Applicable law in copyright infringement cases in the...

e-Copyright Bulletin October - December 2005

DOCTRINE AND OPINIONS

APPLICABLE LAW IN COPYRIGHT INFRINGEMENT CASES IN THE DIGITAL ENVIRONMENT1

1. The only issue addressed in this paper is that of infringement of copyright, as the volume of the paper does not allow to address the issue of infringement of related rights.

2. Further, the study is limited to the question of the applicable law and does not include that of competent jurisdiction. With regard to the latter point, reference will therefore be made only to the draft convention of The Hague Conference on Private International Law on Jurisdiction, Recognition and Enforcement of Foreign Judgements in Civil and Commercial Matters2 and to the work of the American Law Institute.3

3. Furthermore, it is recognized that the discussion must cover not only conventional law (which refers, in practice, to the Berne Convention) but also general law, which applies when the situation created by the infringement of a right cannot be linked to any international instrument.

4. Lastly, it is appropriate to point out, as a methodological precaution, that private international law is a discipline in which it is often difficult to achieve certainty, and that is particularly true of the Internet, whose worldwide scope poses the traditional problem anew.

5. It is striking to note that the issue of conflict of laws, in the field of copyright, has long been neglected. An initial explanation, which must not be underestimated, is that the subject is a very complex one. It was probably also thought that the conflict of laws could be avoided through the harmonization of legislation and through the standard principle of international copyright conventions, namely the principle of assimilation of foreigners to nationals (“national treatment”). Under this principle, it is asserted, at least implicitly, that where a foreigner is allowed to enforce his or her copyright in a foreign country, only that country’s domestic law shall apply.

1 This study was drawn up at the request of the Secretariat by Mr André Lucas, Professor at the Faculty of Law

and Political Science, University of Nantes (France), for the 13th session of the Intergovernmental Copyright Committee. The opinions expressed herein are not necessarily those of the UNESCO Secretariat.

2 See the report of the Special Commission (21-27 April 2004), http://www.cptech.org/ecom/jurisdiction/minutes-apr2004/pv2.doc

3 Intellectual Property: “Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes”, Preliminary Draft No.3, February 2005. See also, for a general discussion, the Symposium on Constructing International Intellectual Property Law: The Role of National Courts, 77 Chicago-Kent Law Review 991-1412 (2002), G.B. Dinwoodie (editor).

Original: French

http://www.cptech.org/ecom/jurisdiction/minutes-apr2004/pv2.doc

http://www.cptech.org/ecom/jurisdiction/minutes-apr2004/pv2.doc


6. None of these reasons is conclusive. Private international law is admittedly a difficult science. But as the great French international law expert Batiffol4 has said, it is futile to wish to eliminate the problems of the conflict of laws on the ground that they are too complex since “reality will take upon itself the task of demonstrating that problems cannot be resolved by ignoring them if they are real problems”. As matters now stand, there is obviously too little harmonization of the substantive law to make the question of the conflict of laws totally devoid of interest. Confusion between the status of foreigners and the conflict of laws must be avoided. It is, in fact, a basic principle of private international law that the issue of enjoyment of rights by a foreigner does not take precedence over the choice of the law applicable to the substance. The purpose of national treatment is to protect authors from being subjected to discrimination because they are foreigners and not to set a rule on the conflict of laws applicable to works.

7. Attention has hitherto been focused on the already familiar question to localize copyright infringements on digital networks, with everyone taking sides in the unavoidable debate on the choice between the law of country of transmission and the laws of the different countries of reception. However, for a precise appraisal of all the difficulties raised by the digital environment (II), it will be necessary to present the general principles governing the determination of the applicable copyright law (I).

I. PRINCIPLES FOR DETERMINATION OF THE APPLICABLE COPYRIGHT LAW

8. There is no need to dwell on the natural role of the law of the forum (lex fori) regarding procedural matters and provisional measures (which play a key role in copyright protection).5 Consideration must be given, however, to two major controversies relating to the choice between the law of the country of origin and the law of the country of protection (A) and between contract law and the general law (B), respectively.

A – LAW OF THE COUNTRY OF ORIGIN AND LAW OF THE COUNTRY OF PROTECTION

9. The concepts of country of origin and country of protection have been popularized by the Berne Convention. To put is simply, the country of origin is taken to be the country where the work was published for the first time and the country of protection is the one in which the right has been infringed. No one denies that the law of the country of protection (lex loci protectionis) has a role to play. The long-running debate concerns the scope of that role, with some claiming that the initial ownership, or even the existence and the duration of the right, must remain within the jurisdiction of the law of the country of origin (lex loci originis). The elements of this debate differ according to whether the arguments are grounded on conventional law or general law.

1 – Conventional law

10. Article 5(2) of the Berne Convention establishes the principle that “the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed”.

4 Rev. crit. DIP 1971, p. 273. 5 F. Dessemontet, « Internet, le droit d’auteur et le droit international privé », SJZ 92 (1996) 285-294, at p. 289.

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The predominant opinion is that the phrase “country where protection is claimed” is to be understood as “country for which protection is claimed”.6 However, Article 5(2) is sometimes regarded as designating the lex fori. This deviation may be explained in three ways. Firstly, it is in line with an old and recurring tendency to reason as if the judge only applies domestic copyright law, a tendency that occasionally leads courts to apply lex fori without giving any reasons. Secondly, the stipulation in the text that the law of the country where protection is claimed shall govern “the means of redress afforded to the author” may, if the term “means of redress” is narrowly construed, suggest that it is the lex fori that is thereby designated. Lastly, the “short cut” is based on the statistically very frequent conjunction between the two places (the author brings an action in the court of the country in which his right has been infringed), and it was precisely for that reason that the drafters of the Berne Convention included “the extent of protection” and the “means of redress” in the same sentence.7

11. Nevertheless, such confusion must be denounced. Apart from the fact that the means of redress referred to in Article 5(2) are not exclusively judicial,8 the text, in the same breath, also places “the extent of protection” under the law of the country where the protection is claimed, which suffices to dispel any ambiguity. The factual conjunction between the lex fori and the law of the country of protection is in no way unavoidable. An author may very well institute proceedings in a court other than that of the country of infringement, for example by claiming a privilege of jurisdiction, or by applying the laws of international competence to bring action in the country in which the infringer has property. In that case, the application of the lex fori is no longer justified.

12. This interpretation has been upheld by case law in a number of countries9 and has been endorsed in the proposal for a European Community Regulation on the law applicable to non-contractual obligations (known as Rome II)10 which lays down the principle that “the law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is sought”.

13. This is also the solution deduced from the Geneva Convention of 6 September 1952, revised at Paris on 24 July 1971, known as the Universal Copyright Convention. The wording, admittedly, is less precise. Article II, in particular, is less explicit inasmuch as it lumps together the question of the status of foreigners and that of the applicable law by stating, for example, that “Published works of nationals of any Contracting State and works first published in that State shall enjoy in each other Contracting State the same protection as that other State accords to works of its nationals first published in its own territory”. The doctrine agrees however that this text does indeed contain a choice-of-law rule designating the law of the country of protection.11 At any rate, the point is beyond dispute in respect of Article IV.1, which states that “the duration of protection of a work

6 H. Desbois, A. Françon and A. Kéréver, Les conventions internationales du droit d’auteur et des droits voisins,

Paris, Dalloz, 1976, No. 137. – E. Ulmer, “Intellectual Property and Private International Law”, Study conducted at the request of the Commission of the European Communities, Studies Collections, Cultural Sector Series No. 3, Office for Official Publications of the European Communities, 1980, No. 17. – K. Spoendlin, “La protection internationale de l’auteur”, General report to the ALAI Congress for the Centenary of the Berne Convention, Translation of the original German text, p. 102.

7 A. and H.-J. Lucas, Traité de la propriété littéraire et artistique, Paris, Litec, Second edition, 2001, No. 1088. 8 K. Spoendlin, « La protection internationale de l’auteur », op. cit., p. 102. 9 See, for example, in France Cass. 1re civ., 5 March 2002: JCP G 2002, II, 10082, note H. Muir Watt. 10 COM (2003) 427 final. 11 A. and H.-J. Lucas, Traité de la propriété littéraire et artistique, op.cit., No.1129. – F. Siiriainen, « Convention

universelle sur le droit d’auteur » : Juris-Classeur Propriété littéraire et artistique, Fasc. 1935, 2002, No. 8.

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shall be governed, in accordance with the provisions of Article II and this Article, by the law of the Contracting State in which protection is claimed”.

14. Once competence of the law of the country of protection has been recognized, what is the role of the law of the country of origin? It is evident that some provisions of the Berne Convention provide that reference may be made to it in exceptional cases.12 But it is sometimes argued that one should go much further and that, as a matter of principle, law of the country of origin should determine the existence and/or ownership of the right. With regard to the existence of the right, the argument openly contradicts Article 5(2), which states that the enjoyment and the exercise of these rights “shall be independent of the existence of protection in the country of origin of the work”. With regard to ownership, Article 14bis(2)(a) expressly excludes this solution in that it stipulates that “ownership of copyright in a cinematographic work shall be a matter for legislation in the country where protection is claimed”. One may be tempted, however, to argue a contrario and thus deduce that in other cases the law of the country of origin should govern the issue of initial ownership of the right. This is the opinion defended in legal theory, which holds that Article 5(2), by subjecting “the extent of protection, as well as the means of redress afforded to the author to protect his rights” to the law of the country of protection, has taken sides only with respect to the sanction of the law.13 It seems rather difficult, however, to reconcile it with the letter of the text, since the expression “extent of protection” cannot be read literally as referring only to the consequences of infringement of the exclusive right, and even less with its spirit, since everything suggests that, although the wording is clumsy, the drafters did indeed intend to formulate a general choice-of-law rule.14

2 – General law

15. Although the purpose of the Berne Convention is to regulate most international situations, it cannot be ruled out, however, that in the absence of any connecting factor, the only applicable law is general private international law which, as everyone knows, is perforce domestic law. The issue is therefore more open, there being nothing to preclude “dissociating” the existence and/or the ownership of the right and its substantive content.

16. When the legislator does not take a stand, which is most frequently the case,15 recourse must be sought in case law. It is obviously impossible to make a complete review. It will merely be noted that in some countries the law of the country of protection regulates all copyright matters. The

12 Article 2(7) (works of applied art), 7(8) (comparison rule on the term of protection), 14bis(2)(c) (form of

agreement signed by authors with the producer of a cinematographic work) and 14ter(2) (droit de suite). In respect of the Geneva Convention, the comparison rule on the term of protection is taken up in Article IV.4, 5 and 6 only.

13 G. Koumantos, “Le droit international privé et la Convention de Berne” : Dr. auteur 1998, p. 448. – J. Ginsburg, The private international law of copyright in an era of technological change, Hague Academy of International Law, 1998, p. 99.

14 See, in the same vein, K. Spoendlin, “La protection internationale de l’auteur”, op.cit., p.108. – J.-S. Bergé, La protection internationale et communautaire du droit d’auteur, Paris, LGDJ, 1996, No. 416. – S. Plenter, Choice of Law Rules for Copyright Infringements in the Global Information Infrastructure: A Never-ending Story?, [2000] EIPR 313-320, at p. 317.

15 See, however, Article 34 of the Austrian law of 15 June 1978 (law of the State in which an act of exploitation or infringement has occured), Article 110.1 of the Swiss federal law of 18 December 1987 on private international law (“law of the State for which protection for intellectual property is claimed”), Article 67 of the Greek law of 1993 (“law of the State where the work was lawfully made accessible to the public for the first time”), Article 54 of the Italian law of 31 May 1995 (State law on the utilization of the work).

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rulings of the German Bundesgerichtshof16 and of the Hoge Raad in the Netherlands may be mentioned in this regard.17 In France, on the other hand, the so-called Iron Curtain ruling18 is partly construed in legal theory as laying down the principle that in general law the existence and initial ownership of copyright should be subject to the law of the country of origin of the work and that reference should be made to the domestic law only to determine what content is afforded protection. It is true that a decision to the contrary has been taken in a more recent ruling on the rights of performing artists.19 In the United States, it has been ruled in an Appeals Court decision that the question of whether copyright ownership is vested in the agency or the journalist should be settled by the law of the country of origin, Russian law in the case in question.20

17. Legal theory is itself divided, as is often the case in private international law.21

18. It is very difficult to take a stand. Those who support the law of the country of origin stress in particular the merit of a sole connection, so that the issue may not be decided differently under each country’s domestic law. The solution, in their opinion, is simpler, more legible and therefore more certain.

The argument would be conclusive only if the country of origin could be easily identified. This is less and less the case, as shall be seen shortly.

19. All the same, the champions of this argument are divided over the scope of the lex loci originis. Some consider that it should only determine the initial rightholder, while others advocate the idea that it should also determine the existence of a work and its original character, as well as the term of protection of the right, which does indeed seem more coherent. What is the use of looking to the country of origin for an initial rightholder who is not recognized locally? What is the point in continuing to refer to the initial rightholder in a country where the right has lapsed because the term has expired? If reference is made to the law of the country of origin for one of these questions, it must obviously be made for the others. But it is evident that the same logic may (must?) lead further. Why admit that the initial rightholder may enforce his or her exclusive right in the country of protection if the law of the country of origin, from which that right presumably derives, contains an exception that paralyses that right? In sum, everything obviously hinges on it and, in this approach, the role of the law of the country of origin is to govern all matters, which contradicts the stated objective.

20. More basically, reference to the law of the country of origin regarding certain preliminary questions, such as initial ownership, leads to the dissociation of copyright, which removes all

16 2 October 1997, Spielbankaffaire: GRUR Int. 1998, p. 427. 17 13 February 1936 and 24 February 1989, cited by M. Van Eechoud, Choice of Law in Copyright and Related

Rights, Information Law Series – 12, Kluwer, 2003, p. 110. 18 Cass. 1re civ., 22 Dec. 1959 : D. 1960, p. 93, note G. Holleaux, applying French law to the distribution in France

of a film accompanied by musical works by various Russian composers without their authorization, while pointing out that the claimants “derived from the legislation of the Soviet Union, country of origin of the disputed works, an exclusive right thereto”.

19 Cass. 1re civ., 9 Dec. 2003 : RIDA 2/2004, p. 305; JCP G 2004, II, 10133, note A. and H.-J. Lucas, expressly ruling out Belgian law, even though the performance in question had taken place in Brussels.

20 Itar-Tass Russian News Agency v Russian Kurier, Inc., 153 F.3d (2d Cir 1998). 21 For an overview, see A. Lucas, “Private international law aspects of the protection of works and of the subject

matter of related rights transmitted over digital networks”, doc. WIPO/PIL/01/1, December 2000, Nos. 41-42 and cited references.

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consistency from the issue.22 Ownership of the right is in fact indissociable from its content. For instance, what consistency can there be in a system in which rules to protect the author, defined as a natural person, were applied to a legal entity designated as the author by a foreign law? Similarly, moral rights are inseparable from economic rights and it is difficult to imagine them being governed by differing laws.23

21. The French Court of Cassation fully understood this in the Huston case,24 in which the successors in title of the American film producer John Huston invoked his moral right when they requested the prohibition in France of the distribution of the colour version of the film Asphalt Jungle, made in black and white. The Court chose to refer only to French law, thus avoiding the inconsistency of the mixed solution found by the court of appeal. The court of appeal had considered that it could grant the film producer, the copyright holder under the law of the United States of America (law of the country of origin), the moral right granted to creators under French law (law of the country of protection), effectively in defiance of both laws, since the former does not provide for moral rights and the latter does not grant moral rights to the producer!

B – LEX CONTRACTUS AND GENERAL LAW

22. Contracts for the assignment or licensing of copyright are, as all other contracts, governed by private international law. However, reference thereto does not suffice, because, first, the determination of the law applicable to contracts (the lex contractus) raises difficulties specific to the subject-matter and, secondly, contract law cannot resolve all issues. The question, in particular, is whether it should be the role of the general law25 to take into account the specific nature of the rights in issue.

1 – Determination of the law of the contract

23. It is obviously for the parties to choose the law applicable to their contract. This principle of freedom of contract, advocated by Dumoulin as early as the sixteenth century, is practically universally recognized. Its scope must be determined in reference to solutions generally accepted in private international law, including the traditional limit on the principle of free will, namely fraud in law.

24. The American Law Institute’s draft mentioned above suggests another limit which, to ensure a minimum of fairness, consists in ousting the law chosen by the parties to govern contracts that apparently have not been negotiated. More precisely, it provides that in such cases, the law chosen should be applied only if it is “reasonable”, having regard to a number of criteria, otherwise the law of the contract would be that of the country in which the “weaker” party resides. The applicable criteria would be the existence of substantial connections with the parties or with the subject-matter of the contract, the place where the weaker party is to be found, the “sophistication” of the parties and of the weaker party in particular, the accessibility and legibility of the terms of the agreement,

22 In this regard, see C. Mettraux Kauthen, La loi applicable entre droit d’auteur et droit des contrats, Etude des

rattachements en matière de droit d’auteur et de droits voisins y compris la titularité des droits, Schulthess Juristische Medien AG, Zurich, 2003, p. 46.

23 See also S. Plenter, Choice of Law Rules for Copyright Infringements in the Global Information Infrastructure, op. cit., p. 316-317, establishing a link between the requisite level of the originality (high in Germany, low in the United Kingdom) and the level of protection (high in Germany, low in the United Kingdom).

24 Cass. 1re civ., 28 May 1991 : JCP G 1991, II, 21731, note A. Françon. 25 Lex loci protectionis or lex loci originis, this conflict will not be addressed again here.

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the compatibility of the contractual stipulations with the public policy provisions of the law of the country of residence and the head office of the weaker party.26

25. In the absence of express or implicit choice by the parties, the competent law may be selected by reference to the criterion of characteristic performance, as determined, for example, by Article 4.2 of the 1980 Rome Convention on the law applicable to contractual obligations (currently being transformed into a Community regulation), which establishes the general presumption that “the contract is most closely connected with the country where the party who is to effect the performance which is characteristic of the contract has, at the time of conclusion of the contract, his habitual residence, or, in the case of a body corporate or unincorporate, its central administration”.

In line with the great German specialist Eugen Ulmer,27 the predominant doctrine holds that characteristic performance must be presumed to be effected by the assignee or licensee who undertakes a contractual obligation to perform and by the rightholder in the absence of such an obligation.28 While making no such distinction, Article 122, paragraph 1, of the Swiss federal law on private international law of 18 December 1987 lays down the principle that “contracts concerning intellectual property shall be governed by the law of the State in which the person who assigns or grants the intellectual property right has his habitual residence”.

26. The operator’s place of business is probably a more acceptable centre of gravity in all legal systems.29 Nevertheless, it may not suffice as logical grounds for a solution. The argument to the effect that the operator needs to organize his activity in line with a law he knows30 is easily rebutted since it is true that the assigning author also needs foreseeability.31 The contract indisputably aims to permit the downstream exploitation of a work, but it is doubtful whether this observation suffices for the operator to owe that duty of characteristic performance. The objection raised here is that characteristic performance should be determined in relation to the transfer of the right, without which no exploitation would be possible, and not in relation to the effects of the transfer.32 This being so, it would be natural to turn the spotlight on the obligation of the person who transmits the right even if that person’s performance is not more important than that of a professional partner in the “socio-economic” sense.33

27. In any event, the determination of the law of the contract can be disrupted by the traditional remedial mechanism of mandatory rules. Examples are the ruling by the French Court of Cassation in the above-mentioned Huston case, in which French law on the author’s moral right was held to “apply perforce”, and the German law of 22 March 2002 which expressly states that the new

26 For a detailed analysis of these criteria, see F. Dessemontet, “Copyright contracts and choice of law”, in

Urheberrecht im Informationszeitalter, Festschrift für Wilhelm Nordemann, Munich, C.H. Beck, 2004, pp. 415-427, at pp. 420 et seq.

27 “Intellectual Property and Private International Law”, op. cit., No. 76-77. 28 H. Desbois, Le droit d’auteur en France, Paris, Dalloz, Third edition, 1978, No. 791 bis. – T. Dreier, in

Copyright in Cyberspace, Amsterdam, Otto Cramwinckel, 1997, p. 301. – J. Raynard, Droit d’auteur et conflits de lois, Paris, Litec, Bibliothèque de droit de l’entreprise, 1990, No. 651 et seq.

29 See in this regard J. C. Ginsburg, “Private international law aspects of the protection of works and objects of related rights transmitted through digital networks”, Doc. WIPO GCPIC/2, 30 Nov. 1998, p. 32.

30 M. Walter, « La liberté contractuelle dans le domaine du droit d’auteur et les conflits de lois » : RIDA 1/1976, pp. 44-87, at p. 61. – J. Raynard, Droit d’auteur et conflits de lois, op. cit., No. 653.

31 T. Azzi, « Recherche sur la loi applicable aux droits voisins du droit d’auteur en droit international privé », Paris, LGDJ, 2005, No. 598.

32 T. Azzi, op. cit., No. 596. – F. Dessemontet, Le droit d’auteur, Lausanne, CEDIDAC, 1999, No. 1088. 33 M. van Eechoud, Choice of Law in Copyright and Related Rights, op. cit., p. 198.

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provisions designed to guarantee authors fair remuneration shall apply mandatorily “(1) when, in the absence of a choice by the parties, German law would be applicable to the contract for the exploitation of the work, or (2) inasmuch as the contract relates to substantial acts of exploitation within the territory to which this law applies”.34

2 – Scope of the law of the contract

28. It would be misleading to believe that the law of the contract will somehow prevent all cases of conflict of laws. The fact is that even where worldwide rights have been acquired all at once, the operator still has to allow for the various domestic laws applicable to the right, in respect of all matters that are not governed by the law of the contract.

29. The question of the scope of the law applicable to the contract for the exploitation of a protected work then does indeed arise. Of course, in practice, the law of the contract and the law applicable to the right (general law) sometimes coincide, but this convergence may not be the rule, and so it must be decided which aspects come under which law.

It goes without saying that the law of the contract cannot pretend to govern the conditions of access to protection or the content of the right. It will thus be deduced, for instance, that the duration of protection or the exceptions must come within the scope of the general law and not the law of the contract. Conversely, the law of the contract indisputably governs the conditions of contract formation and the parties’ personal obligations. It alone, in particular, should be examined to find out how to interpret the contract or determine the mode of remuneration (proportional or a lump sum).35

30. As for the rest, the field is in a state of flux. For instance, in line with Ulmer,36 the dominant doctrine holds that the assignability of a right (or part of a right)37 by nature inheres in and therefore must be governed by the applicable general law.38 This is the view expressed in the draft of the American Law Institute. The proposition is justified by the idea that unassignable rights are in a way withdrawn from legal trade, which seems to relate indeed to their status. One may nevertheless be less sure about its scope. It is indisputable that it can be applied to the inalienability of the moral right and resale right.39 Conversely, the issue is more difficult in regard to the rules governing the assignment of rights in future works. Following the logic of his theory, Ulmer considers that they come under the general law, as he has clearly established the principle that “the limits placed on the assignment and granting of rights by the protecting country may also be seen as limits on the obligations that may be undertaken in copyright contracts”.40 However, it is tempting to reply that the rights are not unassignable unless the general law prohibits as a matter of principle any assignment relating to a future work, which is not generally the case.

34 On this provision, see A. Dietz, Amendment of German Copyright Law in Order to Strengthen the Contractual

Position of Authors and Performers, 33 IIC (2002) 828-842, to p. 840. 35 E. Ulmer, “Intellectual Property and Private International Law”, op. cit., No. 81-82 – H. Desbois, Le droit

d’auteur en France, op.cit., No. 791 bis. 36 Op. cit., No. 68. 37 For instance, the moral right in dualist systems. 38 J. Raynard, Droit d’auteur et conflit de lois, op. cit., No. 673. – G. Koumantos, in Copyright in cyberspace, op.

cit., p. 263 – N. Bouche, Le principe de territorialité de la propriété intellectuelle, Paris, Ed. L’Harmattan, 2002, No. 834.

39 E. Ulmer, op. cit., No. 70. 40 Ibid.

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31. There may also be doubts over the formal requirements of assignments, and this does have a bearing on matters of substance, since the primary aim is to inform the assignor, who may then opt for the general law. The French Court of Cassation41 has handed down a decision in that sense regarding the performing artist’s neighbouring right (but it is hard to see what precludes its application in copyright). This decision may be likened to the decision handed down by the United States Court of Appeal (Second Circuit) in 1993,42 applying American law in regard to the formal requirements for the renewal of a Brazilian author’s copyright.

II. APPLICATION TO A DIGITAL ENVIRONMENT

32. The great merit of the Internet, is that, after the satellites, it has again put the spotlight on the international aspects of copyright that had been neglected too long time, by transcending the overcautious territorialism inherited from the royal tradition of privileges. It must be borne in mind, however, that digital networks are mainly premised on old questions that have been poorly resolved or not resolved at all, which makes it necessary not to yield too readily to the temptation to believe that the system must be rethought completely on that account.

33. The digital environment does not call into question what has been already said about the law of the contract, it only reveals the key role which it has to play in conjunction with the technical protection measures, which makes it necessary to eliminate the ambiguities detailed above.43 The digital environment may, however, renew the controversy about the law of the country of origin, which is more difficult to determine and whose role is less easy to justify (A). Above all, it raises a problem that is crucial to the effectiveness of protection, namely the localization of copyright infringement (B).

A – IDENTIFICATION AND JUSTIFICATION OF THE ROLE OF THE LAW OF THE COUNTRY OF ORIGIN

34. As stated above, those who argue in favour of the law of the country of origin specifically highlight the practical advantages of such a connection and defend its relevance on the ground that the first publication of the work is a key moment that is natural to take into account when “localizing” the situation.

35. The question arises of whether these two arguments do not fail when the work is communicated for the first time on digital networks.

36. Firstly, the simplicity of the connecting factor has not been proven. The definition of the country of origin in the Berne Convention is one of redoubtable complexity and, more seriously in regard to the security expected therefrom, inherent instability, and this has been obvious since 1971 (the country of origin is not the same before and after publication, but may also vary according to the nationality and even the place of residence of the person concerned!). These difficulties are

41 Cass. 1st Civ., 9 December 2003, op.cit. 42 Corvocado Music Corp. v. Hollis Music, Inc., 981 F.2d 679. 43 See, for the suggestion that the modernization of the 1980 Rome Convention should be used as an opportunity to

insert specific private international law measures concerning contractual copyright, L. Guibault and P.B. Hugenholtz, “Study on the Conditions Applicable to Contracts Relating to Intellectual Property in the European Union”, study commissioned by the European Commission, Institute for Information Law, Amsterdam, May 2002, p. 150.

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intensified in the digital environment.44 Reliance on publication within the meaning of Article 3.3 of the Berne Convention (manufacture of copies in sufficient number “to satisfy the reasonable requirements of the public” is hardly satisfactory.45 The analysis in fact leads to the conclusion that simply making a work available through digital networks, which will increasingly be the rule in future, does not amount to publication.46

37. To avoid this conclusion which is difficult for mere mortals to understand,47 consideration may of course be given to broadening the definition of publication as to encompass disclosure through a network. However, as this “clean-up” will also mean revising the Berne Convention, it will also be necessary to determine the location of such disclosure. The uploading site, which is open to all sorts of manipulation, does not afford sufficient security. It is more tempting to designate the place of business of the operator responsible for the site.48 However the Internet is not a structured network and the location of operators, which may be very small, is more difficult on the Internet. There remains the author’s domicile or residence.49 This solution, however, is not easy to apply when, as is very frequently the case (in audiovisual works, for example), there are several authors.50

38. Such uncertainties, to say the least, do not militate in favour of the law of the country of origin and the user, a potential infringer, will find it very hard to make sense of it all.51

39. Besides, it is the very principle of recourse to the law of the country of origin that is debatable in the digital environment. The temptation to have recourse to it rests on the assumption that the choice of place of publication reflects the author’s wish to “naturalize” his or her work. This reasoning does not work for the Internet. Publishing a work for the first time in a given country (possibly in a given language) may be interpreted as wishing to create a link with that country. Going onto the network to find an undifferentiated audience may no longer have that meaning. The objection also holds good for the contention that the place of origin is identified “with the place where the work acquired for the first time a social dimension, that is to say the place where it found an audience for the first time”.52

40. As a fall-back solution, the author’s or operator’s place of residence or business, is a complete break with this traditional logic, but it provides no other ground for justifying the connection suggested. With regard to the operator responsible for the website, it moreover openly contradicts the personalistic dimension of copyright.

44 A. Cruquenaire, « La loi applicable au droit d’auteur : état de la question et perspectives », Auteurs & Média

2000, pp. 210-227, at page 215. 45 See, however, J.-S. Bergé, La protection internationale et communautaire du droit d’auteur, op. cit., No. 279. 46 See for a contrary opinion, J. Ginsburg, The private international law of copyright in an era of technological

change, op. cit., p.18. 47 D. Nimmer, “Brains and Other Paraphernalia of the Digital Age”, 10 Harvard Journal of Law and Technology

1-46 (1996), at page 15. 48 J. Ginsburg, private international law of copyright in an era of technological change, op. cit., p.18. 49 See in this regard, as an alternative criterion, J. Ginsburg, eod.loc. 50 Compare J. Ginsburg, eod. loc., who proposes in this instance selecting the country in which the largest number

of authors reside. 51 S. Plenter, Choice of Law Rules for Copyright Infringements in the Global Information Infrastructure, op. cit.,

p.316. 52 J.-S. Bergé, La protection internationale et communautaire du droit d’auteur, op. cit., No. 270.

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41. It is true, though, that on the other hand the worldwide scale of the Internet does raise doubts as to the possibility of applying the laws of each country of protection on a distributive basis.

B – LOCALIZATION OF COPYRIGHT INFRINGEMENT

42. The phenomenon of the explosion of the lex loci delicti is well-known to international law experts, and is not wholly new to intellectual property specialists, who have already had to use their sagacity in regard to satellites. There is however a difference in the degree of the problem, and maybe in the nature as well. What is at stake is no longer the archer’s arrow crossing a border or the satellite transmission to several countries simultaneously, but a dissemination capable of causing harm in every country of the world and regulated by highly differing laws. The change must therefore not be underestimated. It is true that the other extreme must also be avoided. The contention that the dematerialization inherent in digital technology renders any territorial connection obsolete does not stand up to scrutiny. To give but one example, making works available on digital networks presupposes, in the current state of the art, that a fixation of the work has been made beforehand. This fixation unquestionably constitutes an act of reproduction that can be localized in the same way as the manufacturing of copies.53

43. The controversy is between those in favour of what is commonly known as the law of the country of transmission and those who argue for the application of what is commonly known as the laws of the countries of reception, it being understood that in the latter case the plural (the laws of the countries of reception) is necessary since it is in the very nature of digital networks to disseminate worldwide. Both theories rest on solid arguments. Compromise solutions may, however, be envisaged.

1 – Law of the country of transmission and laws of the countries of reception

44. The initial, technical, approach is to identify the country of transmission on the basis of the actual definition of communication to the public or, in those legal systems in which it is a particular right, that of making works available to the public, as set out in the 1996 WIPO treaties. The reasoning is straightforward: since the exclusive right is exercised as soon as the work is made available, the act of infringement must be deemed to have occurred in the place where it took place. Those in favour of the law of the country of transmission, understood in this sense, maintain that only that law may govern the questions left to the lex loci protectionis.

45. Those who support the application of the different laws of the countries of reception contend that in the field of copyright, all acts of exploitation are targeted at an audience and that it is therefore natural to localize the centre of gravity of a given exploitation on the basis of that target. They maintain that this analysis is all the more justified in the case of exploitation through digital networks as there is an active “consumer” who takes the initiative in each use made of the network, which is not the case, for instance, in satellite broadcasting. Above all, they object that the exclusive application of the law of the country of transmission on the basis of technical localization permits all sorts of manipulations. The issue actually at stake is the risk of delocalization to countries of transmission with a lower level of protection, a very real risk given the significant differences between national laws, particularly in regard to exceptions to the exclusive rights, and the great ease with which the uploading site can be manipulated in digital networks.

53 P. Schønnig, Applicable law in transfrontier on-line transmissions, RIDA, October 1996, pp. 21-53, at page 29.

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46. This objection is sufficiently serious to cause most supporters of the law of the country of transmission to change tack and opt, not for the place of material uploading onto the network, but for the place of business of the person responsible for dissemination, which is less open to manipulation and also has the advantage of being easier to identify.

47. The stability of this connection certainly makes it more attractive. However, it does not conjure away completely the danger of manipulation and furthermore it must be recalled that works on digital networks are not usually circulated by genuine professional operators, and this will no doubt become less and less the case, which calls into question the relevance of the approach and in any event complicates implementation of the rule.

48. Most importantly, the debate then shifts from the field of legal technicalities to that of advisability. The arguments are all well-known. Those who argue in favour of the law of the country of transmission highlight the legal security of the distributor, maintaining that the distributor may not be bound to respect practically all the laws in the world, which would be the case if the differing laws of the countries of reception were applied. Those who support the latter system respond that it is completely arbitrary to prefer the legal security of the distributor to that of the rightholder and that if the solution can only be achieved by choosing a single law, then the law of the place of residence of the rightholder54 (or the collective management society to which the rightholder belongs, easier to find out for the distributor) could be an equally workable solution. In this sense, the traditional territoriality of criminal law, which is closely linked to the civil law provisions related to copyright, also comes into play, as does the fact that the exclusive application of the law of the country in which the person responsible for the transmission is established would enable that person to export that law throughout the world, which is hard to accept for States that are jealous of their sovereignty, for they know well that the system would favour developed countries where the distributors will in most instances be located.

49. These arguments seem well-balanced. This means that the choice that tips the scales one way or the other is indeed political (in the broad sense).

The circumspection of courts, a striking example of which is provided by a decision of the Supreme Court of Canada handed down on 30 June 2004 in Society of Composers, Authors and Music Publishers of Canada v. Canadian Association of Internet Providers, is therefore understandable.55 At issue was whether these intermediaries’ activities gave rise to royalty entitlements when they concerned musical works downloaded from Canada from a server located in another country. The Supreme Court, in a judgement delivered by Judge Binnie, considered that the criterion requiring the existence of a communication in Canada to be dependent on the location of the server in Canada was “too rigid and mechanical”. It considered that “the applicability of the Copyright Act to communications that have international participants will depend on whether there is a sufficient connection between this country and the communication in question”.56 In this perspective, the place of reception may be a connecting factor that is as important as the place of origin (not to mention the physical location of the host server, which may be in a third country)”.57 For Internet communications, “relevant connecting factors would include the situs of the content provider, the

54 F. Dessemontet, Internet, la propriété intellectuelle et le droit international privé, in Internet, Quel tribunal

décide? Quel droit s’applique? K. Boele-Woelki and C. Kessedjian (eds), Kluwer Law International, 1998, pp. 47-64, at page 60.

55 2004 CSC 45. 56 No. 57. 57 No. 59.

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host server, the intermediaries and the end user”, it being specified that “the weight to be given to any particular factor will vary with the circumstances and the nature of the dispute”.58 It must be acknowledged that the avenues thus opened up are still too vague to provide operators with the security to which they legitimately aspire.

2 – Compromise solutions

50. From the point of view of method, the comparative advantages and disadvantages of objective localization based on abstract criteria and the search for a “proper law” most closely related to the situation in point must be weighed. The first approach takes better account of the requirement of foreseeability (and legibility) that is essential in a digital environment, while the second has the advantage of flexibility, which no doubt accounts for its current success. Maybe one compromise solution is to designate the law that is presumed to be the most appropriate, leaving it to the parties to rebut that presumption by demonstrating the existence of other connecting factors.

51. With regard to substance, we can envisage remedies of limited scope through alternative or cumulative connecting factors: for instance, supporters of the law of the country of transmission would say that that law should be set aside if it does not provide sufficient protection, and the partisans of the laws of the countries of reception would say that the law in question should be disregarded if it cannot reasonably be foreseen by the operator.

52. The first remedy is attractive to all those for whom the only problem with the law of the country of transmission is the risk of delocalization. What matters is knowledge of the level at which the requirement should be placed. If it is considered that the test will be met merely by ascertaining that the country of transmission is a signatory to the TRIPS Agreement and the 1996 WIPO treaties,59 connection in favorem auctoris has no real scope and the guarantee for the authors is illusory, as so little harmonization has been achieved by these international instruments in the field of the substantive law, particularly with regard to copyright exceptions.

53. There are precedents for the second remedy in other fields,60 and if it is used, it will no doubt show that national copyright laws are less diverse than is often intimated. It will be criticized, however, for not being able to allay operator’s concern at the prospect of the application of the law of each country of reception. In any event, it would be too much to require that the successful outcome of the action be conditional on the act being also illegal under the law of the country of transmission, as was required in English law on civil liability before it was changed.

58 No. 61. 59 See, in this regard, I. Garrote Fernández-Díez, Copyright on the internet, Editorial Comares, Colección Estudios

de Derecho Privado, Granada, 2001, p. 137. P. Raynaud, Droit d’auteur, droit international privé et Internet, Thesis, Strasbourg III, 2002, No. 695.

60 See Article 7 of the 1973 Hague Convention on the Law Applicable to Products Liability, which sets aside the law normally applicable “the person claimed to be liable establishes that he could not reasonably have foreseen that the product or his own products of the same type would be made available in that State through commercial channels”. See also Article 139 of the Swiss federal law of 18 December 1987 on international private law (“… insofar as the author of the damage should have expected that the result would occur in that State”). By transposition to the field of copyright, a law that challenged the principle of any derogation to the exclusive right or which extended the term of protection beyond the limits usually provided, for instance, could be set aside.

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54. Generally, multiple connecting factors are difficult to manage,61 a failing that is particularly troublesome in the digital environment in which the legibility of the rule is a major requirement both for operators and rightholders, which make it difficult to devise models.

55. Perhaps “jurisdictional localization”, which involves linking legislative competence and jurisdictional competence, should not be too readily ruled out. Take for example the judgment of the Court of Justice of the European Communities in the Fiona Shevill62 case, when it ruled that the victim of a libel (by a newspaper article distributed in several Contracting States) may bring an action for damages against the publisher “either before the courts of the Contracting State of the place where the publisher of the defamatory publication is established, which have jurisdiction to award damages for all the harm caused by the defamation, or before the courts of each Contracting State in which the publication was distributed and where the victim claims to have suffered injury to his reputation, which have jurisdiction to rule solely in respect of the harm caused in the State of the court seized”. It can be deduced from this case that each competent forum court will apply its own material law. This solution has all the practical advantages of a compromise. It obviously also has the failing, which many internationalists would consider determinative, of mixing issues (jurisdictional competence and legislative competence) that are not governed by the same logic. In addition, it gives worldwide scope to the law of the country of transmission, which may prove problematic if that country offers only a low level of protection.

56. Another compromise solution would be to exclude the competence of countries of reception that are not “targeted” by the transmitter.63 It would be a response to the objection that it is impossible to require operators to comply with all the laws in the world. However, the criterion of “targeting” is very difficult to apply other than in borderline cases in which a literary work is disseminated in a little-used language. The fact is that, for musical and cinematographic works in particular, language is less and less a factor in market segmentation. More fundamentally, it is difficult to accept that the criterion of principal destination of the exploitation of a work would result in operators being absolved of any responsibility for all of their activities that are incidental in nature. At the most, it might be considered that if the exploitation in a given country does not exceed a “threshold of sensitivity” within the meaning of competition law, the applicable rules should not be those of that country but those of the country of principal exploitation. Under this system, it would be for the judge to decide on a case-by-case basis whether the exploitation is significant or not, taking into account various criteria such as the operator’s strategy, agreed investments and the share of the turnover. It would also be for the judge to decide which is the principal country of exploitation whose law should be applied by default, this being understood that if, in a given country, exploitation is really minimal, it would be possible for the judge, as is currently the case, to hold that there has been no prejudice, thus obviating the need to determine which law is applicable.

57. All these avenues, and many others, warrant further investigation. However, it is worth reiterating that a standard law of conflict will be developed only when States realize that it is necessary.

61 M. Vivant, Cybermonde: « Droit et droits des réseaux », JCP G, 1996, I, 3969, No. 10. 62 7 March 1995: Rec. p.I-450. 63 See in this connection, regarding jurisdictional competence, TGI Paris, 11 February and 11 March 2003: JDI

2004, p.491, note crit. J.-S. Bergé.

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LEGAL DEVELOPMENTS

CASE LAW

UNITED STATES OF AMERICA

SUPREME COURT OF THE UNITED STATES

Copyright Infringement — Secondary Liability — Distribution of a product capable of both lawful and unlawful use — Inducement of Infringement The question is under what circumstances the distributor of a product capable of both lawful and unlawful use is liable for acts of copyright infringement by third parties using the product. We hold that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties. Decision of the Supreme Court of the United States, 27 June 2005 (Excerpts taken from the decision of the Supreme Court of the United States of America - Headlines and footnotes are added by UNESCO). Metro-Goldwin-Mayer Studios Inc. et al. v. Grokster, Ltd. et al.380 F. 3d 1154 Facts Respondents, Grokster and StreamCast Networks, distribute free software that allows computer users to share electronic files through peer-to-peer networks, so called because users’ computers communicate directly with each other, not through central servers. Users of those networks include individual recipients of Respondents’ software, and although the networks can be used to share any type of digital file, they have prominently employed those networks in sharing copyrighted music and video files without authorization. A group of copyright holders (MGM for short, but including motion picture studios, recording companies, songwriters, and music publishers) sued Respondents for their users’ copyright infringements, alleging that they knowingly and intentionally distributed their software to

Original: English

http://straylight.law.cornell.edu/supct/html/04-480.ZO.html


enable users to reproduce and distribute the copyrighted works in violation of the Copyright Act. MGM sought damages and an injunction. Discovery during the litigation revealed the way the software worked. A user who installs the software may send requests for files directly to the computers of others using compatible software. The search results are communicated to the requesting computer, and the user can download desired files directly from peers’ computers. Although Respondents do not therefore know when particular files are copied, a few searches using their software would show what is available on the networks. Nearly 90% of the files available for download on the system were copyrighted works. Respondents argue that potential noninfringing uses of their software are significant in kind, even if infrequent in practice. But MGM’s evidence gives reason to think that the vast majority of users’ downloads are acts of infringement, and because well over 100 million copies of the software in question are known to have been downloaded, and billions of files are shared each month, the probable scope of copyright infringement is staggering. Respondents concede the infringement in most downloads. Respondents are not merely passive recipients of information about infringing use. The record is replete with evidence that Respondents clearly voiced the objective that recipients use the software to download copyrighted works, and each took active steps to encourage infringement. Evidence indicates that it was always StreamCast’s intent to use its software to be able to capture email addresses of its initial target market. The evidence that Grokster sought to capture the market of former Napster users is sparser but revealing. The point, of course, would be to attract users of a mind to infringe, just as it would be with their promotional materials developed showing copyrighted songs as examples of the kinds of files available. In addition to this evidence of express promotion, marketing, and intent to promote further, the business models confirm that Respondents’ principal object was use of their software to download copyrighted works. Respondents receive no revenue from users. Instead, they generate income by selling advertising space, and they stream the advertising to users. The evidence shows that substantive volume is a function of free access to copyrighted work. Finally, there is no evidence that either company made an effort to filter copyrighted material from users’ downloads or otherwise impede the sharing of copyrighted files. Prior Proceedings After discovery, the parties on each side of the case cross-moved for summary judgment.1

First instance The District Court held that those who used the software to download copyrighted media files directly infringed MGM’s copyrights, a conclusion not contested on appeal, but the court nonetheless granted summary judgment in favor of Respondents as to any liability arising

1 Summary judgment is a judgment awarded by the court prior to trial, effectively holding that no trial will be necessary.

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from distribution of the software. Distributing that software gave rise to no liability because its use did not provide the distributors with actual knowledge of specific acts of infringement.

Appeal The Court of Appeals affirmed. A defendant was liable as a contributory infringer when it had knowledge of direct infringement and materially contributed to the infringement. But the court read Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), as holding that distribution of a commercial product capable of substantial noninfringing uses could not give rise to contributory liability for infringement unless the distributor had actual knowledge of specific instances of infringement and failed to act on that knowledge. The fact that the software was capable of substantial noninfringing uses meant that Respondents were not liable, because they had no such knowledge, owing to the decentralized architecture of their software. The court also held that Respondents did not materially contribute because it was the users who searched for, retrieved, and stored the infringing files, with no involvement by the defendants beyond providing the software. The Ninth Circuit2 also considered whether Respondents could be liable under a theory of vicarious infringement. The court held against it because the defendants did not monitor or control the use of the software, had no agreed-upon right or current ability to supervise its use, and had no independent duty to police infringement. Opinion Values at Stake Plaintiffs fault the Court of Appeals’s holding for upsetting a sound balance between the respective values of supporting creative pursuits through copyright protection and promoting innovation in new communication technologies by limiting the incidence of liability for copyright infringement. The tension between the two values is the subject of this case, with its claim that digital distribution of copyrighted material threatens copyright holders as never before, because every copy is identical to the original, copying is easy, and many people (especially the young) use file-sharing software to download copyrighted works. Indirect Liability Theory The argument for imposing indirect liability is powerful, given the number of infringing downloads that occur every day using the software. When a widely shared service or product is used to commit infringement, it may be impossible to enforce rights effectively against all direct infringers, the only practical alternative being to go against the distributor of the copying device for secondary liability on a theory of contributory or vicarious infringement. One infringes contributorily by intentionally inducing or encouraging direct infringement, and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.

2 The Ninth Circuit is the Court of appeals in charge of hearing cases from most Western States, including California.

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http://www.law.cornell.edu/supct-cgi/get-us-cite?464+417


The Sony Precedent In Sony Corp. v. Universal City Studios, this Court addressed a claim that secondary liability for infringement can arise from the very distribution of a commercial product. There, the product was the videocassette recorder (VCR). Copyright holders sued Sony as the manufacturer, claiming it was contributorily liable for infringement that occurred when VCR owners taped copyrighted programs because it supplied the means used to infringe, and it had constructive knowledge that infringement would occur. There was no evidence that Sony had expressed an object of bringing about taping in violation of copyright or had taken active steps to increase its profits from unlawful taping. With no evidence of stated or indicated intent to promote infringing uses, the only conceivable basis for imposing liability was on a theory of contributory infringement arising from its sale of VCRs to consumers with knowledge that some would use them to infringe. But because the VCR was “capable of commercially significant noninfringing uses,” we held the manufacturer could not be faulted solely on the basis of its distribution.

Significant noninfringing uses The parties in this case think the key to resolving it is the Sony rule and what it means for a product to be “capable of commercially significant noninfringing uses.” MGM advances the argument that granting summary judgment to Respondents as to their current activities gave too much weight to the value of innovative technology, and too little to the copyrights infringed. Respondents reply by citing evidence that their software can be used to reproduce public domain works, and they point to copyright holders who actually encourage copying. The Court of Appeals has read Sony’s limitation to mean that whenever a product is capable of substantial lawful use, the producer can never be held contributorily liable for third parties’ infringing use of it. Because the Circuit found the software capable of substantial lawful use, it concluded that neither company could be held liable, since there was no showing that their software, being without any central server, afforded them knowledge of specific unlawful uses. This view of Sony, however, was error, converting the case from one about liability resting on imputed intent to one about liability on any theory. Because Sony did not displace other theories of secondary liability, and because we find below that it was error to grant summary judgment to the companies on MGM’s inducement claim, we do not revisit Sony further, as MGM requests, to add a more quantified description of the point of balance between protection and commerce when liability rests solely on distribution with knowledge that unlawful use will occur. Sony’s rule limits imputing culpable intent as a matter of law from the characteristics or uses of a distributed product. But nothing in Sony requires courts to ignore evidence of intent if there is such evidence, and the case was never meant to foreclose rules of fault-based liability derived from the common law.

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Inducement The classic case of direct evidence of unlawful purpose occurs when one induces commission of infringement by another, or entices or persuades another to infringe, as by advertising. One who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties. The inducement rule premises liability on purposeful, culpable expression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise. The only apparent question about treating MGM’s evidence as sufficient to withstand summary judgment under the theory of inducement goes to the need on MGM’s part to adduce evidence that Respondents communicated an inducing message to their users. Here, the summary judgment record is replete with other evidence that Respondents, unlike the manufacturer and distributor in Sony, acted with a purpose to cause copyright violations by use of software suitable for illegal use. Three features of this evidence of intent are particularly notable. First, each company showed itself to be aiming to satisfy a known source of demand for copyright infringement, the market comprising former Napster users. Second, neither company attempted to develop filtering tools or other mechanisms to diminish the infringing activity. Third, it is useful to recall that Respondents make money by selling advertising space, by directing ads to the screens of computers employing their software. This evidence alone would not justify an inference of unlawful intent, but viewed in the context of the entire record its import is clear. In addition to intent to bring about infringement and distribution of a device suitable for infringing use, the inducement theory of course requires evidence of actual infringement. There is evidence of infringement on a gigantic scale. There is no question that the summary judgment evidence is at least adequate to entitle MGM to go forward with claims for damages and equitable relief. In sum, this case is significantly different from Sony and reliance on that case to rule in favor of Respondents was error. MGM’s evidence in this case most obviously addresses a different basis of liability for distributing a product open to alternative uses. Here, evidence of the distributors’ words and deeds going beyond distribution as such shows a purpose to cause and profit from third-party acts of copyright infringement. If liability for inducing infringement is ultimately found, it will not be on the basis of presuming or imputing fault, but from inferring a patently illegal objective from statements and actions showing what that objective was. There is substantial evidence in MGM’s favor on all elements of inducement, and summary judgment in favor of Respondents was error. On remand,3 reconsideration of MGM’s motion for summary judgment will be in order. The judgment of the Court of Appeals is vacated, and the case is remanded for further proceedings consistent with this opinion. 3 To remand means to send a dispute back to the court where it was originally heard. Usually it is an appellate court that remands a case for proceedings in the trial court consistent with the appellate court's ruling.

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LEGAL DEVELOPMENTS

CASE LAW

CANADA

FEDERAL COURT OF APPEAL OF CANADA

Right to Privacy—Copyright Infringement […] the issue is whether the identity of persons who are alleged to infringe musical copyright can be revealed despite the fact that their right to privacy may be violated. […] Thus, […] in cases where plaintiffs show that they have a bona fide claim that unknown persons are infringing their copyright, they have a right to have the identity revealed for the purpose of bringing action. However, caution must be exercised by the courts in ordering such disclosure, to make sure that privacy rights are invaded in the most minimal way. Decision of the Federal Court of Appeal, Richard C.J., Noël and Sexton JJ.A.--Toronto, April 20, 21; Ottawa, May 19, 2005 (Excerpts taken from the summary of the decision by the Federal Court of Appeal) BMG Canada Inc. et al. v. John Doe et al 2005 FCA 193 This case illustrates the tension existing between the privacy rights of those who use the Internet and those whose rights may be infringed or abused by anonymous Internet users. The potential for unwarranted intrusion into individual personal lives is now unparalleled. Privacy advocates maintain that if privacy is to be sacrificed, there must be a strong prima facie case against the individuals whose names are going to be released. Ultimately the issue is whether the identity of persons who are alleged to infringe musical copyright can be revealed despite the fact that their right to privacy may be violated. The plaintiffs consist of the largest musical providers in Canada and claim to collectively own the Canadian copyrights in more than 80% of the sound recordings sold to the public in Canada. The plaintiffs claim that 29 internet users have each downloaded more than 1000 songs over which the plaintiffs have copyright onto their home computers and, by means of what is called a “peer-to-peer” (P2P) file sharing program, are infringing the plaintiffs’ copyright by providing access to their files, thus reproducing or distributing the plaintiffs’ Songs to countless other Internet users. The respondents are ISPs who administer the 29 IP addresses. The plaintiffs are unable to determine the name, address or telephone number of any of the 29 internet users in question as they operate under pseudonyms The plaintiffs wish to pursue


litigation against these 29 individuals but being unaware of their identities, they commenced this action against “John Doe, Jane Doe and all those persons who are infringing copyright in the plaintiffs’ sound recordings” and then brought this motion before the Federal Court to identify these 29 individuals. The motion was dismissed by the Federal Court. The Motions Judge held that there was no clear evidence that the requisite relationship between the IP addresses and the pseudonyms had been established. The reasons of the Motions Judge address such matters as the appropriate procedure necessary to obtain the identities of the users, the proper test to be applied by the Court in granting orders compelling disclosure of the identities, and vital copyright infringement issues. I am of the view that the proper test is whether the plaintiff has a bona fide claim against the proposed defendant. ISPs are not entitled to “voluntarily” disclose personal information such as the identities requested except with the customer’s consent or pursuant to a court order. Privacy rights are significant and they must be protected. The delicate balance between privacy interests and public interest has always been a concern of the court where confidential information is sought to be revealed. Intellectual property laws originated in order to protect the promulgation of ideas. Copyright law is designed to ensure that ideas are expressed and developed instead of remaining dormant. Modern technology such as the Internet has provided extraordinary benefits for society, which include faster and more efficient means of communication to wider audiences. This technology must not be allowed to obliterate those personal property rights which society has deemed important. Although privacy concerns must also be considered, it seems to me that they must yield to public concerns for the protection of intellectual property rights in situations where infringement threatens to erode those rights. Thus, in my view, in cases where plaintiffs show that they have a bona fide claim that unknown persons are infringing their copyright, they have a right to have the identity revealed for the purpose of bringing action. However, caution must be exercised by the courts in ordering such disclosure, to make sure that privacy rights are invaded in the most minimal way. If there is a lengthy delay between the time the request for the identities is made by the plaintiffs and the time the plaintiffs collect their information, there is a risk that the information as to identity may be inaccurate. Thus the greatest care should be taken to avoid delay between the investigation and the request for information. Failure to take such care might well justify a court in refusing to make a disclosure order. Plaintiffs should be careful not to extract private information unrelated to copyright infringement, in their investigation. This would be an unjustified intrusion into the rights of the user. In the result, the appeal will be dismissed without prejudice to the plaintiffs’ right to commence a further application for disclosure of the identity of the “users” taking into account these reasons.

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e-Copyrright Bulletin October - December 2005

Source

UNESCO ACTIVITIES

GENERAL CONFERENCE ADOPTS CONVENTION ON THE PROTECTION AND PROMOTION OF THE DIVERSITY

OF CULTURAL EXPRESSIONS

The General Conference of UNESCO, meeting in Paris from October 3 to October 21, approved on 20 October (148 votes for, two against, four abstentions) the Convention on the protection and promotion of the diversity of cultural expressions*, an international normative instrument that will enter into force three months after its ratification by 30 States. The Convention which is the result of a long process of maturation and two years of intense negotiations, punctuated by numerous meetings of independent and then governmental experts, reinforces the idea already included in the UNESCO Universal Declaration on Cultural Diversity**, adopted in 2001, that cultural diversity must be considered as a “common heritage of humanity”, and its “defence as an ethical imperative, inseparable from respect for human dignity.” In 2003, Member States requested the Organization to pursue its normative action to defend human creativity, a vital component of the Declaration, as explained in Articles eight and eleven. The Convention seeks to reaffirm the links between culture, development and dialogue and to create an innovative platform for international cultural cooperation; to this end, it reaffirms the sovereign right of States to elaborate cultural policies with a view “to protect and promote the diversity of cultural expressions” and “to create the conditions for cultures to flourish and to freely interact in a mutually beneficial manner” (Article 1). At the same time, a series of Guiding Principles (Article 2) guarantees that all measures aimed at protecting and promoting the diversity of cultural expressions does not hinder respect for human rights and fundamental freedoms “such as freedom of expression, information and communication, as well as the ability of individuals to choose (them)…”. As well, the “Principle of openness and balance” ensures that when States adopt measures in favour of the diversity of cultural expressions “they should seek to promote, in an appropriate manner, openness to other cultures of the world”. The rights and obligations of Parties (Articles 5 to 11) include a series of policies and measures aimed at protecting and promoting the diversity of cultural expressions, approaching creativity and all it implies in the context of globalization, where diverse expressions are circulated and made accessible to all via cultural goods and services. Thus, Parties, recognizing the fundamental role of civil society, will seek to create an environment that encourages individuals and social groups “to create, produce, disseminate, distribute and have access to their own cultural expressions, paying due attention to the special circumstances and needs of women as well as various social groups, including persons

Press Release N°2005-128 Author(s) UNESCOPRESS

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e-Copyrright Bulletin October - December 2005

belonging to minorities and indigenous peoples”, and “to recognize the important contribution of artists, others involved in the creative process, cultural communities, and organizations that support their work, and their central role in nurturing the diversity of cultural expressions.” It should be stressed that international promotion and cooperation, especially in the case of developing countries, is at the heart of the Convention (Articles 12 to 19). To this effect, the creation of an International Fund for Cultural Diversity, has been provided for (Article 18). Resources for this Fund will come from voluntary contributions from Parties, funds allocated by UNESCO’s General Conference, diverse contributions, gifts or bequests, interest due on resources of the Fund, funds raised through collections and receipts from events organized for the benefit of the Fund, or any other resources authorized by the Fund’s regulations. The concern to ensure coherence between the Convention and other existing international instruments guided States to include a clause (Article 20) aimed at ensuring a relationship of “mutual supportiveness, complementarity and non-subordination” between these instruments. At the same time, “nothing in the present Convention shall be interpreted as modifying rights and obligations of the Parties under any other treaties to which they are parties.” The Convention establishes a series of follow-up mechanisms aimed at ensuring efficient implementation of the new instrument. Among these, a non binding mechanism for the settlement of disputes allows, within a strictly cultural perspective, possible divergences of views on the interpretation or application of certain rules or principles relatives to the Convention (Article 25) to be dealt with. This mechanism encourages, first and foremost, negotiation, then recourse to good offices or mediation. If no settlement is achieved, a Party may have recourse to conciliation. The Convention does not include any mechanism for sanctions. Finally, it should be recalled that UNESCO’s Constitution provides a mandate to both respect the “fruitful diversity of (…) cultures” and to “promote the free flow of ideas by word and image”, principles that are reaffirmed in the Preamble to the Convention. With this Convention, it completes its normative action aimed at defending cultural diversity in all of its manifestations, and most especially the two pillars of culture: heritage*** and contemporary creativity.

*Text of the Convention **UNESCO Universal Declaration on Cultural Diversity *** Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Cultural Property – 1970; Convention concerning the Protection of the World Cultural and Natural Heritage – 1972; Convention for the Safeguarding of the Intangible Cultural Heritage – 2003 Website Cultural Diversity

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http://www.unesco.org/culture/culturaldiversity/convention_en.pdf

http://unesdoc.unesco.org/images/0012/001271/127160m.pdf

http://portal.unesco.org/culture/en/ev.php-URL_ID=2450&URL_DO=DO_TOPIC&URL_SECTION=201.html

e-Copyright Bulletin October – December 2005

UNESCO ACTIVITIES

FRANCO-GERMAN MEETINGS ON COPYRIGHT

The Intellectual Property Research Institute Henri-Desbois (IRPI, France) and the Max-Planck Institute for Intellectual Property (Germany), organized in 2004-2005, in partnership with the Section of Cultural Enterprise and Copyright of UNESCO, a series of “Franco-German Meetings on Copyright”, held alternately at UNESCO headquarters in Paris and at the Max-Planck Institute in Munich. The aim of the meetings was to reflect on the future of copyright in France and Germany, as well as on the European scale, to determine preliminary issues for harmonization and to contribute to the international debate. To this end, eminent German and French specialists were invited to share their points of view on the actual state of copyright in their respective countries and to contribute to the debates after the conferences. Topics debated during the meetings included:

The extent of copyright protection The alternative protections to copyright Copyright exceptions Collective management societies Contractual aspects of copyright

Two meetings were held on November 4th and December 9th 2005 at UNESCO headquarters and assembled numerous jurists, experts and national authorities and cultural industries representatives. The meeting on collective management societies was chaired by Mr. Frédéric Pollaud-Dulian, Professor at the University of Panthéon-Sorbonne (Paris I). The contributors were Mr. Josef Drexl, Professor at the University of Munich and Director of the Max Planck Institute for Intellectual Property (Munich, Germany) and Mr. Fabrice Siiriainen, Professor at the University of Nice-Sophia Antipolis (France). Collective management, a hot topic because of the recent developments in intellectual property, raised a number of issues in Europe, notably concerning the impact on national laws of the European Commission Recommendation on management of trans-border online rights in musical works, adopted on October 12th, 2005. Participants presented the state of affairs of collective management societies in their own countries in the light of the new Recommendation. Prof. Drexl, after having recalled the different approaches examined by the Commission at the end of the different stages that had led to its adoption, examined the history of the birth of the Recommendation. He dwelt on the question of monopoly in the

Original: French Author(s): CLT/ACE

e-Copyright Bulletin October – December 2005

collective management in Germany and in other European countries. He also evoked the necessity to regulate this issue in Europe. His critical analysis of the Recommendation’s provisions underlined its strong and weak points and the impact it will have on German law in particular and, more generally, on collective management in Europe. Prof. Siiriainen demonstrated in his presentation how the Recommendation reaffirmed the benefits of collective management of the whole cultural industries, but at the same time weakened the actual monopoly-based management system. Finally, after examining the autonomy of legal rules on collective management, he evoked the question of the regulation of collective management by a specific organization. The main topic of the last Franco-German meeting was the contractual aspects of copyright and more specifically the limits of contractual freedom under French and German Laws. The meeting was chaired by Prof. Pierre Sirinelli, University Panthéon-Sorbonne (Paris I) and the two main participants were Prof. Adolf Dietz, former director of the Max Planck Institute in Munich and Prof. Benjamin Montels, lecturer at the School of Law and Political Science of Rennes I. Prof. Dietz presented the reform of contractual copyright in Germany. After having commented the place of the author in the German legal and economic systems, he addressed the fundamental aspect of the right to revenues from the exploitation of a work. Then he insisted on the improvements brought about by the 2002 reform that introduced provisions for fair remuneration of the author by simple rules which consequently proved rather difficult to apply. In Prof. Dietz’s opinion, this moment is still not ripe for a European harmonization of that matter. Further, Prof. Benjamin Montels presented the French legal rules in this field in a both critical and prospective way. He emphasized the vulnerability of the French legislation with regard to technological changes and new categories of works which have come into being. He evoked the need to modernize the French law and put forward five proposals for reforms, among which the need to promote collective negotiation of remuneration based on the German model, stating that this reform was the most important. The fair remuneration referred to in the German Law constitutes, in his opinion, an innovation offering a superior protection to authors and allowing an easy adaptation, depending on the type of cultural industry.

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e-Copyright Bulletin January 2006

INTERNATIONAL CONVENTIONS

REVIEW OF STATES PARTIES TO THE INTERNATIONAL CONVENTIONS ON INTELLECTUAL PROPERTY ADOPTED UNDER THE AUSPICES OF UNESCO

CONVENTION FOR THE PROTECTION OF PRODUCERS OF PHONOGRAMS AGAINST UNAUTHORIZED DUPLICATION OF THEIR PHONOGRAMS

STATE OF RATIFICATIONS, ACCEPTANCES AND ACCESSIONS UP TO 31 JANUARY 2006 I. ADOPTION The Convention was adopted by the International Conference of States on the Protection of Phonograms which was held in Geneva from 18 to 29 October 1971.

II. ENTRY INTO FORCE

1. Initial entry into force: 18 April 1973, in accordance with Article 11, paragraph 1. 2. Subsequent entry into force for a particular State: three months after the date on which the Director-General of

the World Intellectual Property Organization informs the States referred to in Article 9, paragraph 1, of the deposit, in accordance with Article 13, paragraph 4, of the instrument of ratification, acceptance or accession of the State in question.

Author(s) : CLT/ACE

Phonograms Convention January 2006

III. RATIFICATIONS, ACCEPTANCES AND ACCESSIONSa

b (R = Ratification or acceptance; A = Accession; D = Declaration )

Territorial application States parties Date of entry into

force Date at which notification takes

effect

Extension to Notificationsc

1 Albania 26 March 2001 A 2 Argentina 30 June 1973 A 3 Armenia 31 January 2003 A 4 Australia 22 June 1974 A 5 Austria 21 August 1982 R 6 Azerbaijan 1 September 2001A 7 Barbados 29 July 1983 A 8 Belarus 17 April 2003 A 9 Brazil 28 November 1975 R

10 Bulgaria 6 September 1995 A 11 Burkina Faso 30 January 1988 A 12 Chile 24 March 1977 A

13 China 30 April 1993 A 1 July 1997 Hong Kong1

14 Colombia 16 May 1994 R

15 Costa Rica 17 June 1982 A

16 Croatia 20 April 2000 A

17 Cyprus 30 September 1993 A

18 Czech Republic2 1 January 1993 D 19 Democratic Republic

of the Congo 29 November 1977 A

20 Denmark 24 March 1977 R 21 Ecuador 14 September 1974 R 22 Egypt 23 April 1978 A × 23 El Salvador 9 February 1979 A 24 Estonia 28 May 2000 A 25 Fiji 18 April 1973 A 26 Finland 18 April 1973 R × 27 France 18 April 1973 R 28 Germany3 18 May 1974 R 29 Greece 9 February 1994 A 30 Guatemala 1 February 1977 A 31 Holy See 18 July 1977 R 32 Honduras 6 March 1990 A 33 Hungary 28 May 1975 A × 34 India 12 February 1975 R 35 Israel 1 May 1978 R 36 Italy 24 March 1977 R × 37 Jamaica 11 January 1994 A 38 Japan 14 October 1978 R

a This document is compiled from information communicated by the Secretary-General of the United Nations and by the Director-General of the World Intellectual Property Organization. b The symbol ‘D’ denotes a declaration made by a State recognizing itself bound, as from the date of its independence, by the Convention, the application of which had been extended to its territory by the State from which it separated. The date shown is the date of deposit of the instrument of ratification, acceptance or accession made by the State from which this State separated. c See below, for the text of Notifications.

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Territorial application States parties Date of entry into force Date at which

notification takes effect


39 Kazakhstan 3 August 2001 A 40 Kenya 21 April 1976 R 41 Kyrgyzstan 12 October 2002 A 42 Latvia 23 August 1997 A 43 Liberia 16 December 2005 A 44 Liechtenstein 12 October 1999 R 45 Lithuania 27 January 2000 A 46 Luxembourg 8 March 1976 R 47 Mexico 21 December 1973 R 48 Monaco 2 December 1974 R 49 Netherlandsd 12 October 1993 A 50 New Zealand 13 August 1976 A 51 Nicaragua 10 August 2000 A 52 Norway 1 August 1978 R 53 Panama 29 June 1974 R 54 Paraguay 13 February 1979 A 55 Peru 24 August 1985 A 56 Republic of Korea 10 October 1987 A 57 Republic of Moldova 17 July 2000 A 58 Romania 1 October 1998 A 59 Russian Federation 13 March 1995 A 60 Saint Lucia 2 April 2001 A 61 Serbia and

Montenegro 10 June 2003 R

62 Slovakia4 1 January 1993 D 63 Slovenia 15 October 1996 A 64 Spain 24 August 1974 R 65 Sweden 18 April 1973 R × 66 Switzerland 30 September 1993 R 67 the former Yugoslav

Republic of Macedonia

2 March 1998 A

68 Togo 10 June 2003 A 69 Trinidad and Tobago 1 October 1988 A 70 Ukraine 18 February 2000 A

d For the Kingdom in Europe.

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Territorial application States parties Date of entry into force Date at which

notification takes effect


71 United Kingdom 18 April 1973 R 4 March 1975 Bermuda, British Virgin Islands, Cayman Islands, Gibraltar, Isle of Man, Hong Kong,5 Montserrat, Saint Lucia, Seychelles

72 United States of America

10 March 1974 R

73 Uruguay 18 January 1983 R 74 Venezuela 18 November 1982 A 75 Viet Nam 6 July 2005 A

Notifications

Egypt. The instrument of accession contained the declaration that the accession of the Arab Republic of Egypt ‘does not imply any recognition of Israel, or entering into any relationship with Israel governed by the provisions of the Convention’. Finland. On 2 January 1973, the Government of Finland deposited with the Director-General of the World Intellectual Property Organization a notification dated 22 December 1972 declaring that, in accordance with Article 7(4) of the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, adopted at Geneva on 29 October 1971, it will apply the criterion according to which it affords protection to producers of phonograms solely on the basis of the place of first fixation instead of the criterion of the nationality of the producer. Hungary. At the time of the deposit of the instrument of accession with the Secretary-General of the United Nations, the Hungarian Government made the following declarations: ‘In the opinion of the Hungarian People’s Republic, Article 9, paragraphs (1) and (2), of the Convention have a discriminatory character. The Convention is a general, multilateral one and therefore every State has the right to be a party to it, in accordance with the basic principles of international law.’ ‘The Hungarian People’s Republic declares that the provisions of Article 11, paragraph (3), of the Convention are inconsistent with the principles of the independence of colonial countries and peoples, formulated, inter alia, also in Resolution No.1514(XV) of the United Nations General Assembly.’ Italy. On 20 January 1977, the Government of Italy deposited with the Director-General of the World Intellectual Property Organization a notification declaring that, in accordance with Article 7(4) of the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, adopted at Geneva on 29 October 1971, it will apply the criterion according to which it affords protection to producers of phonograms solely on the basis of the place of first fixation instead of the criterion of the nationality of the producer. Sweden. On 11 January 1973, the Government of Sweden deposited with the Director-� General of the World Intellectual Property Organization a notification dated 28 December 1972 declaring that, in accordance with Article 7(4) of the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, adopted at Geneva on 29 October 1971, it will apply the criterion according to which it affords protection to producers of phonograms solely on the basis of the place of first fixation instead of the criterion of the nationality of the producer. According to a notification dated 30 June 1986, the Government of Sweden declared that, with effect on 1 July 1986, it withdraws its declaration, made at the time of the deposit of its instrument of ratification of the Convention

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for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, that it will apply the criterion according to which it affords protection to producers of phonograms solely on the basis of the place of first fixation instead of the criterion of the nationality of the producer. Notes 1. The English translation of a letter, dated 17 June 1997, was transmitted to the Secretary-General of the United

Nations by the Acting Permanent Representative of the People’s Republic of China to the United Nations at New York containing the following notification: ‘In accordance with the Joint Declaration of the Government of the People’s Republic of China and the Government of the United Kingdom of Great Britain and Northern Ireland on the Question of Hong Kong signed on 19 December 1984, the People’s Republic of China will resume the exercise of sovereignty over Hong Kong with effect from 1 July 1997. Hong Kong will, with effect from that date, become a Special Administrative Region of the People’s Republic of China and will enjoy a high degree of autonomy, except in foreign and defence affairs which are the responsibility of the Central People’s Government of the People’s Republic of China . . .

‘The Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms (hereinafter referred to as “the Convention”), to which the Government of the People’s Republic of China acceded on 5 January 1993, will apply to the Hong Kong Special Administrative Region with effect from 1 July 1997.

‘The Government of the People’s Republic of China will assume responsibility for the international rights and obligations arising from the application of the Convention to the Hong Kong Special Administrative Region . . .’.

2. Czechoslovakia, which had deposited on 15 January 1985, with the Secretary-General of the United Nations, its instrument of accession to the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, adopted at Geneva on 29 October 1971, separated into two independent States, the Slovak Republic and the Czech Republic, on 1 January 1993.

On 30 September 1993, the Secretary-General of the United Nations received from the Government of the Czech Republic a declaration of succession concerning the application of this Convention.

3. The Director-General of UNESCO received from the Permanent Delegate of the Federal Republic of Germany a letter dated 3 October 1990 informing him that ‘through the accession of the German Democratic Republic to the Federal Republic of Germany with effect from 3 October 1990, the two German States have united to form one sovereign State’. This letter was accompanied by a verbal note dated 3 October 1990 informing UNESCO that ‘with regard to the continued application of treaties of the Federal Republic of Germany and the treatment of treaties of the German Democratic Republic following its accession to the Federal Republic of Germany with effect from 3 October 1990, the Treaty of 31 August 1990 between the Federal Republic of Germany and the German Democratic Republic on the establishment of German unity (Unification Treaty) contains the following relevant provisions:

1. 1. Article 11 Treaties of the Federal Republic of Germany The contracting parties proceed on the understanding that international treaties and agreements to which the

Federal Republic of Germany is a contracting party . . . shall retain their validity and that the rights and obligations arising therefrom . . . shall also relate to the territory specified in Article 3 of this Treaty’. (Länder of Brandenburg, Mecklenburg-Western Pomerania, Saxe, Saxe-Anhalt and Thuringia as well as the sector of the Land of Berlin where the Fundamental Law of the Federal Republic of Germany was not applicable.)

4. Czechoslovakia, which had deposited on 15 January 1985, with the Secretary-General of the United Nations, its instrument of accession to the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, adopted at Geneva on 29 October 1971, separated into two independent States, the Slovak Republic and the Czech Republic, on 1 January 1993.

On 28 May 1993, the Secretary-General of the United Nations received from the Government of Slovakia a declaration of succession concerning the application of this Convention.

5. On 10 June 1997, the Permanent Representative of the United Kingdom of Great Britain and Northern Ireland to the United Nations at New York sent a letter to the Secretary-General of the United Nations concerning the ‘treaties’ which apply to Hong Kong at present, including the Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, notifying him of the following: ‘. . . in

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accordance with the Joint Declaration of the Government of the United Kingdom of Great Britain and Northern Ireland and the Government of the People’s Republic of China on the Question of Hong Kong signed on 19 December 1984, the Government of the United Kingdom will restore Hong Kong to the People’s Republic of China with effect from 1 July 1997. The Government of the United Kingdom will continue to have international responsibility for Hong Kong until that date. Therefore, from that date the Government of the United Kingdom will cease to be responsible for the international rights and obligations arising from the application of the “Treaties” to Hong Kong . . .’.

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SELECTED WORKS

ERCOLANI, Stefania. Il diritto d’autore e i diritti connessi. La legge n. 633/1941 dopo l’attuazione della direttiva n. 2001/29/CE [Copyright and Neighboring rights. Act no. 633/1941 following the transposition of Directive 2001/29/CE ]. Edition Giappichelli, Collection Diritto dell’economia [Economic Law], Torino 2004, 517 pp. Since European harmonization efforts began in 1992, the Italian Copyright Act has periodically undergone reforms. The last step in this harmonization process was the transposition of Directive 2001/29/CE on the harmonisation of certain aspects of copyright and related rights in the information society, whose adoption deeply modified the Italian legislative framework. Stefania Ercolani’s book offers a broad overview of the national legislation which it then sets back into in the international and communitarian contexts, as well as an in-depth analysis of each category of right as it is understood under the new Act. The book also presents a study of copyright and neighboring rights exceptions and limitations as well as an examination of ownership mechanisms of such rights. The author also allots several chapters to topics of great interest, such as private copying, technical measures, digital rights management systems (DRM), ISP liability, public records and the interaction between copyright and competition law. The work leads, on the one hand, to a reflection on the theoretical aspect of copyright and neighboring rights and, on the other hand, presents the phenomena related to today’s media and technological reality. Endowed with such characteristics, this book becomes a useful instrument not only to researchers and professionals but to cultural enterprises as well. Finally, a chart of contracting parties to international conventions, a list of online links to laws and treaties as well as a broad and up-to-date bibliography help make this book all the more interesting. Stefania Ercolani presently heads the Office of International Relations of the SIAE (Italian Society of Authors and Publishers).

Original: French Autor(es): CLT/ACE

e.Copyright Bulletin October - December 2005

SELECTED WORKS

HELBERGER, Natali. Controlling Access to Content. Regulating Conditional Access in Digital Broadcasting. General Editor, Prof. Bernt Hugenholtz. Kluwer Law International, The Netherlands, 2005. 310 pp. This work investigates the topic of electronic access control to content, more specifically in the area of telecommunications and digital broadcasting. The author examines particularly the interplay between this control to access and public information policies, freedom of expression and competition law. Using the example of pay-TV, the author studies how the European broadcasting law, competition law and telecommunications law govern digital broadcasting platforms with controlled access. The work examines the impact of these interventions on competition and consumers’ access to broadcast content. There is a chapter in the book which deals mainly with public interest matters that European governments will have to tackle concerning broadcasting, more specifically, the access to information and the free circulation of services. Two other chapters are dedicated to European substantive law concerning competition and telecommunications. The conclusions of the book on the matter of pay-TV attempt to shed light on the general question of electronic control of access to content and the numerous examples used by the author will be useful to lawyers, consumers, industry representatives and all other professionals concerned with electronic control of access to content. ISBN 90-411-2345-8 http://www.kluwerlaw.comUseful link : http://www.ivir.nl/publications/helberger/summary_thesis.html

Author(s): CLT/ACE

http://www.kluwerlaw.com/

http://www.ivir.nl/publications/helberger/summary_thesis.html

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