides a unified dispute resolution regime for disputes that arise under all agreements including TRIPS. The WTO dispute settlement process is efficient with strict deadlines and precisely delineated procedures extending from the moment a complaining WTO member initiates consultations with another member, to the establishment of a panel of experts to review the complaint in a more formal way, through the process of adjudication and appeal, to the formal adoption of the report of a panel or of the Appellate Body.
If WTO members do not honor their obligations under the TRIPS Agreement they could be subject to complaint(s) before WTO panels. Compared with the Berne Convention and the UCC, if a certain WTO member is found to be in violation of TRIPS it will be asked to provide legal relief and remedy; otherwise the member in question will be subject to retaliation in the form of trade sanctions (tariff increase, concession withdrawal and the like).
As of 2010, 29 intellectual property cases have arisen under the WTO dispute settlement mechanism. Of these 29 cases, 4 cases addressed copyright. Those copyright cases have been resolved either through mutually agreed solution or by a panel decision. Until now, all copyright cases, have dealt with domestic copyright legislations. In those copyright cases, the complainants claimed that the respondents' legislation lacked certain provisions that were necessary to comply with the TRIPS Agreement.
Bashar Malkawi is Associate Professor of Law, University of
Sharjah, UAE. Dr. Malkawi holds LLM in International Trade Law from
University of Arizona and SJD from American University, Washington
College of Law. He taught in the past at the Hashemite University,
Jordan. Dr. Malkawi received visiting fellowships from the Brookings
Institution, International University College of turin, and University
of Oxford.
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