The WIPO Internet Treaties at 25: A Retrospective 9811983895, 9789811983894

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R. V. Vaidyanatha Ayyar

The WIPO Internet Treaties at 25 A Retrospective

The WIPO Internet Treaties at 25

R. V. Vaidyanatha Ayyar

The WIPO Internet Treaties at 25 A Retrospective

R. V. Vaidyanatha Ayyar Hyderabad, Telangana, India

ISBN 978-981-19-8389-4 ISBN 978-981-19-8390-0 (eBook) https://doi.org/10.1007/978-981-19-8390-0 © The Editor(s) (if applicable) and The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 This work is subject to copyright. All rights are solely and exclusively licensed by the Publisher, whether the whole or part of the material is concerned, specifically the rights of translation, reprinting, reuse of illustrations, recitation, broadcasting, reproduction on microfilms or in any other physical way, and transmission or information storage and retrieval, electronic adaptation, computer software, or by similar or dissimilar methodology now known or hereafter developed. The use of general descriptive names, registered names, trademarks, service marks, etc. in this publication does not imply, even in the absence of a specific statement, that such names are exempt from the relevant protective laws and regulations and therefore free for general use. The publisher, the authors, and the editors are safe to assume that the advice and information in this book are believed to be true and accurate at the date of publication. Neither the publisher nor the authors or the editors give a warranty, expressed or implied, with respect to the material contained herein or for any errors or omissions that may have been made. The publisher remains neutral with regard to jurisdictional claims in published maps and institutional affiliations. This Springer imprint is published by the registered company Springer Nature Singapore Pte Ltd. The registered company address is: 152 Beach Road, #21-01/04 Gateway East, Singapore 189721, Singapore

Preface

By happenstance, I got the opportunity of leading the Indian delegation to the historic WIPO Diplomatic Conference on Certain Copyright and Neighbouring Rights, 1996 (hereafter referred to as DipCon) and being Chairman of the Drafting Committee of that Conference. The WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), which are together called the Internet Treaties, adapted copyright and related rights to the fledgling digital technologies; they were negotiated in and adopted by DipCon. Soon after the DipCon, I wrote an article, ‘Interest or Right: The Process and Politics of a Diplomatic Conference on Copyright’. After that article was published, I thought that the DipCon was over and done with; that was not to be. In February 2019, Prof. N. S. Gopalakrishnan invited me to a brainstorming session on the future of copyright being organised at the Inter-University Centre of IP Studies, Cochin, in connection with the visit of David Nimmer of Nimmer on Copyright fame to the Centre. As I was getting ready to leave after the completion of the brainstorming session, Sri T. Prashant Reddy, one of the participants, asked me why I had not written in detail about the DipCon; the more I thought about the question, the more I realised that there was much more to be written than what I wrote in my article 23 years ago. I also realised that coming December 2021, the DipCon would be 25 years old and a retrospective of the DipCon and what it accomplished and what it did not would be timely. A retrospective would necessarily consist of two parts. The first part would look back at the Conference, its course of events, its negotiation dynamics, the doctrinal differences and sharply conflicting economic interests underlying the stands taken by the main parties to negotiations and the national and transnational interest groups that sought to influence, the negotiation process and outcomes. The second aspect of a retrospective would reflect on the outcomes and assess with the wisdom of the hindsight how appropriate the outcomes were and how well they withstood the passage of time. The second aspect is the focus of this Book. A caveat should be entered here: the retrospective is limited to the digital agenda of DipCon; but for the digital agenda, the DipCon would not have been convened so soon and the Internet Treaties concluded so fast. What comes out from the assessment is that even after twenty-five years, the legal frame they put in place in respect of digital content had v

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survived and there is no demand from any Member State of WIPO for modifying the Treaties. This is despite the phenomenal changes in Internet, World Wide Web and digital technologies, in the business models for offering digital content and in consumption of digital content. The first aspect of the retrospective is dealt with in Chap. 2 and its Appendix to the extent that is necessary to provide the backdrop to the events after the DipCon. Those who wish to have a more detailed narrative may look at my work Present at the Creation: The Making of Internet Treaties, 1996 (available at https://rvvayyar.com) which is a story of the DipCon viewed from the perspective of an Indian negotiator. Present at Creation fills a serious void in literature in that there had been no book on the DipCon from a negotiator’s perspective, unlike say with TRIPs negotiations. Before I conclude, I should say that the centrality of negotiations in governance at all levels is a theme that has long fascinated me ever since my sabbatical at the Harvard Institute of International Development and Kennedy School of Government, Harvard University (1982–1983), and me taking a course on negotiations offered by Prof. James Sebenius during that sabbatical. What I learnt from Sebenius on negotiations was like Revelation on Mount Sinai, or Great Enlightenment under the Bodhi tree at Gaya. I would have been at sea at the Diplomatic Conference but for the analytical framework of negotiations that I learnt from him and the years of experience in internalising that framework through policy negotiations as well as negotiations with bilateral, regional and multilateral agencies. After superannuation from the government, I took to teaching policy praxis at the Indian Institute of Management, Bangalore, as Visiting Professor (2003–2009). In teaching policy praxis, I found myself handicapped by lack of material for development of cases in the public domain, not to speak of readymade cases. This was because of the absence of a tradition in India, as in the U.S., of people occupying high positions in government writing about their experiences of government soon after leaving government and in so writing expose to public gaze the innards of government and the interplay of the ‘inside’ and ‘outside’ of the government which underlies every aspect of governance. To get over the paucity of material for case development, I developed cases based on my experience and used those cases in my courses and included them in my first book Public Policymaking in India published by Pearson Longman in 2009. In 2010, I decided to take to full-time writing and document the policy and programme development in the areas I had worked in government. The documentation of policy and programme development in education sector resulted in the publication of two books both published by the Oxford University Press: The Holy Grail: India’s Quest for Universal Elementary Education (2016) and History of Education Policymaking in India, 1947–2016 (2017). The fourth book, Present at Creation: The Making of Internet Treaties, 1996, documents the making of international copyright and related rights law through multilateral negotiations. This Book, The WIPO Internet Treaties at 25, documents policy negotiations (i) at the national level during transposition of the Internet Treaties into national laws, (ii) in EC for issuing a directive to transpose the Internet Treaties, (iii) in EC Member States for transposing the EC Directive into national laws and (iv) in WIPO, among others, for the adoption of the WIPO Development Agenda, the Beijing Treaty on Audiovisual

Preface

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Performances and the Marrakesh Treaty. Though I am not a patch on V. S. Naipaul, I can echo his claim that ‘All my work is really one. I am writing one big book’. My big book is about policy negotiations and their politics. Apart from copyright scholars and policymakers, the Book should be of interest to experts and practitioners of multilateral negotiations and policymaking given its focus on how well the Internet Treaties negotiated at the WIPO Diplomatic Conference (1996) withstood, over the last twenty-five years the creative gales of destruction as well as about policy negotiations in the U.S., EU, some Member States of EU, Canada, India and WIPO. Hyderabad, India

R. V. Vaidyanatha Ayyar

Acknowledgements

I cannot thank Prof. Gopalakrishnan enough: without his invitation to the Brainstorming Session on the Future of Copyright at the Inter-University Centre for IPR Studies, Cochin University of Science and Technology, this book would not have come into being and without his suggestion that I should not stop with the conclusion of the DipCon but look at the developments after DipCon I would have missed a fascinating voyage of discovery, and this book would have been poorer. I am also thankful to him and Prof. Agitha for vetting and offering comments on the chapters. However, I should enter the caveat that I am fully responsible for any errors which remain. Even if I had attended the Brainstorming Session, I would not have written this book and its companion volume on the negotiating history of DipCon but for Sri Prashant Reddy, an eminent IPR lawyer and fellow participant, who ‘provoked’ me by asking why I had not written in detail about the DipCon; his question launched me on the voyage of intellectual exploration that culminated in these two books. Notes from Geneva, the authentic day-by-day account of the happenings at the DipCon authored by Seth Greenstein, who attended the DipCon as a representative of the Electronic Industries Association, was an invaluable source of information for every participant, all the more so as there was no official daily account of the happenings of the previous day. I cannot thank Greenstein enough for sharing with me his Notes from Geneva and providing the website of the archives where the ‘Notes’ could be located and permitting me to quote from the Notes. I would also like to thank Ms. Nupoor Singh for facilitating the publication of this book by Springer Nature, Sri Ashok Kumar, Ms. Sharmila Mary Panner Selvam and Lokeswaran Manikavasagam for efficiently overseeing the publication process. I would like to express my gratitude to my parents, R. V. Venkataramana Ayyar and R. V. Seshambal who have contributed so much to my Being and Becoming. This book would not have been possible without the encouragement and forbearance of my wife Seetha Vaidyanathan. For years, I had been and continue to be engrossed in writing; such engrossment is burdensome for a spouse at a stage of life when

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loneliness is an ineluctable existential condition. I wish to also thank my daughter Aparna Sharma and my granddaughters Isha, Sneha and Medha for continuously prodding me to complete the book.

About This Book

December 2021 is the silver jubilee of the WIPO Diplomatic Conference which adopted the Internet Treaties. A book about the history of the Internet Treaties over the last twenty-five years is timely. The history of the years since the DipCon is a tale of the copyright and related rights system being engulfed in crisis after crisis as digital networks and technologies threw challenge after challenge. The Book evaluates how well the provisions of the Internet Treaties withstood the phenomenal developments in digital technologies and the Internet over the last 25 years and how the markets for digital content admirably responded to the technological developments. While doing so, the Book deals, inter alia, with (i) the politics and process of transposing the Internet Treaties into the legislations of the U.S., EU, Canada and India, (ii) the phenomenal changes in digital technologies which in turn led to new modes of production and distribution of content (e.g. Wikipedia and User Generated Content), (iii) the challenges such modes posed to the conceptual underpinnings of copyright and related rights, (iv) the challenges of enforcement and societal acceptance that copyright and related rights systems had to continually face in countries with high Internet penetration, (v) most American and many European copyright academics turning into copyright sceptics who espoused users’ rights and the cult of the public domain, (vi) the growing disjunction between copyright policy study by academics and real-world policymaking and adjudication, (vii) strengthening rights and their enforcement becoming an awesome challenge to governments in the U.S. and European Union, (viii) the strengths and limitations of Internet-facilitated protest movements, (ix) the highly controversial anti-circumvention and rights management provisions of national implementation legislations coming to undergird the Internet economy, (x) the relatively non-controversial ‘safe harbour’ status of intermediaries being on the boil due to the emergence of platforms like YouTube which are intermediaries as well as content providers, (xi) the making of the highly contentious EU’s Single Digital Market Directive (2019) which did away with the safe harbour status of platforms like YouTube, (xii) the laws made by the EU and Australia to prevent free riding by online news aggregators, (xiii) the Indian Information Technology (Guidelines for Intermediaries and Digital Media Ethics Code) Rules, 2021, which laid down stringent conditions for ‘significant social media intermediaries’ xi

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About This Book

like Twitter and Facebook for being eligible for safe harbour status and (xiv) the developments in WIPO after the Conference including the emergence of a strong Access to Knowledge (A2K) movement whose votaries believed that limitations and exceptions are more important than rights, the stalemate which emerged due to the failure of the A2K movement to get a treaty on limitations and exceptions and of the developed countries to strengthen enforcement, the adoption of a Development Agenda by WIPO and its implementation, the failed attempt to negotiate a plurilateral enforcement treaty ACTA and the adoption of Beijing Treaty on Audiovisual Performances (BTAP), 2012, and the Marrakesh Treaty for the print disabled, 2013. This Book is a companion volume of the author’s Present at Creation: The Making of WIPO Internet Treaties, which is a negotiation history of the WIPO Diplomatic Conference (1996) which culminated in the adoption of the WIPO Internet Treaties. Apart from copyright scholars and policymakers, the Book should be of interest to experts and practitioners of multilateral negotiations and policymaking given its focus on how well the Internet Treaties negotiated at the WIPO Diplomatic Conference (1996) withstood, over the last twenty-five years the creative gales of destruction as well as about policy negotiations in the U.S., EU, some Member States of EU, Canada, India and WIPO.

Contents

1

Overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 8

2

The Making of the Internet Treaties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1 Prehistory . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1.1 TRIPS Rejuvenates Berne . . . . . . . . . . . . . . . . . . . . . . . . . 2.1.2 The Digital Tsunami . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1.3 Precocious Policy Response . . . . . . . . . . . . . . . . . . . . . . . 2.2 The Preparatory Phase . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.2.1 WIPO Committees of Experts . . . . . . . . . . . . . . . . . . . . . 2.2.2 Jinxed Database Treaty . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.3 DipCon . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.3.1 High Drama of DipCon . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.3.2 The Spectre that Haunted the Uruguay Round and DipCon: Audio-visual Performances and Services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.3.3 Digital Agenda . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.4 Initial Reactions to the DipCon Outcomes . . . . . . . . . . . . . . . . . . 2.4.1 WIPO and Its Functionaries . . . . . . . . . . . . . . . . . . . . . . . 2.4.2 Opponents of Lehman Report . . . . . . . . . . . . . . . . . . . . . 2.4.3 Private Interest Groups . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.4.4 WIPO Member States . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.5 Overall Assessment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.5.1 What Is Special About the TRIPs and Internet Treaties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Appendix: An Indian Negotiator’s Tale . . . . . . . . . . . . . . . . . . . . . . . . . . . . Opportunity Knocks the Door . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Preparations for Negotiations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . The U.S. Lobbies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . General Consultations, Geneva (October 1996) . . . . . . . . . . . . . . Negotiations Between Organisations: Securing Negotiating Mandate . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

11 11 13 17 18 22 22 24 26 26

28 33 45 45 45 46 46 47 47 50 50 53 55 56 58 xiii

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Lobbying by Interest Groups Begins . . . . . . . . . . . . . . . . . . . . . . . Asian Group Regional Meeting: Chiang Mai, Thailand (November 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Curtain Raiser: 15 + 15 + 1 + 1 Meeting . . . . . . . . . . . . . . . . . . DipCon Venue: Mega Bazaar . . . . . . . . . . . . . . . . . . . . . . . . . . . . . DipCon: Starting Trouble . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Midlife Crisis: Champagne and Broken Glass . . . . . . . . . . . . . . . Nail Biting Climax: Reproduction Right . . . . . . . . . . . . . . . . . . . . Indian Reaction to Negotiation Outcomes . . . . . . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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3

The Making of DMCA (U.S. Implementation Legislation) . . . . . . . . . 3.1 Politics of Making DMCA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.2 Policy Negotiations and Outcome . . . . . . . . . . . . . . . . . . . . . . . . . . 3.2.1 Anticircumvention Provisions (S.1201) . . . . . . . . . . . . . 3.2.2 Secondary Liability of Intermediaries (S.512) . . . . . . . . 3.2.3 Academic Critique of DMCA . . . . . . . . . . . . . . . . . . . . . 3.3 Turn of the Tide . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4 ‘Export’ of DMCA Provisions Through Trade Agreements . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

83 83 86 87 89 90 94 94 96

4

New Technologies Unleash Creative Destruction . . . . . . . . . . . . . . . . . . 4.1 Peer-to-Peer File Sharing Bursts on the Copyright Landscape . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.2 Legal Challenge to P2P File Sharing Service Providers . . . . . . . 4.3 Sledgehammer to Swat a Fly: Backlash Against Copyright . . . . 4.4 New Actors Make Copyright Policy Environment More Complex . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.5 Advent of Web 2.0 Promotes Interactivity and Activism . . . . . . 4.6 Second Wave Legislation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.7 Graduated Response . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.8 New Business Models: Digital Renaissance . . . . . . . . . . . . . . . . . 4.9 Study of S.1201 by U.S. Copyright Office (2017) . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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The Making of EUCD and Its Transposition into National Laws of Member States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.1 Objective of Harmonisation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.2 Politics of Enacting EUCD . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.3 Harmonisation of Limitations and Exceptions . . . . . . . . . . . . . . . 5.4 Anticircumvention Provision and Exceptions to that Provision (Article 6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.5 Transposition of EUCD into National Laws of Member States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

61 64 65 66 69 74 77 78

99 102 108 110 111 112 114 115 119 120 123 123 124 126 128 131 133

Contents

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The Making of Canadian Implementation Legislation . . . . . . . . . . . . 6.1 Canadian Copyright Tradition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.2 Cautious Approach to DipCon . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.3 Legislative Process (2001–2005) . . . . . . . . . . . . . . . . . . . . . . . . . . 6.4 Shift in Policy Environment and Internet Activism . . . . . . . . . . . 6.5 Deft Policy Management . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.6 Salient Features of the Implementation Act (2012) . . . . . . . . . . . 6.7 Evaluation of the Making of the Canadian Implementation Legislation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.8 Review of the 2012 Implementation Act (2019) . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

135 135 137 138 139 141 142

Making of the Indian Implementation Legislation . . . . . . . . . . . . . . . . 7.1 Why Delay in Enactment? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.2 Legislative Process . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.3 Provisions Relating to Digital Agenda: Fair Use Proponents’ Dream Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.4 Orphan Works and Print Disabled . . . . . . . . . . . . . . . . . . . . . . . . . 7.5 Policy Entrepreneurship of Javed Akhtar: Bonanza for Lyric Composers and Music Composers . . . . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

147 147 148

The Romance of the Public Domain . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.1 Copyright Overreach . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.2 Creativity in Actuality and in Copyright Doctrine . . . . . . . . . . . . 8.3 Public Domain: Cultural Commons . . . . . . . . . . . . . . . . . . . . . . . . 8.4 Eldred Challenge to Sonny Bono Act Gives Tremendous Boost to Public Domain . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.5 Spread of the Public Domain Creed to the Heartland of Droit D’auteur . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.6 Critique of Public Domain . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

167 167 168 171

Social Production and Distribution of Content . . . . . . . . . . . . . . . . . . . 9.1 Introductory . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.2 Open Source Software . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.3 Theory of Social Production . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.4 Creative Commons . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.5 Open Access Scholarly Journals, Archives and Repositories of Journals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

179 179 180 184 187

10 User Generated Content and Users’ Rights . . . . . . . . . . . . . . . . . . . . . . 10.1 What Is User Generated Content? . . . . . . . . . . . . . . . . . . . . . . . . . . 10.2 Copyright and UGC: Reconceptualisation of Copyright . . . . . . . 10.3 Users’ Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.3.1 United States: From Fair Use to Users’ Rights . . . . . . .

195 195 197 199 199

7

8

9

143 144 145

149 153 154 163

172 173 174 176

189 191

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10.3.2 European Union: Adoption of Fair Use like Exception . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 203 10.3.3 New Interpretation of Three-Step Test . . . . . . . . . . . . . . 206 Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 207 11 New Intermediaries and Their Regulation . . . . . . . . . . . . . . . . . . . . . . . 11.1 Safe Harbour: A 20th Century Solution to a 21st Century Problem? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.2 News Aggregators . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.3 European Union: Digital Single Market Directive, 2019 . . . . . . . 11.3.1 Mandatory Exceptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.3.2 News Aggregators and Media Monitoring Services (Article 11 of the Proposal and Article 15 of the Final Directive) . . . . . . . . . . . . . . . . . . . . . . . . . 11.3.3 OCSSPs and Safe Harbour (Article 13 of the Proposal and Article 17 of the Final Directive) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.4 Deliberations in the United States . . . . . . . . . . . . . . . . . . . . . . . . . . 11.4.1 Congressional Hearings . . . . . . . . . . . . . . . . . . . . . . . . . . 11.4.2 Report of the Study of S.512, DMCA by the Copyright Office . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.5 Internet Treaties Can Subsume Changes Needed in Safe Harbour Provisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.6 Other Types of Regulation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.7 Regulation of New Intermediaries as Purveyors of Objectionable Content . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.7.1 United States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.7.2 European Union . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.7.3 India . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Appendix: Australia’s News Media and Digital Platforms Mandatory Bargaining Code . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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12 WIPO’s Policy Environment and Performance (1997–2021) . . . . . . . 12.1 Lull Before the Storm . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.2 TRIPs Agreement: Shift in Balance of Power . . . . . . . . . . . . . . . . 12.3 Doha Declaration Spurs A2K Movement . . . . . . . . . . . . . . . . . . . 12.4 WIPO Development Agenda . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.4.1 Implementation of Development Agenda . . . . . . . . . . . . 12.5 Revisionist Perception of the Internet Treaties . . . . . . . . . . . . . . . 12.6 Treatymaking Stalemated . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.6.1 Broadcasting Treaty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.6.2 A2K Treaty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.7 Forum Shifting Again: The ACTA Fiasco . . . . . . . . . . . . . . . . . . . 12.8 Beijing Treaty on Audiovisual Performances, 2012 . . . . . . . . . . .

251 251 254 255 257 261 263 264 265 267 271 276

213 217 218 219

219

223 233 233 235 236 237 240 240 240 241 242 244

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12.9 Marrakesh Treaty, 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 280 12.10 Happy Days Here Again? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 289 Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 292 Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 299

About the Author

R. V. Vaidyanatha Ayyar was Member of the Indian Administrative Service (1966– 2003) and Secretary to Government of India in the Ministries of Culture (1997–2001) and Human Resource Development (2001–2003). After superannuation from the government, he took to teaching policy praxis at the Indian Institute of Management Bangalore, as Visiting Professor (2003–2009). He has rich and varied experience in policy and program development and implementation, particularly in the areas of education and culture, has several policy and program innovations to his credit, has extensive experience of dealing with a variety of international organizations and has negotiated many agreements in a number of fields. He has extensively explored the interface of law, education, culture, technology and economics. He led the Indian delegation to the historic WIPO Diplomatic Conference (1996) which concluded the Internet Treaties; he was also Chairman of the Drafting Committee of that conference. Over the years, apart from authoring several articles in reputed journals, he is Author of four books: Public Policymaking in India (2009), The Holy Grail: India’s Quest for Universal Elementary Education (2016), History of Education Policymaking in India, 1947–2016 (2017) and Present at Creation: The Making of Internet Treaties, 1996 (2021). He can be reached at [email protected].

xix

Abbreviations

A2K ACTA BSA BTAP CDIP CJEU CTEA DG DipCon DMCA DRM DSM Directive

E.C. EC EFF EU EUCD

FLOSS FOSS GATT GNU GPL

Access to Knowledge. Mostly used in connection with the Access to Knowledge movement Anti-Counterfeiting Trade Agreement Business Software Alliance Beijing Treaty on Audiovisual Performances, 2012 WIPO Committee on Development and Intellectual Property Court of Justice of the European Union Sonny Bono Copyright Term Extension Act, 1998 Director General WIPO Diplomatic Conference on Certain Copyright and Neighbouring Rights Questions, 1996 United States’ Digital Millennium Copyright Act, 1998 Digital Rights Management System Digital Single Market Directive, 2019 (formally known as Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on Copyright and Related Rights in the Digital Single Market and Amending Directives 96/9/EC and 2001/29/EC) European Commission European Community Electronic Frontier Foundation European Union Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society (European Union Copyright Directive for short) Free Libre/Open-Source Software Free and Open-Source Software General Agreement on Tariffs and Trade A recursive acronym for ‘GNU’s Not Unix’ GNU General Public License xxi

xxii

GRULAC HRRC IFPI ILO IP IPRS ISP KPMG Marrakesh Treaty

MPAA NAFTA NASSCOM NGO OCSSP OECD OSP P2P PrepCom QdN RIAA RMI SCCR Sect. SPLT TPM TPP TRIPs U.S. UCC UNESCO WCT WIPO WPPT WTO WWW

Abbreviations

Group of Latin American and Caribbean Countries Home Recording Rights Coalition International Federation of the Phonographic Industry International Labour Organisation Intellectual Property Indian Performing Rights Society Limited Internet Service Provider Klynveld Peat Marwick Goerdeler Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled, 2013 Motion Picture Association of America North American Free Trade Agreement National Association of Software and Service Companies Non-Governmental Organisation Online Content Sharing Service Provider Organisation for Economic Cooperation and Development Online Service Provider Peer to Peer Preparatory Committee of the DipCon La Quadrature du Net Record Industries Association of America Record Management Information WIPO’s Standing Committee on Copyright and Related Rights Section Substantive Patent Law Treaty Technological Protection Measure Trans Pacific Partnership Trade-Related Intellectual Property Rights United States of America Universal Copyright Convention United Nations Educational, Scientific and Cultural Organisation WIPO Copyright Treaty World Intellectual Property Organisation WIPO Performers and Phonograms Treaty World Trade Organisation World Wide Web

Chapter 1

Overview

Abstract This Chapter provides an overview of the main theme of the Book. Today’s digital technologies, business models for online transactions and most of the academic thinking about copyright and related rights are light years away from those in 1996. The Book examines (i) whether the provisions of the Internet Treaties and the early legislations which transposed the provisions of the Internet Treaties into regional (e.g. European Community) and national legislations (e.g. the U.S.), figuratively legacies of the Palaeolithic era of Internet and other digital technologies, have any relevance in today’s digital world, (ii) if they are still of relevance whether any parts are showing signs of wear and tear and (iii) if so, whether the fixing could be done by tinkering or whether a root and branch revision of the Internet Treaties is called for. This Chapter also gives an overview of the content of each Chapter of the Book.

December 2021 is the silver jubilee of the historic WIPO Diplomatic Conference, 1996 (DipCon)1 ; it was at this Conference that the two Internet Treaties, the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), were negotiated and adopted. These two Treaties adapted copyright and related rights to the digital era; they were transposed into European Community’s Directive, 2001, as well as the national legislation of most countries of the world. Two provisions of the Internet Treaties in particular, the legal prohibition of the circumvention of technological measures taken by rightsholders to protect their content (TPMs or digital locks), and exemption from secondary liability of intermediaries for the infringing content posted by their clients, provide the legal structure for today’s digital networked economy.2 The expansion of high-speed broadband connectivity, streaming of music and movies, e-lending of books, e-commerce and use of social media for personal networking or social and political mobilisation would have been inconceivable without the legal structure put in place by the Internet Treaties and 1

Formally known as e World Intellectual Property Organization Diplomatic Conference on Certain Copyright and Neighbouring Rights Questions; it was held in Geneva from December 2-20, 1996. 2 Senate Subcommittee Hearing (2020), Justin Hughes Statement, pp. 13–5.

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_1

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2

1 Overview

their transposition into regional and national legislations. What is remarkable about the making of Internet Treaties was that they were negotiated and adopted at a time when Internet was in its infancy, and not even science fiction writers had the faintest idea about today’s Internet and pervasiveness of online activity in personal lives and the economy. There is no precedent in the history of copyright and related rights of those rights being adapted to a technological development of whose further evolution and impact few had any idea. The making of Internet Treaties differed from every other international instrument dealing with copyright and related rights, be it before or after these Treaties, in the speed with which was they were concluded. It took nearly three odd decades for the idea of an international copyright convention to fructify as the Berne Convention, and about half a century for the idea of an international law for protecting performers and producers of phonograms to fructify as the Rome Convention. It took eight years of negotiations for the TRIPs agreement to be concluded. Compared to the TRIPs negotiations, not to speak of the Berne and Rome Conventions, the Internet Treaties were concluded, figuratively with the speed of thought, a little over three years after the impact of the emerging digital technologies began to be discussed in academia. The making of Internet Treaties is interesting by itself and has a bearing on the main theme of this Book: how well the provisions of the Internet Treaties withstood the phenomenal developments in digital technologies and the Internet over the last 25 years and how the markets for digital content admirably responded to the technological developments. Chapter 2 of this book describes briefly the negotiating history of the DipCon and its Appendix the Indian perspective of the negotiations.3 Together, they provide the backdrop to the history of the Internet Treaties over the last twenty-five years and describe the course of events at the Conference, the negotiation dynamics, the doctrinal differences and sharply conflicting economic interests underlying the stands taken by the main parties to negotiations, the national and transnational interest groups that sought to influence the negotiation process and outcomes and the process whereby the Internet Treaties were concluded. The Indian perspective, detailed in the Appendix to the Chapter, is particularly interesting for two reasons. First, it illustrates the grave challenges that developing countries had to face for meaningfully participating in the DipCon because they had little exposure to the new digital technologies and the preparatory phase was too short to provide them the time and space required to get acquainted with the relevant issues and deliberate over them. Secondly, India was counted as a developing country and at the same time it was, even by 1996, a significant producer and exporter of films and information technology products and services for which copyright is vital for survival. As a developing country, India had been a consistent champion of balancing IP on the one hand and user interest and public policy objectives on the other, and yet as a significant producer and exporter of copyrighted goods, it could not approach DipCon the way it approached the Stockholm Revision Conference (1967) or even the TRIPs negotiations. It had to develop and adopt a nuanced approach of not abandoning the principles of balance it had long espoused and at the same time support efforts to strengthen protection in the digital 3

Those interested in a more detailed treatment of the negotiations may look at Ayyar (2021).

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3

medium in a manner that would not constrict its choices as digital technologies and markets evolve. How India developed its negotiating stance and played the negotiating game would be of interest to students, experts and practitioners of multilateral negotiations as well as of intellectual property in general and copyright and related rights in particular. The Internet Treaties gave considerable flexibility to the Contracting Parties in respect of the provisions relating to the digital agenda. Therefore, the interesting question to be explored is whether there was broad similarity in the way the provisions of these treaties were transposed into national laws by different Contracting Parties, and whether WCT and WPPT can be taken to be successful examples of fostering top-down convergence4 of national laws to the emergence of cyberspace. Chapters 3, 5, 6 and 7 explore this question by comparing the provisions regarding technological measures and secondary liability of intermediaries in the national laws of the U.S., Canada and India and in the European Union Copyright Directive, EUCD (2001). While comparing these laws, the processes and politics associated with their adoption are also outlined. To jump the story, a few exceptions and variations apart, implementations laws regarding secondary liability of intermediaries, TPMs and rights management systems show considerable convergence. The history of the years since the DipCon is a chronicle of the copyright and related rights system being engulfed in crisis after crisis as high-speed digital networks and technologies threw challenge after challenge in rapid fire succession. There had been three dimensions of the challenges: the challenge of enforcement, the challenge of societal acceptance and the challenge to the conceptual underpinnings of copyright. The Internet Treaties were a little over two years old when Napster, a Peer-to-Peer (P2P) file sharing service, burst on the copyright scene and the copyright storm that Napster brought in its wake unfolded “over more than a decade as copyright owners sought to protect their works amidst the battering waves of a dynamic of promiscuous distribution platforms unlike anything seen before or anticipated”. All of the storm planning “that went into the WIPO Copyright Treaties, the DMCA (Digital Millennium Copyright Act), and ramping up of statutory damages did little to prepare …copyright owners for the onslaught”, and “the storm surge knocked out much of the music copyright system in one fell swoop”.5 As bandwidth, storage capacity and computer speed continued to improve, technological developments like the interactive Web 2.0, social media (Facebook, Instagram and so on) and online video-sharing platforms like YouTube made their appearance the technological challenges of enforcing copyright law continued to grow manifold. In an environment in which there was hardly any teenager in the U.S., Canada and Western Europe who was not using the Internet to access copyrighted content in violation of copyright law, efforts by rightsowners to enforce their rights through litigation gave the content industries a bad name and resulted in a normative backlash against copyright. The 4

Conceptually, there are four types of convergence of national laws. The first, called top-down convergence, involves the creation of multilateral treaty regimes to which nations and domestic legal systems adhere. Hughes (2003, pp. 363, 373–4). 5 Menell (2014, pp. 218, 279).

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policy environment for copyright and related rights became more complex with (i) Internet activists and civil society groups committed to privacy and digital and user rights coming to be important players in the making of copyright policy and (ii) social media facilitating policy activism immensely by facilitating the formation of social groups, their political mobilisation, online advocacy and carpet bombing of legislators with thousands of representations opposing any policy that is disliked. Efforts to strengthen enforcement provisions at the national and international levels encountered such stiff opposition that in the U.S., little headway could be made for over a decade. In contrast, the markets for digital content admirably adapted to the new situation in which, do what you might, infringement can never be eliminated and is a condition which one can only control and manage. Chapter 4 elaborates the creative destruction unleashed by technological advances, the travails of policymakers and rightsowners to curb online infringement and the creative development of new business models leading to a digital renaissance which enabled hundreds of millions of users having lawful access to an almost unimaginably rich array of digital content through these licenced services. In synch with the challenge of societal acceptability, copyright had to face academic opposition in the U.S. not only in regard to the expansion of the scope and strengthening of rights but also in regard to the basic tenets and underpinnings of copyright doctrine. Even earlier, alternative conceptions of copyright were mooted; for example, the importance of public domain and users’ rights. As early as 1981, David Lange wrote about intellectual property having grown “uncontrolled to the point of recklessness” and the imperative of “new intellectual property interests” being offset “by equally deliberate recognition of individual rights in the public domain”.6 Similarly, Ray Patterson “spent much of his scholarly life explaining that copyright was most properly understood as a “law of users’ rights”.7 Due to a confluence of events, these alternate conceptions of copyright became ideas whose time had come in the first decade of the twenty-first century. The enactment of the DMCA and worse of the Sonny Bono Copyright Term Extension Act, which extended the term of protection by another twenty years, and the normative backlash against copyright law because of the attempts by the MPPA and RIAA to take civil action against thousands of purported infringers of copyright radically altered the public perception of copyright. Once Web 2.0, YouTube and social media, and User Generated Content (UGC) became widely popular, the perception that laws made by government should not be allowed to endanger the fundamental and attractive aspects of digital technologies such as access to a cornucopia of information and awakening the innate creativity of ordinary users of Internet began to spread widely. Academic activism focused on the theme of fair use being extinguished if the recommendations of the Lehman Report were approved and the DMCA enacted; during the 2000s and 2010s, academic activism had an additional theme: the creativity of ordinary Internet users should not be smothered by senseless laws put in place at the behest of corporate interests. The change in the academic way of thinking brought about a far-reaching 6 7

Lange (1981). Litman (2011, p. 326).

1 Overview

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change in the way limitations and exceptions were conceived. As Boyle put it vividly limitations and exceptions are not just “narrow and grudging defence against an otherwise valid case for copyright infringement”; they are “uses that were never within the copyright holder’s power to prohibit”, and when “society hands out the right to the copyright holder, it carves out certain areas of use and refuses to hand over control of them”.8 Yet another reason for the challenge to the of copyright doctrine was the new modes of production of content such as UGC and social (distributive) production wherein multitude of individuals interact and communicate with one another through Internet and collaboratively produce content, examples being Wikipedia and open source software. The economic incentive that copyright offers is of no relevance to participants in social production or creators of UGC, and collective creations cannot fit the personalist copyright doctrine of authors’ right system. In the new academic way of thinking about copyright, strengthening of copyright was bad in itself but what made matters worse was that the benefits of such strengthening accrued almost exclusively to media industries so much so that “author’s right (droit d’auteur) has become a right without authors (sans auteur)”.9 The new way of thinking about copyright spread from the U.S. to the rest of the world including the European heartland of the authors’ right conception of copyright. However, copyright commentary by most academics got more scholarly and independent of the industries it studied,10 and a group of progressive copyright scholars were “constructing a new narrative of what copyright policy should be”. Consequently, the new way of thinking about copyright had little impact on real world policymaking, copyright practice and jurisprudence.11 However, the new way of thinking gave an impetus to the Access to Knowledge (A2K) movement which had considerable salience in the mid-2000s. Chapter 8 elaborates the academic challenges to the basic tenets of copyright. Chapter 9 deals with social production and attempts to enhance access by tweaking copyright law. Chapter 9 deals with the challenges posed to copyright by UGC. All in all, today’s digital technologies, business models for online transactions and most of academic thinking about copyright and related rights are light years away from those in 1996. The Internet is now “a rich tapestry of social media sites and niche networked communities, online retail giants and e-commerce side businesses, as well as an almost endless amount of music and audiovisual entertainment from major studios and publishers (as well as from performers) directly without any intermediation”12 ; back in 1996 such a possibility was unimaginable. On the top of these transformational developments, we seem to be on the verge of a new economic era with the rapid developments in fields such as artificial intelligence (AI), robotics 8

Boyle (2008, p. 66). Dusollier (2006, p. 285). 10 Bollier (2009, pp. 42, 53). 11 The Canadian Supreme Court is an exception; its ‘pentalogy’ of judgments formally endorsed users’ rights. For a crisp account of the jurisprudential revolution see Craig (2017, pp. 20–7); for more detailed treatment see Geist (2013). 12 United States Copyright Office (2020) Section 512 of Title 17, pp. 28–29. 9

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1 Overview

and the Internet of Things. Content created by AI systems reopens the perennial and awkward questions of the doctrines of copyright and related rights such as authorship, originality, fair use.13 The questions which logically arise in a retrospective of the Internet Treaties are (i) whether the provisions of the Internet Treaties and the early implementation legislations,14 figuratively legacies of the Palaeolithic era of Internet and other digital technologies, have any relevance in today’s digital world, (ii) if they are still of relevance whether any parts are showing signs of wear and tear and (iii) if so, whether the fixing could be done by tinkering or whether a root and branch revision of the Internet Treaties is called for. This Book fills a gap in the literature by elaborately addressing these questions. The anticircumvention provisions in the early implementation legislation were controversial in many countries such as the U.S. as it was apprehended that they would extinguish fair use. However, over time, opposition died down and there was increasing realisation that the anticircumvention provisions “undergirds much of [today’s] Internet economy”.15 Just the opposite was the trajectory of the provision regarding secondary liability of intermediaries.16 The ‘notice and take down’ put in place by S.512 of DMCA came to be an accepted norm over most of the world; it provided a ‘safe harbour’ to intermediaries, in other words, immunity from secondary liability subject to fulfilment of conditions such as lack of knowledge about the content entrusted by clients of the intermediaries. The appearance of interactive Web 2.0 in 2004 facilitated the emergence of new intermediaries such as Facebook and other social media and sharing platforms like YouTube which are a species apart from the intermediaries for which safe harbour was provided in the early implementation legislations. In many countries, the propriety of granting the safe harbour status to social media when they disseminate hate speech, and of allowing sharing platforms like YouTube and news aggregators like Google News to profiteer at the expense of content providers like producers of music and audio-visual content and newspapers has come to be a hot-button issue. Chapter 11 details the challenges posed by the new intermediaries to copyright law and enforcement and the public policy responses to those challenges. The most comprehensive legislation so far to address the problems arising from the new intermediaries is the highly contentious EU’s Digital Single

13

For an overview of the impact of AI on copyright and related rights see Okediji (2018), Ginsburg and Budiardjo (2019), and Gervais (2019). 14 The term ‘implementation legislation’ is legislation enacted by Contracting Parties in order to fulfill the obligations imposed by the Internet Treaties. 15 Senate Subcommittee Hearing (2020), Hughes Statement, p. 14. 16 As the use of high-speed Internet expanded the terms ‘Internet Intermediary’, or ‘Online Intermediary’ or simply ‘Intermediary’ came to be increasingly used in place of the terms ‘Internet Service Provider (ISP)’ and ‘Online Service Provider (OSP)’. ISPs only provide the services to make the customers connect to internet; OSPs on the other hand provide online services. Examples of OSPs are Google and Yahoo providing online search services, Amazon offering online shopping services. For definition and understanding of Internet intermediaries and of their economic function and economic models, see OECD (2010).

1 Overview

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Market Directive (2019) (DSM Directive)17 which did away with the safe harbour status of platforms like YouTube. Along with the EU, Australia had put in place a law to prevent free riding by online news aggregators, and the Indian Information Technology (Guidelines for Intermediaries and Digital Media Ethics Code) Rules, 2021, laid down stringent conditions for ‘significant social media intermediaries’ like Twitter and Facebook for being eligible for safe harbour status. DSM has been only the beginning of the regulation of ‘new intermediaries’; for the European Commission had come up with two proposals: (i) a Regulation on a Single Market For Digital Services (Digital Services Act 2020) in order to curb trade in illegal goods and services as well dissemination of fake news and hate speech,18 and (ii) a Digital Market Act in order to ensure that markets characterised by large platforms acting as digital gatekeepers remain fair and competitive for innovators, businesses and new market entrants.19 The two proposals together constitute a Digital Service Package which would create a safer digital space where the fundamental rights of users are protected and to establish a level playing field for businesses. Chapter 11 offers a detailed account of the challenges posed by new intermediaries and the making of new legislative initiatives. What comes out from a survey of the new legislative initiatives is that the Internet Treaties can subsume changes needed in safe harbour provisions. Whatever changes are needed in national and regional (e.g. EU) copyright laws could be made within the broad framework that the Internet Treaties put in place. Therefore, all in all, the digital provisions of the Internet Treaties have withstood the technological gales of creative destruction and phenomenal changes in the marketing and consumption of digital content. Even if the Internet Treaties needed substantial modification, such modification would have been difficult because in the early 2000s, WIPO’s copyright policy environment, like that in many countries, had changed very dramatically, and WIPO was figuratively transported on a time machine back to the long period from the 1960s to 1989 when, because of North–South confrontation, the periodic revision of the Berne Conference was given up as hopeless and dangerous. Chapter 12 narrates the developments in WIPO after the DipCon such as the emergence of a strong Access to Knowledge (A2K) movement whose votaries believed that limitations and exceptions are more important than rights, the stalemate which emerged due to the failure of the A2K movement to get a treaty on limitations and exceptions and of the developed countries to strengthen enforcement, the adoption of a Development Agenda by WIPO and its implementation, the failed attempt to negotiate a plurilateral enforcement treaty ACTA and the adoption of Beijing Treaty on Audiovisual Performances BTAP, 2012, and the Marrakesh Treaty, 2013. The Chapter ends with an exploration of the question as to whether the adoption of BTAP and the Marrakesh Treaty herald an end to the troubled times of WIPO. 17

Formally known as Digital Single Market Directive, 2019 (formally known as Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on Copyright and Related Rights in the Digital Single Market and Amending Directives 96/9/EC and 2001/29/EC). 18 Digital Services Act (2020). 19 Digital Markets Act (2020).

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Bibliography A. Articles and Books Ayyar, V. R. V. (2021). Present at creation: The making of WIPO internet treaties, 1996. Can be accessed at https://rvvayyar.com/ Bollier, D. (2009). Viral spiral: How the commoners built a digital republic on their own. New Press. Boyle, J. (2008). Public domain: Enclosing the commons of the mind. Yale University Press. Craig, C. (2017). Globalizing user rights-talk: On copyright limits and rhetorical risks. American University International Law Review, 33(1), 1–73. Dusollier, S. (2006). The Master’s tools V. The Master’s house: Creative commons V. copyright. Columbia Journal of Law and the Arts, 29(3), 271–93. Geist, M. (Ed.). (2013). The copyright pentalogy: How the supreme court of Canada shook the foundations of Canadian copyright law. University of Ottawa Press. Gervais, D. J. (2019). The machine as author. Iowa Law Review, 105, 2053–2106. Ginsburg, J. C., & Budiardjo, L. A. (2019). Authors and machines. Berkeley Technology Law Journal, 34, 343–456. Hughes, J. (2003). The internet and the persistence of law. Boston College Law Review, 44(2), 359–396. Lange, D. L. (1981). Recognizing the public domain. Law and Contemporary Problems, 44(4), 147–178. Litman, J. (2011). Reader’s copyright. Journal of Copyright Society of USA, 58, 325–353. Menell, P. S. (2014). This American copyright life: Reflections on re-equilibrating copyright for the internet age. Journal of the Copyright Society of the U.S.A., 61, 201–337. OECD. (2010). The economic and social role of internet intermediaries. Okediji, R. L. (2018). Creative markets and copyright in the fourth industrial era: Reconfiguring the public benefit for a digital trade economy. International Centre for Trade and Sustainable Development (ICTSD).

B. Official Documents European Commission/European Union Digital Markets Act. (2020). Proposal for a Regulation of The European Parliament and of The Council on Contestable and Fair Markets in the Digital Sector. COM (2020) 842 final dated December 15, 2020. Digital Services Act. (2020). Proposal for a Regulation of the European Parliament and of The Council on a Single Market for Digital Services (Digital Services Act) and amending Directive 2000/31/EC, COM (2020) 825 final dated December 15, 2020. Digital Single Market Directive. (2019). (Formally Known as Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on Copyright and Related Rights in the Digital Single Market and Amending Directives 96/9/EC and 2001/29/EC). EUCD. (2001). Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society.

Bibliography

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United States Senate Subcommittee Hearing. (2020). Statement of Justin Hughes. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on Copyright Law in Foreign Jurisdictions: How Are Other Countries Handling Digital Piracy, March 10, 2020. United States Copyright Office. (2020). Section 512 of Title 17. A Report of the Register of Copyright, May 2020.

Chapter 2

The Making of the Internet Treaties

Abstract By narrating how the Internet Treaties were negotiated and adopted, this Chapter provides a backdrop to the main theme of the Book. What was remarkable about the making of Internet Treaties is that they were negotiated and adopted at a time when Internet was in its infancy. There is no precedent in the history of copyright and related rights of those rights being adapted to a technological development whose further evolution and impact few had any idea. Nor is there any precedent for the speed with which Internet treaties were negotiated and adopted. The Appendix to this Chapter, which narrates the Indian experience of the negotiations, illustrates the grave challenges developing countries faced for meaningfully participating in the DipCon. They had little exposure to the new digital technologies, and the preparatory phase was too short to provide them the time and space required to get acquainted with the relevant issues. It also narrates how India developed and adopted a nuanced approach of not abandoning the principles of balancing copyright and public interest and at the same time strengthening protection in the digital medium in a manner that would not constrict its choices as digital technologies and markets evolve.

2.1 Prehistory The Past is not dead, it is not even past. —William Faulkner

Copyright is the child of technology. It was the invention of a new form of copying equipment—Gutenberg’s moveable printing press and the discovery of engraving— that gave rise to the original need for copyright protection. Its history thereafter is a saga of continual expansion of its scope and its adaptation to new technological developments—new modes of creation of works and new methods of fixing, reproducing and communication of works. Originally designed to cover printed material This Chapter heavily draws upon Ayyar (2021). The narration in this Chapter and its Appendix is mostly limited to the digital agenda. Audio-visual performances are an exception; they are covered in detail because it appeared that the DipCon would end in failure because the disagreements between the U.S. and the EC over audio-visual performances. © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_2

11

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(including musical scores), the scope of copyright law progressively expanded to cover artistic works like painting, drawing, sculptural works and architecture as well as newer and newer forms of creative expression like photographic and cinematographic works, as well as functional expressions like computer programmes which do not have the aesthetic qualities that are ordinarily associated with literary and artistic works. Over time, three clusters of economic rights fell into place: (i) copy-related rights of reproduction, rental and distribution involving the making and distribution of copies, (ii) non-copy-related rights such as the rights of public performance where works are made available without making a copy of the work and (iii) transformative rights of translation and adaptation involving the transformation of a work into a new derivative work. In terms of technologies, the history of copyright has three significant landmarks: (i) the invention of moveable printing and engraving which gave birth to copyright, (ii) the invention of sound recording, cinematography and broadcasting in the late 19th and early twentieth centuries and (iii) the digital revolution1 during the 1990s and 2000s which came into being by the convergence of hitherto distinct technologies of computing, telecommunication, control. The second cluster of technologies which struck the copyright landscape gave rise to two important consequences. First, it deepened the conceptual breach between the ‘Copyright’ system prevailing in the U.K. and its erstwhile colonies like the U.S. and India on the one hand and countries with the authors’ right system on the other. Corporate entities which dominated the production of phonograms and cinematographic works as well as broadcasting were protected under copyright in the ‘Copyright’ system and under neighbouring rights2 in countries with the authors’ right system. Over time, because of the Berne Convention becoming universal, there had been a great deal of convergence between the two systems; yet, the remaining doctrinal differences between the two systems of copyright were serious enough to cast a long shadow over the TRIPs negotiations as well as DipCon. The difficulty of securing an agreement gets compounded when doctrinal differences are enmeshed with conflicting economic interests, private copying of audio and video content being a good example. Neighbouring rights continue to be inferior to copyright, national treatment being a good example. Attempts during the negotiations of TRIPs and WPPT to bring national treatment in regard to performances on par with that in the Berne Convention made no headway. The second consequence was bringing to the fore the question of performers’ rights. Before the invention of sound recording and cinematography performances were ephemeral and their outreach limited to the immediate audience, a fact captured by the remark of Adam Smith that “the work of all of them (performers) perishes in the instant of its production”. Obviously, performers, being persons participating in an ephemeral event, could not lay claim to any property or personal right; after the techniques of fixing performances fell in 1

The term ‘digital technologies’ as used in the book includes digitalisation of content, uploading and downloading technologies, digital transmission, peer-to-peer file sharing, file compression, the Internet and World Wide Web. 2 After the TRIPs agreement the term ‘related rights’ displaced the term ‘neighbouring right’.

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place, there was no reason why performers, like authors, should not have rights to exercise control over the many uses to which their performances could be put to use. Yet, the progress towards performers’ rights had been glacial; the Rome Convention (1961), the first international convention to cover neighbouring rights, shied away from explicitly granting rights to performers. Performers had high hopes that their decades-long demand for performers’ rights would be fulfilled by the DipCon; their hopes were only partly fulfilled as audio-visual performances were excluded from the purview of WPPT. It was only sixteen years later, in 2012, that the quest for performers’ rights came to a happy ending with the adoption of the Beijing Treaty on Audiovisual Performances (BTAP). The adaptation of copyright law to a given development in the technology of reproduction or communication of works had been historically a slow, iterative process because adaptation had to be invariably preceded by the development of a good understanding of the technology, its impact on markets as well as a good idea of how the technology could be assimilated into copyright law. Just to cite an example, photography was around when the Berne Convention was adopted in 1886; however, it was only four Revision Conferences later, in 1948, that photographs were included in the list of ‘literary and artistic works’. And it was only forty-eight years later, at the DipCon that the WIPO Copyright Treaty, 1996 (WCT) brought the term of protection of photographs on par with other ‘literary and artistic works’. Thus, the historical tradition has been to make haste slowly, to start in an ad hoc manner with minimal rights and progressively standardise and upgrade the level of protection. The rights regime always sought to catch up with technological and commercial developments, rather than vice versa. The Internet Treaties broke from the tradition of slow, incremental adaption of copyright to technological developments; copyright and relative rights were pre-emptively adapted to the fledgling digital technologies at a time when ideas about how the digital technologies would evolve and impact on markets were no more than guesses.

2.1.1 TRIPS Rejuvenates Berne In its centenary year (1986), Berne appeared to be a static instrument; with China, the U.S., and the U.S.S.R. being not yet members, the area to which the Convention applied was not much larger than that in 1886.3 With the advent of the Universal Copyright Convention (UCC) in 1952, it had a competitor which registered more success in attracting countries like the U.S. and U.S.S.R. to be members. The Stockholm (1967) and Paris (1971) Revision Conferences which were marred by North– South confrontation, and in which the developing countries wrested special concessions for themselves, instilled such pessimism among developed countries and top functionaries of WIPO that they gave up hopes for a future revision of the Berne Convention as dangerous and hopeless—dangerous because nobody could predict 3

Ricketson (1987, p. liii).

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the outcome of a revision, and the revision might even decrease the level of protection provided in the Convention, and hopeless because it was not realistic to achieve the unanimity required for a revision because a majority of Member States were developing countries which were averse to any further strengthening of copyright protection. The Paris Revision was followed by a phase of ‘guided development’ during which WIPO promoted study and discussion on key areas where copyright and related rights lagged behind technological developments in the hope that national legislators would incorporate the recommendations of the studies and that through such incorporation international harmonisation would be promoted even without a revision of the Berne Convention; however, that hope was not largely realised. The pessimism in WIPO was further deepened when the U.S., frustrated by its efforts to strengthen patent protection and enforcement in WIPO decided to use the forthcoming trade negotiations under the aegis of GATT (the Uruguay Round) to advance its objective of a strong IP regime by negotiating a new IP instrument embedded in trade regime. All in all, the Berne Convention seemed to have a hit a plateau and its “future prospects were less than exciting”, and it appeared to be a good time to write a history of the Convention, “with a reasonable expectation that updating would not really be necessary, at least for a long time”.4 Yet such is the contingent nature of history that within five years, pessimism gave way to hope, adequate enough to embolden WIPO to set up a Committee of Experts for advice on preparing a Protocol to the Berne Convention. In another three years, the Berne Convention was firmly on its way to universality. What started as a grave threat turned out to be a great benefactor. What is fascinating about the Uruguay Round negotiations is the clash of two contrasting strategies: (i) the strategy of ferocious resistance by hard-core developing countries like India and Brazil pinning their hopes on Third World solidarity and (ii) the American strategy which sought to exploit the sharp divergence of interests underneath the apparent solidarity of Third World countries and drive deep wedges in a seemingly monolithic bloc. India, Brazil and many other developing countries strongly contended that IP being not a trade issue should not be discussed in the Uruguay Round. Many developing countries valued trade concessions more than IPR issues and did not mind giving in on IPR issues in return for trade concessions, examples being less developed countries with a slender manufacturing base and heavily dependent on a single crop like cotton or cocoa, and relatively industrialised, middle-income, export-oriented countries like the ASEAN group of countries, Republic of Korea, Taiwan and a few Latin American countries. Over the course of the negotiations the resistance of the developing countries was worn down, and a Mission Impossible successfully accomplished through a brilliant negotiating strategy matched by equally brilliant tactical moves, by fully harnessing the possibilities that a multi-sector, multi-issue, multilateral negotiations offer to link IP issues

4

Ricketson and Ginsburg (2006, p. viii).

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with trade and complementing trade concessions with the use by the U.S. of ‘Super 301’ to levy punitive tariffs on exports from the recalcitrant countries.5 In September 1989, resistance to the negotiation of IPs in the Uruguay Round ceased, and by December 1991, the final text of the TRIPs agreement was almost ready; the final TRIPS negotiated text in December 1993 made only two minor changes to the 1991 text. After 1989, doctrinal differences which were enmeshed with conflict of economic interests dominated the TRIPs negotiations rather than North–South differences. Compared to the Berne Convention, the TRIPs agreement had a few exceptional features. First, Berne Convention and its revisions sought to harmonise national laws, and the the guiding principle of revision was to make haste slowly. As unanimity was required for revision, a single naysayer was enough to block the revision; that being so, it was imperative during revision conferences to improve the acceptability of a proposal. And further, it was open for a Member State not to accede to the version that results from a revision of the Convention. A principle which enhanced the acceptability of was freedom of legal characterisation which allows a Member State the flexibility to characterise the acts and rights in a way different from those set out in the Berne Convention and to discharge the obligations under that Convention in the way it thought fit so long as the scope and level of protection are not lower than those provided by that Convention. Moral rights provide a good example of the freedom of legal characterisation. Nowhere is the divergence between the two systems of copyright as sharp as with moral rights, and without a compromise, moral rights would have never been incorporated in the Berne Convention. Article 6bis of the Convention is silent over the assignability and waivability of moral rights, implicitly leaving it to national laws to decide whether an author could waive his moral rights or assign his moral rights to the publishers. No less importantly, that Article left it to the national laws to decide how to safeguard moral rights. Consequently, many countries of the ‘Copyright’ system fulfilled their obligation of protecting the right of integrity through civil and criminal laws against defamation. In fact, when the U.S. was seriously considering accession to the Berne Convention and moral rights appeared to be one of the insurmountable hurdles Árpád Bogsch told the Congress that that the U.S. could become a member of the Berne Convention without making any changes to U.S. law for the purposes of implementing Article 6bis.6 And the Congress did not include moral rights in the American Copyright Law. Secondly, the enforcement of the provisions of that Convention was left entirely to the countries of the Union, and there was no worthwhile mechanism to ensure that Member States complied with the provisions of the Convention to which they are a party. In contrast to the Berne Convention, the TRIPs Agreement (i) embeds IPRs in the international trade system, so much so that no country can opt not to accede to TRIPs unless it chooses to opt out of world trade, and (ii) lays down substantive and procedural norms, which a Member State is required to incorporate in the national 5

For the strategy and its deployment see Sell (2003); for a concise account Ayyar (2021), and for the politics of transposing the TRIPs agreement into national patent laws see Ayyar (2009, pp. 234–63). 6 Cited in U.S. Copyright Office (2019, p. 23).

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laws within a specified time frame, and to enforce those laws effectively and broadly in the manner stipulated in the TRIPs Agreement. National laws are subject to periodic review by WTO, and other Member States can participate in such a review. And further, a Member Country can file a complaint against another Member Country before the dispute settlement mechanism on the ground that the national laws of the defendant are not consistent with TRIPs provisions, or that the enforcement is inadequate, or both. Should the dispute settlement mechanism uphold the complaint, the defendant is required to take corrective measures on the pain of trade sanctions being imposed for non-compliance. Yet for all the fear it aroused in developing countries, the TRIPs agreement did not turn out to be the ogre it was expected to be (see Sects. 12.2 and 12.7). Many experts saw in the conclusion of the TRIPs agreement the dawn of a brave new world where old-fashioned copyright no longer existed,7 IP became a branch of international trade law, and “this reconceptualization of IP law … meant a country’s interests in the IP system would be defined, asserted, defended and litigated in the domain of trade law not only for WTO members, but for all others that sought to be integrated into the global economy”,8 and WIPO was reduced to being a poor cousin of WTO. However, that was not to be. The Intellectual Property Committee (IPC), an ad hoc coalition of American companies to pursue the IP agenda at the Uruguay Round,9 successfully brought on board Árpád Bogsch, DG, WIPO; without that co-option WIPO could have been a strong adversary and could have provided institutional and technical support to the countries opposed to embedding IPRs code in the trade regime being negotiated in the Uruguay Round. A significant role was assigned to WIPO during the TRIPs negotiations; it comprised WIPO providing its invaluable in-house expertise to GATT Secretariat, a novice in the field of IPRs,10 and creating a favourable environment for strengthening IPRs in developing countries. Further, the Preamble to the TRIPs agreement did express a desire to establish a mutually supportive relationship between the WTO (the successor to GATT) and WIPO, and a technical cooperation agreement was signed between WTO and WIPO in December 1995, about twenty months after the conclusion of the TRIPs negotiations.11 By mandating that parties to the TRIPs agreement should comply with Articles 1–21 (excepting Article 6 bis) and the Appendix of the Berne Convention that agreement ensured that the Berne Convention became universal, and the Universal Copyright Convention floated in 1952 by UNESCO was reduced to an academic curiosity. Most importantly, towards the end of the TRIPs negotiations rapid advances in digital technologies began to take place and many copyright experts in developed 7

Nimmer (1995, p. 1419). Taubman (2015, pp. 21–2). 9 Sell (2003, pp. 49, 53). 10 Thus, the factual background note that GATT Secretariat prepared for the TRIPs Negotiating Group received a major contribution from WIPO in the form of a paper on the existence, scope and form of generally internationally accepted and applied standards and norms for the protection of IPRs. Otten (2015, p. 60). 11 WIPO (1995). 8

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17

countries were vaguely aware that a new digital era was about to dawn. However, it was too late to reopen the TRIPs agreement and resume complex negotiations. As a result, the U.S. turned to WIPO for expeditiously assimilating digital technologies in the international copyright and related rights regime.

2.1.2 The Digital Tsunami In terms of the challenge they posed to copyright, the new digital technologies of recording, storage and communication which entered the public arena in late 1980s and early 1990s were utterly different and unprecedented, as different from previous reproduction and communication technologies as a severe earthquake followed by a massive tsunami is from a squall. Never before did a technological development impact on all categories of content.12 Thus, photocopying could reproduce only text, and sound recording only the sound part of a film. Video recording could reproduce both the sound and images of a film. In contrast to previous reproduction technologies, the new digital technologies cover all types of content: text, sound and image or their mixes, and the quality of reproduction is so high that it is difficult to distinguish the original from its copy. In the past, at any given time copyright law coped with changes in one or two technological features such as modes of artistic creation or fixing (recording, storing), reproduction, publication and transmission of content; never did that law have to cope with simultaneous changes in all these features. So long as the computers were stand-alone without being linked to Internet and the Web, the challenge to copyright was rather limited. Once they were linked, copyright faced the challenge of a new technological paradigm that knocked down the distinction between an author and a publisher, between a private use of a content and commercial reproduction and distribution, between access to content on the one hand and storage, reproduction, distribution and communication of a content on the other, and between copy-related and non-copy-related rights as digitalised content could not be accessed or used or communicated without a copy being made in the storage of a computer. The challenge grew more and more dreadful as new technological developments made their appearance. Once Web 2.0, social media like YouTube made their appearance each and every right encompassed by copyright and related rights was challenged. Further, digital works can be easily modified and manipulated even by ordinary users, and the modification can be easily saved. The consequence of this characteristic is an enhanced possibility to obtain derivative works. And further, once digitalised and put on the World Wide Web, any work can be accessed and savoured by anyone with a computer and access to Internet anywhere in the world; with a click of the mouse one can share the work with, that is to say transmit simultaneously to, millions across the globe. All in all, the digital technologies posed in one go a mighty challenge to 12

‘Content’ has several connotations. It is used in this book as anything that is the subject of copyright or neighbouring rights protection; the use of the term ‘content’ would avoid phrases like ‘works and objects of related rights’.

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every right encompassed by the bundle of rights that together constitute copyright and related rights. The first commercial dialup Internet Service Provider (ISP) started operations in the U.S. in 1989, and the World Wide Web (Web) was released to the general public in 1991. In 1990s, there was an explosive growth of homes with personal computers and Internet connectivity in the U.S.; other advanced economies followed suit soon. That development elicited contrasting responses from content industries on the one hand and Internet visionaries likes John Perry Barlow, users (particularly computer buffs) and most academics specialising in copyright on the other. The content industries saw the emerging digital technologies as an Apocalypse which should be pre-empted by far-reaching changes in copyright and related rights law so that they have total control on content in the digital medium. The changes basically comprised: (i) specifying that the right of reproduction would legitimately include temporary and incidental reproduction and consequently would extend to accessing content in the digital medium, (ii) prohibiting the circumvention of technological protection measures (TPMs) used to control (a) access to digitalised content and (b) use of such content, (iii) prohibit tampering with digitalised systems to manage the use of digitalised content, and (iv) reduce limitations to and exceptions from copyright and related rights to the bare minimum. In contrast to the apocalyptic nightmares of content industries, visionaries like Barlow inspired many academics specialising in copyright law and users to believe that laws made by government should not be allowed to endanger the fundamental and attractive aspects of digital technologies such as access to a cornucopia of information and awakening the innate creativity of ordinary users of Internet.

2.1.3 Precocious Policy Response Hardly had the explosive growth of home computers and Internet connectivity begun when digital economy entered the policy agenda in the U.S., the EC,13 Japan and Australia; their entry in the policy agenda occurred even before there was a clear idea about the technologies and how they would evolve. To a considerable extent, the reason for the entry in the policy agenda was due to the forecasts by futurologists from the 1980s onwards that the ongoing convergence of hitherto distinct technologies of computing, telecommunication and control was setting the stage for a technological 13

The European Community (EC) was an economic association formed by six European member countries in 1957; over years, its membership increased to 28, and after Brexit, it came down to 27. The Treaty of Maastricht (1972), entered into force on 1 November,1993) created a new European Union (EU) which consisted of the European Commission (E.C.) plus the means for a common foreign policy and cooperation in justice and police matters. Only after the Treaty of Lisbon and the Treaty of the Functioning of European Union entered into force on 1 December, 2009, did EU acquire a legal persona and the competence to negotiate and conclude international treaties. For that reason, the Uruguay Round and DipCon texts use the expression ‘EC’ only. This book uses the expression EC for describing the events till 2009, and to EU thereafter.

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paradigm shift which would bring about profound and systemic structural changes in national and global economies as well as the way of life of people. In short, an El Dorado of knowledge economy was in the offing. Given that ensuring global competitiveness had come to be perceived as a prime duty of a government, the significance of preparing for the forthcoming information revolution and gaining an edge over other countries through advance measures was quickly grasped by policy wonks and policymakers in developed countries. As the investment needed to materialise the El Dorado would not be forthcoming unless the rights are secured in the digital medium amending the copyright and related rights law became an overriding priority. The legal system of the U.S. first grappled with various issues arising from the emergence of digital technologies because it has been globally the largest producer and exporter of content, and it was in the U.S. that Internet and digital technologies began to spread rapidly. Hence, willy-nilly the developments in the U.S. hog considerable attention in any account of the impact of digital technologies on the law relating to copyright and related rights. As the ‘economy, stupid’ slogan helped propel Clinton into the White House, economy was on the top of the policy agenda of the new president. In February 1993, within a month of assuming office, President Clinton formed the Information Infrastructure Task Force (IITF) to formulate policies for the new knowledge economy.14 In turn, the Information Policy Committee (IIC), one of the committees of IITF, set up in April 1993 a working group under the chairmanship of Lehman15 to study the relationship between intellectual property and the information infrastructure. In July 1994, the Lehman Group came up with a Green Paper for eliciting public opinion; the content industries strongly supported the recommendations as they were precisely those that they thought would protect their rights in the digital medium. In contrast, the recommendations evoked strong opposition from many academics specialising in copyright and fair use groups which forcefully argued that the emerging information superhighway would be transformed into a publisherdominated toll road, and fair use, traditionally a cornerstone of American copyright law, would be eliminated. The recommendations also drew fierce opposition from a set of industries which were hitherto not in the copyright policy arena such as (i) those engaged in encryption research as they felt that anti-circumvention measures would restrict their research and marketing of products based on that research even when such products had uses other than for infringement of copyright, and (ii) telecommunication networks, ISPs and OSPs which as conduit networks, transmit daily hundreds of millions of third-party messages, data and content. They contended that 14

The quaint expressions ‘national and global information infrastructures highways’, in vogue in policy documents those days, are seldom heard these days. It is noteworthy that the initial documents of the Clinton administration describing the National Information Infrastructure made little mention of the Internet. The term ‘information superhighway’ was used, but it was meant in a broader sense than the Internet and included cable TV, dialup computer bulletin boards, and many other components of infrastructure to store and communicate information. 15 Bruce Lehman was Commissioner of Patents and Trademarks during the first six years of the Clinton administration who played a lead role at the WIPO Diplomatic Conference and spearheaded far-reaching changes in American copyright law during his tenure.

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the enormous volume and speed of these communications together with technical features intrinsic to transmission (such as routing, package switching and encryption) made it well-nigh impossible for them to constantly monitor and verify all third-party communications. With minor changes, the recommendations of the Green Paper were incorporated in the Final Report16 (formally called the White Paper). Soon enough, bills were introduced in the House of Representatives to give effect to the recommendations, and as is customary in the U.S. the policy process was enmeshed with interest group politics. The interest groups arrayed on the opposite sides lobbied through their associations and ad hoc coalitions. Among such coalitions, special mention should be made of Digital Future Coalition (DFC), a grand alliance of all interests opposed to the Lehman Report and the bills based on that Report; Peter Jaszi, a professor of IP law, played a lead role in the formation and functioning of DFC. DFC could draw upon the deep purse and lobbying skills of several industries and their associations such as the Home Recording Rights Coalition (HRRC),17 the grassroots support and the public-spirited image of the American Library Association, and the brainpower of the engaged academics like James Boyle, Peter Jaszi, Jessica Litman, Jerome Reichman and Pamela Samuelson. In scholarly journals and popular press, the engaged academics blasted the premises, legal interpretation, ratiocination and conclusions of the Lehman Report and the bills based on that Report. The American policy process and politics had always been adversarial and often acrimonious. Even by American standards, the process from the constitution of the Lehman group in April 1993 to the enactment of the DMCA in October 1998, often referred to as Copyright Wars, was exceptionally acrimonious and marked by a lack of civility and moderation on both sides; personal attacks flew left, right and centre.18 Because of strong opposition, the bills introduced in the House of Representatives were stalled, and thereupon the Clinton administration decided to fast track the deliberation of the WIPO Committees of Experts and convene a diplomatic conference to adopt a treaty in synch with the Lehman Report.19 The U.S. was indeed the ‘driver’ in the runup to the DipCon, and the Lehman Report “had great influence in the discussions, and negotiations leading to the Diplomatic Conference and the adoption of the two WIPO Treaties”.20 The domestic critics of the Lehman report saw the second track as a devious ploy to sidestep domestic opposition, and use the treaties adopted by the DipCon to prevail over the Congress to enact domestic legislation which the Lehman Report had recommended. In the runup to the DipCon, the critics followed a dualtrack strategy: (i) in the domestic arena to step up opposition in ways that would ensure that the higher echelons of the Clinton administration take note of their views 16

The Final Report is referred to as the Lehman Report in this Book. HRRC was established in 1981 by the Consumer Electronic Association, an outfit of the electronic hardware industry, to protect its interests of its constituents in the litigation and in the Congress. 18 For a detailed account of the Copyright Wars see Jessica Litman (2006). For a succinct account of the Diplomatic Conference and its interest group politics see Ayyar (1998). 19 As David Nimmer put it aptly ‘events in Geneva were an “international” conference for an “American” problem’. Nimmer (1998, p. 509). 20 Ficsor (2006, p. 21). 17

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and (ii) lobby the key officials of other governments in national capitals, venues of regional meetings and the DipCon venue itself. As many as 140 non-governmental organisations (NGOs) were accredited to DipCon as observer organisations, over five time the number of such organisations which participated in the Stockholm Revision Conference (1967). Rather peculiarly, WIPO applies the term ‘NGO’ to any organisation that is independent from government, including private sector organisations. What distinguishes the interest group activism at DipCon from that at the TRIPs negotiations was the fact that DipCon was a cockpit where global and regional alliances of business groups fought each other, and that NGOs opposed to strong protection lent their support to like-minded business groups. DipCon was the first international copyright conference where academics specialising in copyright participated in the DipCon as part of the delegations representing interest groups; among those present were the distinguished copyright experts David Nimmer and Jerome Reichman.21 In contrast, during the TRIPs negotiations, the ‘Trilateral Group’, a transnational alliance of industries with strong interest in strengthening IPR regimes, had a free run. There was no countervailing force to challenge that group. It was only after the TRIPs Agreement came into force, did public health groups begin to bestir themselves to roll back the Agreement. What was significant about DipCon was the presence in large numbers of ad hoc global alliances of which American interest groups constituted the core so much so that the foyer of the venue of the DipCon was choke full of lobbyists and it looked like a Mega Bazaar with hawkers vending their wares. Just to give a flavour of transnational alliances, one of the groups which opposed the provisions of the Draft Internet Treaties relating to the digital agenda was the Commercial Internet eXchange Association. It comprised 149 firms including 3C Europe Ltd., Advantis (IBM Global Network), AT&T, British Telecom, Bull H N, International Systems Inc., Fujitsu Ltd., Hitachi, Korea Telecom, MCI Telecommunications, NEC Corporation and Sun Microsystems. An example of a group arrayed on the other side is the Computer Industry Group consisting of 24 associations including ABES (Brazil), ANIPCO (Mexico), BSA (US, including Apple Computer, IBM, Intel, Lotus, Microsoft), NASSOCOM (India) and VSI (Germany). It is interesting that divisions or affiliates of the same organisation took different positions. For example, IBM Software divisions supported the Digital Agenda as drafted; however, IBM Global Networks, as an access provider, wanted the right of reproduction and right of communication to specifically exempt ISPs and OSPs from secondary liability, and IBM as a computer manufacturer opposed the obligation regarding TPMs.22 For delegations from developing countries, the position papers furnished by different interest groups in national capitals, regional meetings and the DipCon were invaluable inputs for sizing up the contested issues. The worldwide symposia organised by WIPO at Harvard University (March– April 1993), in Paris (June 1994), Mexico City (May 1995) and Naples (October 1995) also contributed to the development of the policy thinking on the adaptation 21

David Nimmer was part of the delegation of the Computer & Communications Industry Association, and Jerome Reichman that of the International Council of Scientific Unions. 22 Ayyar (1998, pp. 23–4).

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of copyright and related rights to the digital era.23 These symposia led to clarity on what the digital agenda should comprise, how digital transmission should be treated and what international harmonisation should aim at.

2.2 The Preparatory Phase 2.2.1 WIPO Committees of Experts As mentioned above, the final text of the TRIPs agreement was almost ready by December 1991; emboldened by the progress of the TRIPs negotiations, WIPO decided in September 1991 to enact a Protocol to the Berne Convention thereby assimilating all the technological developments which took place since the last revision in 1971; a Committee of Experts was constituted to study all the relevant issues and make recommendations. The remit of the Committee included phonograms also; however, in view of the sharp differences of opinion on bringing phonograms in the purview of the Protocol WIPO constituted another Committee in September 1992 to make a similar study in the matter of related rights excepting the broadcasting right and make recommendations so that a New Instrument could be adopted by WIPO; the new instrument was expected to be more exhaustive than the Rome Convention. During the first meetings of this Committee, some participants pressed for the inclusion of the broadcasting right in the New Instrument. However, the terms of reference of the Committee were not modified because of the apprehension that the inclusion of broadcasting rights might slow down, perhaps even undermine, the conclusion of the New Instrument. As it is, there was conflict of interest among authors, performers, and producers of phonograms; bringing in broadcasters would further aggravate the conflict of interests. TRIPs negotiations reinforced that apprehension for it was not possible during the negotiations to reach a truly substantive common provision regarding broadcasting right.24 Further, at the first meeting, EC took the stand that the New Instrument should cover the rights of all performances, whether of an audio or visual or audio-visual character, and fixations of those performances. The Chairman concluded that nothing precluded the continuing discussion of the possible provisions on the rights of performers in audio-visual productions. This is how the audio-visual question staged its entry. The two Committees did the preparatory work for the DipCon, and their work culminated in the negotiating texts (technically called ‘Basic Proposals’) of WCT

23

WIPO Worldwide Symposiums at Harvard (1993), Paris (1994), and Mexico City (1995) and Worldwide Forum, Naples (1996). For a brief outline of the proceedings of these symposia see Ficsor (2002, paragraphs 4.81–4.87 at pp. 199–209). For an excellent sum up of the issues see Ficsor (1996). 24 Ficsor (2002, paragraph 2.50 at p. 75); von Lewinski (2008, pp. 511–2).

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and WPPT.25 The Committees did not start with a blank state. Even though few countries acted on the findings of the studies conducted under the aegis of WIPO and UNESCO during the phase of guided development, the studies came in handy for the Committees to proceed further; so did the deliberations of the TRIPs negotiations, and once the Committees began to consider the digital agenda the policy discussions in the U.S., EC Australia and Japan as well as the deliberations of the WIPO proved to be invaluable. The making of the provisions of the Internet Treaties relating to the digital agenda differed from every other international instrument dealing with copyright and related rights, be it before or after the DipCon, in the speed with which was they were concluded. During the final stages of negotiations of the TRIPs agreement, the WIPO Committees of Experts suspended their work for about a year (1993–4) so that Member Countries could focus on the TRIPs negotiations. When the WIPO Committees of Experts resumed their work in December 1994, digital agenda was briefly mentioned for the first time, but no discussion took place. The first serious discussion took place only in September 1995; however, even before that meeting took place the WIPO Secretariat began preparations to secure administrative and financial approvals for holding a diplomatic conference during 1996 for adopting the instruments being considered by the Committees. Most of the substantive discussions took place in the meeting in February 1996, and the discussions were rounded off in May 1996. Back-to-back with the meeting in May 1996 was a meeting of the Preparatory Committee (PrepCom) of the proposed diplomatic conference and a meeting of the Governing Bodies which approved a decision to hold the DipCon in December 1996 even though no consensus was reached on quite a number of the issues. To illustrate, in the May 1996 meeting the delegate of Chile, speaking on behalf of the Latin American and Caribbean Group, “expressed concern regarding the subjects that had not been considered in depth, including collective administration, sui generis protection for databases, the observance of rights and the matter of performers’ rights in relation to audio-visual fixations of their performances, and especially the basis on which such provisions were to be drafted”.26 The idea underlying the deliberations appeared to be to bring out the various shades of opinion on different issues in order to help the Chairman prepare the Basic Proposals; the idea was not to narrow down the differences, if not arrive at a consensus. After the Committees concluded their work, the preparatory work was expected “to move into a consultative process”, and then “the Diplomatic Conference would have the final opportunity to shape the treaty or treaties”.27 However, no consultations were held. A closed-door ‘15 + 15 + 1 + 1’ consultation meeting comprising fifteen developed countries, fifteen developing 25

During the deliberations of the first committee, the idea of a Protocol to the Berne Convention was replaced by a special agreement under Article 20 of the Berne Convention. In the negotiation texts that agreement was called the WCT, and the new instrument came to be called WPPT. 26 Committees of Experts (May 1996), paragraph 111 at p. 33. 27 Committees of Experts (May 1996), paragraph 121 at p. 37.

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countries, China and Finland was scheduled for October 1996. However, no such meeting was held and in lieu of that meeting a General Consultation meeting of all Member States was held. It was anything but a venue for informal negotiations. It is a customary practice of most international conference where multilateral instruments are negotiated and adopted that a meeting of the preparatory committee or its equivalent is held on a few occasions to reach an agreement on the procedure to be adopted by the Conference and on office bearers; further, the areas of divergence in the negotiating text are reduced to the maximum extent possible with the result only a few issues are left to the Conference to be negotiated and settled. As no such negotiations took place, almost everything was left to be negotiated by the DipCon. Disagreements over procedural matters like number of office bearers, the allocations of offices to different regions and the voting rights of EC stalled DipCon for a little over three days. It was only from 15th December, five days before the DipCon was to conclude, that serious informal negotiations began. Again, unusual for an international conference, the negotiating texts (Draft Internet Treaties and the Draft Treaty on database protection) were prepared not by the international organisation under whose aegis the Conference is held (WIPO with DipCon) but by Jukka Liedes who was Chairman of the WIPO Committees of Experts and who went on to preside over the Main Committee-I of DipCon where substantive provisions of the Internet Treaties WPPT were negotiated and finalised.

2.2.2 Jinxed Database Treaty DipCon was scheduled to consider three draft treaties: WCT, WPPT and sui generis protection of databases. The treaty on databases was indeed sui generis; it sought to create a new right that was neither copyright nor a related right. The Berne Convention protects databases which are intellectual creations, the test of intellectual creation being the use of creativity in the selection of the material which goes into the collection and the method used for collection. With the advent of new digital technologies, the making of databases became big business as data is the lifeblood of the new Information Economy, and digitalisation opened up new vistas of compiling and accessing data. With a view to give a boost to the European database industry, the EC sought to issue a directive on sui generis protection of databases which would be binding on its Member States; it was a right accruing not from creativity in compilation but from investment of either human or financial resources or both. In the February 1996 session of the Committees of Experts, EC proposed a sui generis database right on the lines it proposed in its draft directive. In the May 1996 meeting, the U.S. submitted a competing proposal. During the discussion in the Committees, experts from many countries observed that it was premature to take up for consideration the Database Treaty and suggested detailed study of the issues connected with the Database Treaty. The Chairman noted that even though “most interventions had expressed an interest in this form of protection” many delegations felt that the sui generis right required further study and consultations. Then, he went to inform the Committee that the Basic Texts of the treaties he would be submitting would include that of the database sui

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generis right; no one objected.28 Even in the PrepCom meeting, the Database Treaty “was viewed, by a number of delegations as requiring further study, and therefore premature to be dealt with by the Diplomatic Conference of December 1996”.29 However, given that both the EC and U.S. were keen to push through the Database Treaty it came to figure on the agenda of the DipCon. During the regional meetings held during the runup to the DipCon, many countries of the Asian, African, Latin American and Caribbean regions expressed the view that the Database Treaty should be deferred. During the General Consultations held just prior to the DipCon, many delegates again expressed the view that the Database Treaty should be deferred; the most telling comment was that of the Nigerian delegate Moses Frank Ekpo who pithily said, “Let us not sacrifice two treaties for the Database Treaty”. What ultimately knocked out the Database Treaty was not the opposition of a majority of the delegations but American domestic politics. Draft Internet Treaties elicited strong support as well as equally strong opposition; the interest groups arrayed against each other were evenly matched. In contrast, the Database Treaty was an orphan; it elicited virulent opposition and feeble support. Fair use groups, library associations, law publishers, meteorologists, many academics specialising in copyright law, the scientific community and even games enthusiasts were opposed. In their joint letter to Michael Kantor, U.S. Secretary of Commerce, the National Academy of Sciences, the National Academy of Engineering and the Institute of Medicine unequivocally claimed that the Database Treaty would seriously undermine the ability of researchers and educators to access and use scientific data and would have a deleterious longterm impact on the nation’s research capabilities. Jack Gibbons, President Clinton’s Science Advisor, also wrote to Laura Tyson Chairman of the National Economic Council,30 conveying concerns of the scientific community. So did the Librarian of Congress the concerns of the librarian and scientific communities. The Database Treaty drew sharply adversarial editorial comment from coast to coast. As the Sacramento Bee summed it up in its issued dated 5 December, 1996, “initial analysis [of the Database Treaty] suggests the baseball leagues would own facts such as batting averages; financial markets, judicial decisions, even weather reports could be affected. A Berkeley scholar calls it ‘the end of the public domain”’. Sacramento Bee went on to say that the Treaty had received almost no debate within the U.S. government, there had been no public hearings on the issue, and a Treaty which advances the narrow commercial interest of a few should not be allowed to sneak into international law with little debate or study.31 When the Main Committee-I met for the first time on 6th December, during his exposition of the workplan he wanted to follow, Liedes made the significant remark that the Database Treaty would be taken up only after the negotiations on WCT and WPPT were concluded. During a press conference held by the President of DipCon on 11th December, it came out that the Database Treaty 28

Committees of Experts (May 1996), paragraph 71 at p. 20. WIPO PrepCom Report (1996), paragraph 7 at p. 2. 30 The National Economic Council is part of the Executive Office of the U.S. President. 31 The article in Sacramento Bee was attached to ‘Locking up the Facts’ (1996), one of the countless documents with which delegates were bombarded at Chiang Mai and later at the DipCon. 29

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was being abandoned. Suffice to say, the Database Treaty exited from the DipCon unsung and unmourned.

2.3 DipCon 2.3.1 High Drama of DipCon Multilateral negotiations are usually high drama marked by spectacular swing of fortunes. The sequence of events would be such that after a slow start, negotiations move to the brink of collapse and failure. When all hope is lost, a knight in shining armour miraculously rescues the negotiations. After a few such sequences, the negotiations come to a happy ending and conclusion of an agreement.32 More often than not, agreement is secured by resorting to constructive ambiguity, that is to say deliberate use of ambiguous language to secure agreement on a sensitive issue. Constructive ambiguity is employed not only to disguise an inability to resolve a question on which the parties remain far apart but also to do so in a manner that enables each party to the negotiation to claim victory. Forcing a resolution of one or more of the sensitive issues during the negotiations may place unbearable strain on the negotiations and may lead to the breakdown of negotiations. Rather than let the negotiations collapse, the parties agree to deliberately use ambiguous language on sensitive issues in the expectation that they can resolve the other issues and later return to the unresolved issues. There is much truth in a French saying that there could be no treaties without conflicting mental reservations.33 To jump the story, agreement on a few provisions of WCT and WPPT was secured through constructive ambiguity. Whatever, when the DipCon was deadlocked over the question of offices it was Bogsch, DG, WIPO, who played the role the knight-in-armour by brokering an agreement. From 6th December to 12th December, Main Committee-I was mainly engaged in collecting the opinions of the delegates over the substantive provisions of Draft WCT and Draft WPPT. On the afternoon of 12th December Chairman Jukka Liedes presented a Partly Consolidated Text of WCT; that text was supposed to indicate where consensus was possible and where more intense discussion was needed. The release of Liedes’s Partly Consolidated Draft of Treaty-I on 12th afternoon triggered a violent, volcanic eruption of indignation, particularly from the delegates from several Asian, African and Latin American delegations as they felt that their points of view were not reflected in the texts.34 A comparison with the Chairman’s Draft produced during the TRIPs negotiations would bring out vividly why the Partly Consolidated Draft triggered a violent volcanic eruption of indignation. It took a long time for Lars Anell, Chairman of the 32

Ayyar (2009, p. 89). Lax and Sebenius (1986, p. 97). 34 Greenstein (1996), 12 December, 1996. 33

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TRIPs Negotiating Group, to convince the delegations of the need for a composite text for carrying forward the negotiations. The composite text was agreed to only when Anell promised that nothing would be discarded, and “literally everything that had been put on the table would be part of that composite text”.35 The composite Draft incorporated all the different proposed formulations, using square brackets and alternatives to set out all the differences. The continuing disagreements were described in the introduction. As a result of informal discussions, the formulations in square brackets became fewer and fewer, and after each round of discussions, the Chair came up with a revised draft; in all over six months six drafts were produced. Where the Chair made a suggestion, it was incorporated as a suggestion at an appropriate place of the Draft.36 The Partly Consolidated Text was the very antithesis of the Chair’s Draft in TRIPs negotiations because the Text was a selection of some of the proposals and amendments put forth by delegates as well the assessment of Liedes as to what the treaty language of some provisions would look like when consensus was reached. In retrospect, 12th December turned out to be a watershed; the delegates wrested control of the negotiations, and the fact that there was no one who steered the DipCon gave the negotiations a fluid character which did not conform to any fixed pattern. The configuration of groups varied from issue to issue, and article to article, and at the end of the day, the treaties which came out of the Conference were considerably different from the Draft Internet Treaties in many respects. The fracas over the Partly Consolidated Texts pushed the DipCon into a crisis which led to the prime movers of the DipCon to seriously think anew about managing the DipCon and ensuing that it does not end in failure. A deadline was fixed for submission of amendments to Draft Internet Treaties, and it was decided to hold informal sessions of Main Committee-I in order to hasten agreement. The high-sounding credo ‘open covenants openly arrived’ is good in theory but suboptimal in practice; with negotiations in an open setting and with representatives of all the interest groups accredited to an international conference being present it is difficult for the negotiators, particularly those from countries with vibrant interest group politics, not to play to the gallery. Informal negotiations, from which interest groups were excluded, “make negotiations smoother as delegates could exchange views in confidence facilitating the negotiation and compromise that are necessary to reach agreement on complex issues”.37 But for the informal sessions of the Main Committee-I, the DipCon could not have concluded WCT and WPPT so swiftly in just five days.

35

Anell (2015, p. 366); also see Gervais (1998, paragraphs 1.22–5, pp. 17–19). Otten (2015, p. 66). 37 Yu (2011, pp. 1005–6). 36

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2.3.2 The Spectre that Haunted the Uruguay Round and DipCon: Audio-visual Performances and Services The Mother of all disputes which threatened to wreck the DipCon was the audiovisual question. At the press conference of 11th December, a few reporters wondered how even a single treaty could be concluded given that just nine days were left for the closure of the DipCon. Their scepticism seemed warranted when the next day a fracas erupted over the Partly Consolidated Texts. From the 15th, business in the Main Committee-I proceeded fairly briskly in the informal sessions; however, later that day a long shadow began to hover over the DipCon like a like a Damocles’ sword. Word spread around that the informal discussions between the U.S. and EC over the rights of audio-visual performers in the WPPT were going nowhere, and that a breakdown of the discussions was very likely. It was widely talked about that Lehman could not return without a treaty and knowing that EC was insisting that if its formulation on the audio-visual question was not accepted it would try to block WCT as well. The DipCon turned out into nerve-wracking thriller, and no one was sure how it would end: would it be two treaties or one treaty or no treaty? So intricately enmeshed were doctrinal differences and differences in the way film business were organised and sharp conflict of economic interests that a Gordian knot tied up the audio-visual question. To elaborate a little, Cinema (as used here, the term includes content specially made for transmission by TV) is hydra-headed. Cinema is the pre-eminent art form which emerged during the twentieth century; it is also entertainment par excellence. Cinema and TV are also entertainment industries, Big Business, and some of them, particularly the American entertainment industries, are global Big Business. As a traded product, cultural products like films and TV content have a dual nature: they have both an economic and a cultural value, economic value in that they provide jobs, revenues and contribute to the country’s balance of trade through their exports, and cultural value in that they convey identities and values. Like Banquo’s ghost, the question that cropped again and again in the international forums like GATT/WTO and UNESCO is whether Cinema should be treated like any other traded goods or whether it should be treated differently because of its cultural value. If they are treated like any other traded goods trade liberalisation is the norm; if not, protectionism is justified for what is at stake is national identity. There is a disjunction between the kinds of organisation, ethos and rationality of cinema as art and of cinema as entertainment business. As if this were not complex enough, France legitimately takes pride in the fact that Auguste and Louis Lumière who patented the cinematograph in 1895, Georges Méliès who built one of the first film studios in 1897 and Charles Pathé, a French entrepreneur who ‘industrialised’ the production of films and dominated world cinema till the First World War were all Frenchmen. Yet by early 1920s, the reign of Hollywood in European and North and South American markets had begun, and over years Hollywood dominance grew stronger and stronger. As Hollywood penetration of European markets became deeper and deeper country after country began to put in place protective measures such as tariffs, import quotas which place

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a ceiling on the number of films which can be imported in a year, and screen quotas which stipulate that the number of foreign films screened in theatres should not exceed a certain proportion of the films screened (the rest would be of domestic origin), and subsidising local production. Far more compelling and strident than economic arguments for protection of domestic were the cultural arguments, adduced particularly in France which justified protection of national identity from ‘American cinematic invasion’, and French culture from the deadening influence of a mass-produced, foreign banal culture. Once TV became popular, the protective measures in regard to Cinema were extended to TV content. In October 1989, when the TRIPs negotiations were midway, the EC, at the behest of France, issued a directive, rather ironically called Television without Frontiers which required Member States to ensure, where practicable and by appropriate means, that broadcasters progressively reserve for works originating in the EC a majority proportion of their transmission time excluding news, sports events, games, advertising and teletext services. As the noted copyright expert William Cornish put it vividly “on the film scene in Europe Americanophobia is never far from the surface”, and “the governing law has developed in many countries in response to pressures from national film-makers and also from powerful outsiders led by Leviathan that is Hollywood”.38 During the TRIPs negotiations, the U.S. did its very best to include audio-visual services, that is to say, the production and distribution of cinematographic works,39 within the framework of the General Agreement on Trade in Services (GATS) so that trade in audio-visual services is liberalised. The American move encountered a firewall of opposition from EC, particularly France. It appeared as through the whole Uruguay Round negotiations covering several sectors and hundreds of issues and envisaging the creation of WTO would collapse due to sharp divergence of views on the single issue of audio-visual services. At the very last moment, the U.S. pulled back from the brink of collapse of the negotiations. The U.S. agreed not to insist on dismantling of trade barriers, and in return EC agreed not to raise the barriers further. Private copying was yet another vexatious issue relating to phonograms and cinematographic works where rights and the trade protection are enmeshed. Before the widespread use of home taping devices like compact cassette systems and videorecorders, private copying, that is to say, reproduction for private, personal, noncommercial use such as entertainment, research or learning was de minimis (a small thing or trifling matter about which law should not concern itself). However, as newer and newer devices for reproduction and playing the recorded material made home copying easier and easier and the quality of home copying came to be closer and closer to the quality of commercial reproduction, private copying ceased to be a trifling matter in many developed countries. In most European countries, rightsholders began to be compensated for private copying of recorded music and films by (i) conferring a right of remuneration for private copying, (ii) levying cess on the manufacturers of blank media like tapes or recording equipment or both, and 38

Cornish in Kamina (2002, p. xxi). The term ‘cinematographic work’ is used because it is the technical term used by the Berne Convention. It includes films, TV content and other audio-visual content.

39

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(iii) distributing to eligible holders of the right to remuneration the proceeds from the levies. National laws are not uniform in regard to the rates of levy, the categories of beneficiaries and their shares in the proceeds; however, many of them avoid any obligation to pay to foreign rightsowners a remuneration. Thus, Finland, Iceland and Sweden provide a sui generis remuneration right outside copyright; consequently, the national treatment principle does not apply. The Intellectual Property Code of France (1985) restricts the remuneration right for private copying only to those phonograms and video-recordings which are fixed in France. France could use the fixation requirement to exclude foreign rightsholders by virtue of the fact that the utilitarian copyright system prevalent in countries like India and the U.S. and the authors’ right system prevalent in most Member States of EU protect phonograms and cinematographic works differently. Unlike countries like India and the U.S., a corporate entity could not be an ‘author’ in the authors’ right system prevalent in EC. In the work for hire system prevalent in the Hollywood, a movie studio acquires a right to adapt a literary work, and thereafter enlists the various skills required for producing the cinematographic works through contracts. Under the U.S. Copyright law, the studio becomes straightway the author of the cinematographic work it produces. The situation in countries with an authors’ right system is more complex. The principal director of a cinematographic work and other artistic contributors specified in national law are joint authors, and the authors’ rights are transferred to the producer either through a provision in the national law or through a presumption of transfer. Phonograms are protected under neighbouring rights. Both the cinematographic work and its recording are protected, but under two separate intellectual property rights, copyright for the cinematographic work and neighbouring rights for recordings.40 Neighbouring rights are covered under the Rome Convention which does not, unlike the Berne Convention, prohibit formalities like fixing; further the scope of national treatment under the Rome Convention is narrower than that of the Berne Convention, being limited to rights conferred by the Rome Convention. Consequently, the criterion of fixation locally laid down by French law does not violate any international law, and national treatment need not be extended to the remuneration right in respect of phonograms and recordings of cinematographic works, that right being outside the rights conferred by the Rome Convention. Hollywood and the U.S. had been in high dudgeon for several decades as provisions in many national laws seem to be designed to avoid any obligation to pay to foreign rightsowners a remuneration under the principle of national treatment, thereby denying American producers of content their due share of the proceeds of levies through legal technicalities even though American content constituted the bulk of the private copying. During the TRIPs negotiations, the U.S. tried to eliminate the legal hurdles coming in the way of its content providers securing their just share in the distribution of the proceeds of levies. To that end, the U.S. proposed that (i) the national treatment under the TRIPs agreement should go beyond that of the Rome Convention and extend to all rights and not limited to the rights specifically provided by the TRIPs agreement, and (ii) corporate entities should be recognised as authors. The American 40

Kamina (2002, p. 59).

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demand did not secure enough support. France was jubilant; Jack Lang, the French Minister of Culture, declared that “it is not a victory of one country over another. It is a victory for art and artists over the commercialization of culture”.41 The Uruguay Round was not a one-sided victory for France; it lost to the U.S. on the contentious issue of moral rights in cinematographic works. The application of moral rights to cinematographic works gives rise to specific problems which are difficult to solve. Commercial exploitation of many films, not necessarily limited to Hollywood films, requires alterations to be made, “some dictated by technical requirements, some by commercial requirements, some in order to comply with censorship or administrative rules”. Moral rights, particularly the right of integrity, might come in the way of alterations such as film colourisation, cuts, editing, changes in format, dubbing, subtitles, adaptations, and marketing42 ; a telling example is the cause célèbre of The Asphalt Jungle (1950), a much-acclaimed film directed by John Huston and produced by Metro-Golden-Mayer (MGM); along with Ben Maddow, Huston also wrote the screenplay. As the film was produced in the U.S., MGM held the copyright in the film and had the full right to fully exploit its right in the film without the need to secure any approval of the Director, cast or anyone else. The film was shot in black and white. When, in 1988, Turner Entertainment obtained MGM’s permission to screen a colourised version of the film on television, Huston and Maddow sued MGM to prevent the colourised version from being shown; they were unsuccessful. In France, however, Maddow and the heirs of Huston (Huston had in the meanwhile died) were successful as they could invoke the right of integrity which prohibited any alteration to a film without the permission of the director or of the film writers of the screenplay and their heirs. The matter went all the way to the highest civil law court, the Cour de cassation, and the case revolved round the questions as to (i) who the author was and (ii) which copyright law was to be applied. Under the U.S. law, Turner Entertainment was the author of the coloured version of The Asphalt Jungle. Had the Cour de cassation decided that the U.S. law should be applied Huston would not have been recognised as author and his heirs not entitled to moral rights under the French law. In upholding the entitlement of Huston’s heirs to moral rights the Cour de cassation “stressed the international applicability of the French concepts of authorship and of these moral rights, whatever the country of the work’s origin, the nationality or domicile of the work’s creators, or the law governing the contract between creators and grantees”. Jane Ginsburg and Pierre Sirinelli characterised the decision of the Cour de cassation as “juridical imperialism” as it totally ignored the international dimension of the case, and disregarded the “choice of law” rule applied usually in cases where a choice has to be made between applying the domestic or foreign copyright law to a case.43 The retrospective and extra-territorial application of French law to a film whose colourisation was lawfully done abroad led Jean-Luc Piotraut to cite this case as an example of French courts going to “such extremes 41

Putnam (2000, p. 274). Putnam is the acclaimed producer of such classic films such as Chariots of Fire and Killing Fields. 42 Kamina (2002, p. 292). 43 Ginsburg and Sirinelli (1991, pp. 137, 141).

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with the integrity right that certain judgments may actually call into question the fairness and morality of droit d’auteur”.44 Whatever, the U.S. aggressively argued that moral rights were not a trade issue, and had its way in regard to moral rights during the TRIPs negotiations, and Article 6bis was excluded from the provisions of the Berne Convention which Member Countries of the TRIPs agreement have to comply with. France, in particular, considered the exclusion of moral rights as a humiliating setback just as it was jubilant over its success in thwarting the American move to include audio-visual services in GATS. The tenacity with which countries with authors’ right system, particularly France, demanded the inclusion of moral rights and coverage of audio-visual works in WPPT can only be explained by the lingering rancour of France over the defeat in the TRIPs negotiations. A major objective of WPPT was to confer on performers rights in regard to their live performances or performances which are ‘fixed’ in a physical medium like a phonogram or represented digitally in the digital medium, thereby putting an end to the long history of iniquitous discrimination against performances in the matter of rights. The Rome Convention did not confer any rights on the performers because of the strong opposition of authors who felt that grant of rights to performers was a nonzero-sum game45 in which they would lose financially as well as due to the opposition of some countries. The TRIPs agreement did not move beyond the Rome Convention in the matter of performers’ rights. In the WIPO Committee of Experts, there was agreement that performers should be granted economic rights analogous to rights of authors; however, there was sharp disagreement as to whether the performers’ rights should cover all types of performances including audio-visual performances or whether it should be limited to aural performances. In view of the sharp polarisation of views the Draft WPPT proposed three alternatives: (i) limiting performers’ rights to aural performances, (ii) providing performers’ rights to all types of performances and (iii) providing performers’ rights to all types of performances but permitting a party to WPPT to enter a reservation so that it has no obligation to provide performers’ rights in respect of the category of performances for which the reservation was entered. The disadvantage of entering a reservation is that national treatment would not apply to the category of performances for which the reservation was entered. During the intense bilateral negotiations during the DipCon, the U.S. position was guided by its interest in ensuring that (i) the work for hire system of production prevalent in the Hollywood would remain intact, (ii) even if performers were granted rights there should be a fool 44

Piotraut (2006, p. 606). Figuratively, the size of the ‘copyright cake’ was considered to be fixed; conferring rights on performers and producers of phonograms would result in a smaller slice being available for authors. Many authors and copyright experts adhered to the ‘cake theory’. Empirical evidence on the validity of the cake theory was rather mixed, and ‘the arguments (about the cake theory) consisted more of polemics rather than facts’. S Werner, ‘An Economic Impact Analysis of a Proposed Change in the Copyright Law’ (1977) also known as the Ruttenberg Report, Commissioned by the US Copyright Office, it was reprinted and cited in the Report of the Register on Performance Rights in Sound records held before the subcommittee of the Courts on civil liberties, and the administration of justice of the committee on the judiciary of the House of Representatives, Congress, 95th Congress, March 1978, No. 24, 118. Cited in Pavis (2016, p. 20).

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proof provision regarding transfer of rights to the producer and (iii) disputes relating to U.S. films should be adjudicated in American courts keeping in mind the unhappy experience with French courts on the issue of moral rights. During the negotiations, EC agreed to the third alternative of covering all types of performances but allowing the U.S. to enter a reservation; however, the U.S. was unwilling to accept any proposal that included reservation. The U.S. put forth an intricate compromise proposal which, among others, envisaged a “one country, two systems of protection of performers” whereby in the U.S. only foreign performers would be granted economic rights while American performers would continue to be governed by the prevailing copyright and contractual arrangements. It also provided for a mandatory presumption of transfer of rights to the producer and a “choice of law” provision which in effect provided that U.S. courts would have exclusive jurisdiction over disputes over contracts relating to rights. The American proposal was totally unacceptable to EC and almost all its Member States. After a great deal of haggling, on the afternoon of 17th December the representatives of the U.S. and EC informed the Steering Committee of the DipCon that they agreed to drop audio-visual performances from the purview of WPPT. Most Latin American and African countries were bitter about the exclusion of audio-visual performances from WPPT; the African countries saw in comprehensive performer’s rights a ray of hope for putting an end to commercial exploitation and distortion of folklore performances without the consent of the communities concerned. In view of the widespread resentment at the exclusion of audio-visual performances, one of the last acts of the DipCon was the adoption by the Plenary of a resolution calling upon WIPO to ensure that a protocol to WPPT covering audio-visual performances was adopted not later than in 1998. So tangled are the issues connected with audio-visual performances that it took sixteen years for a consensus to be reached and the BTAP to be adopted, and that too after a failed diplomatic conference in 2000.

2.3.3 Digital Agenda The digital agenda comprised six elements: (i) redefining some terms like phonogram to take into account new methods of production and making available works and performances; (ii) clarifying that downloading and storage in the memory of a computer constitutes reproduction; (iii) vesting an exclusive right in the authors to control digital transmission of their works, and vesting a similar right in (a) performers to control digital transmission of their performances and (b) producers of phonograms to control digital transmission of their phonograms; (iv) prohibiting the circumvention of TPMs which rightsholders might put in place to prevent unauthorised access to and transmission of their works/performances/phonograms; (v) prohibiting the tampering of right management system which rightsholders might put in place to track the use of their works/phonograms, and; (vi) reviewing limitations and exceptions in the digital environment. Except the redefinitions the provisions in respect of the other five elements of the WCT and WPPT were, mutatis mutandis, the same.

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In the digital agenda, redefining some terms, prohibiting the tampering of right management systems, digital transmission, and limitations and exceptions were not as contentious as prohibiting the circumvention of TPMs and clarifying that the right to reproduction. With digital technologies, sound or images need no longer be fixed on a material support (a sound carrier like tape or record or a visual carrier like tape or film). Therefore, the definition of performances in WPPT did away with any reference to ‘material’; a fixation could as well be a representation of sound or images or both from which sound or images or both can be ‘perceived, reproduced or communicated through an appropriate device’.

2.3.3.1

Digital Transmission

Creating an exclusive right in regard to digital transmission involved addressing three questions: (i) what constitutes digital transmission and how it differs from other modes of making available, (ii) whether digital transmission could be covered within one or more existing rights, if need be, through clarification or whether it could be covered only by creating a new right and (iii) how to extend immunity to ISPs and OSPs from secondary liability arising from acts of infringement by their clients. Unlike some traditional types of making available a work through performance (e.g. public recital, live performance before an audience or live broadcasting or cablecasting of a live performance) digital transmission necessitates making a transient copy of the electronic file corresponding to a digitalised work or performance; in other words, reproduction is an indispensable step in any digital transmission. In a digital delivery, a digitalised work or fixation of a performance is transmitted to the user as an electronic file which could be downloaded and converted into a tangible copy; in other words, while in traditional publishing, copies are first manufactured and then distributed, in digital delivery (which is also called electronic publication through networks or tele-reproduction), copies are produced at the recipient end after the act of dissemination. Instead of downloading, the user could savour the work or performance online provided he has, in his computer or attached to his computer, a player, which has a special programe that ‘uncompresses’ and sends video data to the display and audio data to speakers. Traditionally, with broadcasting the listener has no right to choose what he is receiving from a particular source of broadcast. In contrast, with interactive, on-demand digital transmissions the recipient can chose transmission of what he likes to savour from the collections of content available with the transmitter at a time and place of his choice so long as he has a broadband connection and the necessary equipment to receive the digital signals and convert them into sound. With interactive, on-demand digital transmissions the actual extent of the use is not determined at the moment of making available (uploading) and is not determined by the person or entity alone who or which carries out the act of making available. It is the given member of the public, who, through his “virtual negotiation” with the system, determines the extent of use, and whether the use will be deferred (through obtaining

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a more than transient copy) or direct (such as studying an online database, watching on-line moving images, listening to online music).46 There are subscription systems and services based on particular technical arrangements and programming structures which make it possible to access entire digital-quality repertoires of authors, performers and producers of phonograms provided by a given subscription service without such access being fully interactive. From the point of view of the members of the public these services are ‘near to interactive’ or ‘near on-demand’, and in many cases the only difference between interactive and ‘near to interactive’ is in the time required for access. Near to interactive services can be established by using cable or wire networks or by wireless means. Single channels offered on a subscription basis without being part of such near-interactive services do not have these effects.47 During the discussions in the Committees of Experts, there was unanimity on covering digital transmissions by an exclusive right; however, there were competing suggestions to cover digital transmission through existing rights of rental, distribution and communication to the public. The divergences were resolved by adapting the ‘umbrella solution’ outlined by Ficsor at the Worldwide Symposium, Mexico, and elaborated by him at the Worldwide Forum, Naples.48 The umbrella solution proceeded from the fact that (i) countries varied widely in transposing the provisions of the Berne Convention relating to distribution, public performance, communication to the public, public recitation and broadcasting, and (ii) bringing digital transmission within the fold of only the distribution right (as the U.S. desired) or right of communication to the public would not be acceptable to many countries because it was difficult to “get rid of categories, rights and exceptions in existing conventions and laws” and on such categories, rights and exceptions “well-established practices are based, and on the basis of them, long-term contractual relations have been formed”. The introduction of a new right in a new field was equally undesirable as it would upset existing licencing and marketing arrangements and create new uncertainties. The essence of the full umbrella solution is to identify and describe the acts involved in making available content to the public in a technology-neutral and legal characterisation-neutral way, fill the gaps in international copyright regarding the distribution right and the right of communication to the public and leave as much freedom as is necessary and reasonable to national laws for legally characterising digital transmission, in other words, national laws could characterize the acts involved in making available content to the public as communication to the public or distribution or both. A country which implements the making available right by a distribution right must exclude the exhaustion of the making available right. In formulating, the Basic Proposals Liedes took a ‘Solomonic approach’49 to resolve differences in national approaches in the Draft WCT. Article 8 of Draft WCT obligated all Contracting Parties to confer on copyright owners an exclusive right to control distributions of physical copies of protected works to the public; at the same 46

Ficsor (2002, paragraph 8.08 at p. 499). Draft WPPT, paragraphs 18.06 and 18.07, p. 78. 48 Ficsor (1996, pp. 135–7). 49 Samuelson (1996, p. 394). 47

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time, Artilce 10 treated digital transmissions as communication to the public and obligated all Contracting Parties to confer on copyright owners an exclusive right to control communications of protected works to the public. Articles 9 (relating to performers) and 16 (relating to producers of phonograms) of Draft WPPT correspond to Article 8 of Draft WCT. Similarly, Articles 11 (relating to performers and 18 (relating to producers of phonograms) of Draft WPPT corresponded to Article 10 of Draft WCT with the difference that unlike Article 10 of Draft WCT, Article 11 of the Draft WPPT bore the title ‘right of making available fixed performances’, and Article 18 bore the title ‘right of making available phonograms’. Article 10 of Draft WCT had two parts: first, expansion of the right of communication to the public in the Berne Convention to cover all works; secondly, a making available right whereby the author would have the exclusive right of communication to the public interactive on-demand transmissions, that is to say, “making available to the public of their works by wire or wireless means, in such a way that members of the public may access these works from a place and at a time individually chosen by them”. The proposal is referred to as half-umbrella solution as it adapted the umbrella solution of being not technology specific in its characterisation of the act of interactive on-demand transmission but did not adapt the other characteristic of umbrella solution, namely legal characterisation of interactive transmissions in a neutral way. It labelled the right in respect of interactive on-demand transmissions as the right of communication to the public. The umbrella was fully opened when Jeffrey Kushan made a statement in the Main Committee-I that the understanding during the preparatory work was that the rights of communication to the public, and the making available right might be implemented in different ways in national legislation as long as the acts described in those Articles were covered by the rights chose, and no delegation contested that understanding.50 The right of communication eventually adopted as Article 8 is as follows: Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis (1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.

Articles 10 (in respect of performers) and 14 (in respect of phonograms) are mutatis mutandis similar. The making available right is available only if the content is made available in a virtual rather than tangible form and excludes any type of predetermined programme that does not allow members of the public to access a particular work or recording at a particular time. Thus, the making available right “does not cover webcasting or simulcasting of predetermined programmes over the Internet, pay-TV or pay-radio, pay-per-use services; multi-channel services; and near-ondemand services that repeatedly and in regular intervals broadcast particular works or recordings”.51 All in all, the making available right in WCT and WPPT is futuristic 50 51

DipCon Records, Volume II, paragraph 301, p. 675. von Lewinski (2008, paragraph 17.76, p. 457).

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37

in that while it was designed for network transmissions, being not technology-specific it may apply to future communication technologies. The discussions on digital transmission in the informal sessions of Main Committee-I included the secondary liability of ISPs and OSPs. It was agreed to adopt an Agreed Statement in respect of Article 10 of Draft WCT (Article 8 of final text of WCT) in lieu of a specific provision about secondary liability in the Article. The first sentence of the Agreed Statement stated, “It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention”. However, it did not directly address the issue of secondary liability as during the informal discussions it was felt that the issue of liability should be dealt with by separate laws rather than by WCT and WPPT.

2.3.3.2

Limitations and Exceptions

In the DipCon negotiations, limitations and exceptions arose in three contexts: right of reproduction, obligations regarding TPMs, and general limitations and exceptions set out in Article 12 of Draft WCT, and the corresponding provisions of Draft WPPT (Articles 13 and 20). The right of reproduction was set out in Article 7 of Draft WCT. Consequent to deletion of Article 7 of Draft WCT (right to reproduction) and extensive modification to the corresponding Article 7 of Draft WPPT the limitations and exceptions relating to the reproduction right came to be covered by general limitations and exceptions. The first part of Article 12 of Draft WCT permitted Contracting Parties to provide for limitations of or exceptions to the rights granted by WCT to authors subject to the Three-Step test. The second part reiterated the extension of the Three-Step test made by Article 13 of the TRIPs agreement to all the rights conferred by the Berne Convention. Turning to WPPT, Article 15(2) of the Rome Convention sought to align the limitations on the rights granted to performers, producers of phonograms and broadcasting organisations with the limitations on the rights granted to ‘authors’. Articles 13 and 20 of Draft WPPT carry forward further that alignment. The first part of these two articles reproduces the main principle of Article 15 (2) of the Rome Convention and the second parts incorporate the Three-Step test to test the validity of a limitation proposed to be granted by a Contracting Party. Broadly speaking, three points of view were expressed during the interventions by the delegations in the Main Committee-I. The first point of view articulated the concern that the Articles should not be a ‘straight jacket’ for existing exceptions in areas that were essential for society such as education, scientific research, library activities and for meeting the needs of persons with disabilities. Contracting Parties should be permitted to carry forward and appropriately extend into the digital environment limitations and exceptions in their national laws which were considered acceptable under the Berne Convention. Contracting Parties should also be permitted to devise new exceptions and limitations that are appropriate in the digital network environment. The second point of view was that it was too early to determine in detail

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the specific exceptions and limitations. which were needed in the digital environment, and that Article 12(1) provided the necessary framework to provide the limitations needed. The third point of view strongly supported the Article as drafted because WCT was a special agreement under Article 20 of the Berne Convention, and that as per the provisions of that article WCT should grant to authors more extensive rights than those granted by the Berne Convention. Therefore, WCT should not allow the inclusion of new limitations or exceptions not to be found in the Berne Convention. After considerable discussions in the informal sessions, the draft provisions were approved, and it was decided to include an Agreed Statement to incorporate the first point of view. The Agreed Statement in respect of Article 10 of WCT (Article 12 of Draft WCT) clarified that Contracting Parties could carry forward and appropriately extend into the digital environment limitations and exceptions in their national laws which have been considered acceptable under the Berne Convention, and to devise new exceptions and limitations that are appropriate in the digital network environment (italics added). The agreed statement relating to WPPT stated that the agreed statement concerning Article 10 (on Limitations and Exceptions) of the WCT is applicable mutatis mutandis also to Article 16. Articles 12, WCT (Limitations and Exceptions) as finally adopted is as follows: (1) Contracting Parties may, in their national legislation, provide for limitations of or exceptions to the rights granted to authors of literary and artistic works under this Treaty in certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author. (2) Contracting Parties shall, when applying the Berne Convention, confine any limitations of or exceptions to rights provided for therein to certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author.

Article 16 is mutatis mutandis similar. Appurtenant to the Agreed Statements is the additional recital introduced in the Preambles of WCT and WPPT at the behest of India. The additional recital recognises the need to maintain a balance between rights of rightsholders and the larger public interest, particularly education, research and access to information. From a historical perspective, the Indian amendment to the Preamble marks a continuity of its stand in the Stockholm Revision Convention (1967) that “the protection of authors’ rights could not be considered apart from the rights of users”.52 The Indian proposal evoked a strong reaction from many delegates of countries with an authors’ right system as it spoke of not the ‘rights of authors’ but of the ‘interest of authors’; it was so drafted because from the policymaking perspective all those seeking to influence the policy, be they rightsholders or groups which espouse public interest as they see, are interests. The use of the expression ‘interests of authors’ struck a raw nerve among many copyright experts who were strongly attached to the tenets of the authors’ right system of copyright. The forcefully contended that there was a fundamental difference between the status of authors who were granted rights, and the status of 52

Sher Singh, Leader of the Indian Delegation, WIPO (1971), Volume II, paragraph 136.10, p. 807.

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39

general public “who do not enjoy rights, under any treaty, but whose interests were to be taken into account in the treaty as defences, in particular as exceptions to, and limitations of the rights, of authors”.53 Critics of the Lehman Report were delighted with the Agreed Statements and the recital added to the Preambles. Thus, Pamela Samuelson described the recital added to the Preamble of WCT as representing a major development in international copyright policy,54 and Graeme Dinwoodie observed that WCT made “the most explicit acknowledgement of the concept (of balance) on its own terms then found in a global copyright agreement”, and that “the language in question was first advanced by India during the discussions in Geneva”,55 The importance of retaining a balance in copyright set out in the Preamble to WCT also found its way in the Preambles to the BTAP and the Marrakesh Treaty. Without undue modesty, I can claim to be the ‘father’ of the additional recital to the Preamble. It is rare that historical personalities and historic events are not subjected to revisionism. The additional recital introduced in Preambles of WCT and WPPT at India’s behest is no exception. As the new millennium began to unfold and a far-reaching change took place in the way most of the American copyright scholars, and many of their West European counterparts as well, began to think about copyright, many scholars began to visualise copyright as user’s right. The title of an article of David Vaver, “Copyright and the Internet: From Owner Rights and User Duties to User Rights and Owner Duties” crisply captures the transmutation. With such transmutation, the fifth paragraph in the Preamble to WCT, introduced at India’s behest, turned out to be ‘a bad joke’,56 and not the major development in international copyright policy hailed by Pamela Samuelson and Dinwoodie.

2.3.3.3

Obligations Concerning Rights Management Information (RMI)

Along with the development of digital technologies, RMI systems were developed to assist the rightsowner to better keep track and monitor the use of copyrighted works. When attached to digitalised versions of works and performances such systems would also help the user know about attribution, creation and ownership interests. Figuratively, RMI would serve as a kind of licence plate for a work on the information highway. Article 14 of the Draft WCT and Article 23 of the Draft WPPT spelled out the obligations of Contracting Parties to legally protect RMI attached to protected content 53

Reinbothe and von Lewinski (2015, p. 52). Samuelson (1996, pp. 408–9). 55 Dinwoodie (2007, pp. 751–2, 754–5). 56 Vaver (2007, p. 735). Vaver faulted the fifth paragraph as finally adopted for the averment that authors had rights while the public had only interests, particularly in education, research, and access to information. Had the Indian amendment to the Preamble been approved as proposed by India been adopted it would have been unobjectionable to Vaver, for it recognised that authors also have only interests. However, for the sake of consensus the author agreed to a formulation which sought to balance the rights of authors and the interests of the public. 54

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by rightsholders. The first clause of Articles 14 of Draft WCT and 23 of Draft WPPT require Contracting Parties to make it unlawful for any person to knowingly remove or alter any electronic rights management information without authority, or to knowingly distribute, import for distribution or communicate to the public, without authority, copies of fixed performances or phonograms from which such information has been removed or in which it has been altered. A requirement for proscription is that the person who performs these acts does so knowingly. The obligation of Contracting Parties covers rights management information in electronic form only. The second clauses define rights management information. Thus, Article 14 of Draft WCT defines RMI to be information which (i) identifies the work, the author of the work and the owner of any right in the work and (ii) is attached to a copy of a work or appear in connection with the communication of a work to the public. Article 23 of the Draft WPPT is a similar provision in respect of performances and phonograms. The Notes attached to the Articles make it clear that nothing precludes a Contracting Party to provide for a broader field of application for provisions on RMI in its national legislation, or to design the exact field of application of the provisions envisaged in these Articles taking into consideration the need to avoid legislation that would impede lawful practices. Having regard to differences in legal traditions, Contracting Parties may, in their national legislation, also define the coverage and extent of the liability for tampering with RMI. In the runup to the DipCon, there had not been so much controversy regarding RMI as with TPMs. However, many equipment manufacturers felt that it was premature to have a provision in the draft treaties as there was not yet a common practice or standard technology to put copyright management information, and practical questions were yet to be resolved. As a result of the discussions of the Draft Articles and the six amendments proposed the Main Committee decided: (i) not to limit the scope of Articles to copies of content but to extend to original content also as RMI could be attached to the original content also (ii) to declare broadcasting without authority works or copies of works knowing that electronic rights management information has been removed or altered without authority an unlawful act, (iii) to establish a stronger link between the acts proscribed and the knowledge element, (iv) to include the terms and use of the content as one of the elements of the right management information, (v) to give flexibility to the Contracting Parties to choose the sanction to be applied; it could be civil, criminal, or even administrative remedies, and (vi) to attach an Agreed Statement to the Articles to the effect that infringement of any right would include the right to equitable remuneration, and that the provision regarding the RMI should not be used to impose formalities.

2.3.3.4

Obligations Concerning TPMs

Article 11 of WCT and Article 18 of WPPT outline the obligations of Contracting Parties regarding TPMs. They and many of their transpositions into national laws like DMCA in the U.S. had been very controversial. Six key issues needed to be resolved

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in the design of anti-circumvention measures57 ; they are (i) the acts of circumvention which needed to be addressed, that is to say whether circumvention of access controls should be prohibited or use controls or both58 ; if circumvention of access controls were prohibited it would create a new access right and if exceptions are not provided fair use might be extinguished, (ii) whether manufacture, distribution, sale, import, possession in the course of business of circumventing devices should also be prohibited, (iii) which type of circumventing devices should be prohibited, namely whether only those TPMs whose sole intended purpose was circumvention of TPMs or those whose primary purpose or effect was circumvention should be prohibited; the scope of prohibition would be narrower with the criterion of sole intended purpose, (iv) whether the definition of circumvention should include an element of knowledge, and if so what should be that element, (v) whether the treaties-in-the-making should only lay down broad norms and leave it to the national legislations to specify the details and (vi) the limitations and exceptions which ought to be provided. The first clause of the Article 13 of Draft WCT cast an obligation on the Contracting Parties to make it unlawful the importation, manufacture or distribution of protection-defeating devices or the offer or performance or services having the same effect. A condition for proscription was that the person performing the act knows or has reasonable grounds to know that the device or service would be used for or in the course of the unauthorised exercise of any of the rights provided for under the proposed Treaty. The second clause cast an obligation on the Contracting Parties to provide for appropriate and effective remedies against the unlawful acts referred to in the first clause. However, the second clause provided a great deal of flexibility to choose the legal remedy against the unlawful acts referred to in the first clause so long as the remedy is appropriate and effective. Hence, it was not necessary that the legal remedy against anti-circumvention devices or services should be covered by copyright law; it could be located in criminal law or civil law or public administrative law so long as the remedy is “expeditious so as to prevent circumvention and abuse and dissuasive so as to constitute a further deterrent to further circumvention and abuse” (emphasis in the original).59 Clause 3 defined a protection-defeating device; the definition rejected the sole intended effect or purpose criterion for determining whether a device was protection-defeating; it opted for primary effect or purpose criterion. A protection-defeating device was defined to be “any device, product or component incorporated into a device or product, the primary purpose or primary effect of which is to circumvent any process, treatment, mechanism or system that prevents or inhibits any of the acts covered by the rights under this Treaty”. Article 22 of Draft WPPT is mutatis mutandis similar. It is significant that the two Articles proscribe the business of making available circumventing devices and services (or to use jargon ‘preparatory acts’) rather than the act of circumvention. 57

These are legal measures that prohibit circumvention of TPMs. Use controls control access to content. Use controls (also called copy or exploitation or rights controls) protect against copying, adapting, and publicly communicating protected works as well as distributing of physical copies once access is secured. 59 Reinbothe and von Lewinski (2015, paragraph 7.11. 32, pp. 172–3). 58

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After a great deal of sparring in the Main Committee-I, a formulation, arrived at as a compromise in the negotiations outside DipCon between content industries on the one hand and OSPs and ISPs, computer manufacturers, consumer electronics manufacturers and businesses engaged in encryption research on the other, was proposed by South Africa as amendment and adopted as Article 11 of WCT and Article 18 of WPPT. Article 11 as finally adopted is as follows: Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law.

Article 18 of WPPT is mutatis mutandis similar. These Articles are a good example of constructive ambiguity. Thus, Article 11 of WCT and Article 18 of WPPT cast an obligation on the Contracting Parties “to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures” but they do not define the terms ‘adequate’, ‘effective’ and ‘legal remedies’; unlike TRIPs, the Internet Treaties do not envisage review of the national implementation laws, and consequently, it is for each Contracting Party to decide what constitutes adequacy and effectiveness, and to choose the legal remedy against circumvention. The U.S. and EC could feel happy that an obligation to legally protect TPMs was incorporated in an international copyright treaty for the first time, and that Article 11 of WCT and Article 18 of WPPT did not constrict their choice to opt for a more stringent protection of TPMs. Countries like India which traditionally attempted to balance protection of rights on the one hand and public interest on the other were happy that the Articles only laid down a general framework with minimum protection. Even though constructive ambiguity spread a ‘feel good’ feeling all around, it shifted the locus of conflict from DipCon to the Contracting Parties. The lack of definitiveness provides the Contracting Parties enormous flexibility in fulfilling the obligations imposed by Article 11 of WCT and Article 18 of WPPT. A Contracting Party could take the view that its existing civil or criminal law or both provided adequate legal protection and effective legal remedies against the circumvention of effective TPMs. If it chose to amend its copyright law, there was more than one way by which such an amendment could be made. It could (i) prohibit the act of circumvention alone whereby the person circumventing would be liable or (ii) prohibit the business of providing circumvention devices and services (in jargon, referred to as ‘preparatory steps’) whereby the person providing the circumventing means would be liable or (iii) both. In turn, prohibiting the act of circumvention could comprise (i) prohibiting access controls or (ii) prohibiting use/right controls, or (iii) prohibiting both. The same alternatives apply in respect of the business of providing circumvention devices. As a result of the flexibility, transposition of these articles into national laws varied considerably.

2.3 DipCon

2.3.3.5

43

Right to Reproduction

Right from the beginning of the Berne Convention, the right to reproduction was enmeshed in controversy. Even though the reproduction right is the essence of copyright and it had always existed since the adoption of the Berne Convention in 1886, it was only eighty years later at the Stockholm Conference (1967) that the right of reproduction was formally acknowledged and expressly incorporated in the Berne Convention. Attempts during earlier revisions to incorporate the right were thwarted by objections from many parties to the Convention as they were reluctant to abandon exemptions which their national legislations already imposed on the right. The complexity of the reproduction right was compounded by the emergence of computer programmes. A programme cannot be used even for legitimate purposes without temporary reproduction and storage in the computer memory, but once a programme is so reproduced and stored there is no way to stop perfect copies of the programme to be made in external storage devices and ‘share’ it with friends. Some specialists characterised reproduction occurring in the computer’s memory as falling within the right of reproduction; however, they proposed that temporary reproduction needed for the purpose of accessing the programme and making it perceptible should be exempted from the right of reproduction. Others would not consider such temporary reproduction to be falling within the right of reproduction at all; what was not within the purview of the right to reproduction needed no exemption. The WIPO model provisions on the electronic storage of works (1990) defined the right of reproduction so as to include a work or part of it in either the internal storage unit or an external storage unit of a computer. Many experts, however, were unwilling to accept that definition. The emergence of digital networks further complicated the characterisation of the reproduction right. Sharp divergence of views about the precise characterisation of the right to reproduction and the treatment of temporary reproduction and storage which are incidental to the authorised use of a work or other content as well as to their digital transmission cast a long shadow over the deliberations of the WIPO Committees of Experts. As with computer programmes there were two schools of thought, the first holding that temporary reproduction and storage in the memory of a computer temporary fell within the right of reproduction and the second who had an opposite view. As if this were not enough divergence, the first school was divided over the question whether the legal position held by them should made explicit through a specific article in WCT or whether a mention in the Records of the Conference would suffice. The first school was also divided over the question as to how the limitations and exceptions in regard to storage incidental to digital transmission should be provided. Some were of the view that no specific limitations or exceptions were needed because the Three-Step test laid by Article 9(2) of the Berne Convention provided a sufficient legal framework to determine whether a particular act of reproduction should be exempted or not. Others took a different view and argued that the provision regarding the right of reproduction itself should spell out appropriate limitations on the right of reproduction in respect to transient and incidental reproductions whose nature and purpose justified a limitation. While

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drafting WCT and WPPT, Liedes felt that in order to firmly secure the functioning of the system of copyright and related rights in a digital future it was imperative to have a uniform interpretation of the very important right to reproduction. To that end, the first part of Article 7 of the Draft WCT dealing with the right of reproduction spelt out that the right of reproduction included “direct and indirect reproduction of their works, whether permanent or temporary, in any manner or form”. The second part of Article 7 permitted a Contracting Party to enact a national legislation which limited “the right of reproduction in cases where a temporary reproduction has the sole purpose of making the work perceptible or where the reproduction is of a transient or incidental nature” provided that “such reproduction takes place in the course of use of the work that is authorised by the author or permitted by law”; the limitation, however, was subject to the Three-Step test of Berne Convention. Articles 7 (relating to performers) and 14 (producer of phonograms) of Draft WPPT were mutatis mutandis similar. No other issue took so much of the Conference time and aroused so much passion as the right to reproduction; the audio-visual question was a far distant second. The intermeshing of (i) doctrinal differences which bordered on theological differences, (ii) strong conflict of interest between the rightsholders on the one hand and ISPs, OSPs and telecommunication companies on the other, (iii) and the strong apprehension of fair use proponents that vesting a sweeping reproduction right in the rightsowners would transform the emerging information superhighway into a rightsowner-dominated toll road and extinguish fair use turned the right of reproduction into a Gordian knot which could be cut only through voting, not once but twice, first in the Main Committee-I and then in the Plenary. Eventually, Article 7 of Draft WCT was deleted, and an agreed statement was attached to Article 1(4) of WCT to the effect that the reproduction right, as set out in Article 9 of the Berne Convention, and the exceptions permitted thereunder, fully apply in the digital environment, in particular to the use of works in digital form. The agreed statement also stated that ‘it is understood that the storage of a protected work in digital form in an electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention’. It was adopted by the Plenary with 51 votes in favour, 5 votes against, and with 30 abstentions. It was the only agreed statement voted upon by the Plenary and stretched the conclusion of the DipCon till the very last moment with the result that the DipCon came to an end just when the clock struck midnight, and 20th December gave way to 21st December, 1996. As WPPT was a stand-alone treaty, Articles 7 and 11 provided the reproduction right to performers and producers of phonograms, and an agreed statement attached to both the articles was modelled after the Agreed Statement concerning Article 1(4) of WCT. The reproduction right and agreed statement are as follows: Article 7: Performers shall enjoy the exclusive right of authorizing the direct or indirect reproduction of their performances fixed in phonograms, in any manner of form; Article 11: Producers of phonograms shall enjoy the exclusive right of authorizing the direct or indirect reproduction of their phonograms, in any manner or form. Agreed Statement: The reproduction right, as set out in Articles 7 and 11, and the exceptions permitted thereunder through Article 16, fully apply in the digital environment, in particular to the use of performances and phonograms in digital form. It is understood that the storage

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of a protected performance or phonogram in digital form in an electronic medium constitutes a reproduction within the meaning of these Articles.

2.4 Initial Reactions to the DipCon Outcomes 2.4.1 WIPO and Its Functionaries Among those who reacted to the DipCon outcomes the most jubilantly were senior WIPO functionaries. The last revision of Berne Convention was done in 1971; after a gap of a quarter of a century, WCT, a far-reaching copyright treaty was negotiated under the aegis of WIPO. No less importantly, a treaty covering related rights was never before negotiated solely under the aegis of WIPO; the Rome Convention which was negotiated under the joint aegis of ILO, UNESCO and WIPO, and the Phonogram Treaty (1974) and the Satellite Convention (1974) were negotiated under the joint aegis of UNESCO and WIPO. With the success of DipCon and adoption of the more comprehensive and forward-looking Internet Treaties, WIPO was ahead of competition; competition from WTO was at best limited to the rights of the pre-digital age.

2.4.2 Opponents of Lehman Report Opponents of the Lehman Report were delighted with the outcome of the DipCon and savoured a feeling of victory because “the Clinton administration’s agenda—an agenda that Hollywood and other major copyright industries lobbied hard for— was resoundingly defeated in the international forum”. By end of August 1996, the maximalist agenda of the Clinton administration “appeared to be well on its way to victory” with the Draft Internet Treaties putting forth in a treaty language the maximalist agenda, and senior WIPO officials and EC approving the maximalist agenda. Their fear that the rightsowners would acquire an explicit right to control browsing the Internet or every transmission of works over digital networks did not materialise. They were particularly pleased that (i) Article 7 of WCT (dealing with reproduction right) was rejected, (ii) Article 13 of Draft WCT (obligation regarding TPMs) considerably toned down, (iii) the Agreed Statement concerning Article 10 of WCT regarding limitations and exceptions provided for not only carrying forward appropriately to the digital environment the existing limitations and exceptions in national laws but for devising new limitations and exceptions that are appropriate in the digital environment. All in all, “as regards digital agenda issues”, Pamela Samuelson wrote, the WCT is “about as balanced and sensible a copyright agreement as it was conceivable to get”, and that “someday, the Geneva conference may be seen as a turning point—the time when copyright law began to take its place as one of the

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fundamental building blocks of a new world economy”.60 A few months later, she conveyed a similar assessment, in a detailed article published in a scholarly journal, on the outcomes of the DipCon.61 In the copyright wars over the enactment of DMCA, the American follow-up legislation, those opposed to DMCA faulted DMCA for going beyond WCT and upsetting the balance between copyright protection and public interests that WCT struck.62 John Browning described the outcome of the DipCon as Africa 1 Hollywood 0 because it was the African compromise proposal for Article 11 of WCT (anti-circumvention measures) that was adopted by the DipCon.63

2.4.3 Private Interest Groups On the whole, private interest groups had reason to be satisfied. The Articles dealing with the anti-circumvention provisions were based on an agreement arrived through negotiations between business interests having conflicting interests in the anticircumvention provisions (see Sect. 2.3.3.4). ISPs and OSPs had less reason to be satisfied in respect of the issue of liability for contributory infringement. The Agreed Statement in respect of Article 8 of final text of WCT only partly met their concerns and did not directly address the issue of contributory infringement liability as during the informal discussions it was felt that the issue of liability should be dealt with by separate laws rather than by Internet Treaties. Broadcasting organisations were disappointed with their exclusion from WPPT; however, in deference to the wishes of countries which strongly pleaded in the Committees of Experts for inclusion of the rights of broadcasting organisations in the New Instrument (that became WPPT), moves for better international protection of broadcasting organisations began at the WIPO international symposia in Manila (April 1997). The moves are yet to fructify as a treaty.

2.4.4 WIPO Member States Even though the U.S. and the EC did not get what all they wanted with the digital agenda they were happy with the outcome as the Internet Treaties provided a broad legal framework for the reconstruction of copyright and related rights in the digital age, and further, that that the Treaties allowed the Contracting Parties to provide for greater protection in the digital environment. For the U.S. a strong multilateral treaty was not the only string in the American bow. Once it joined the Berne Convention, with the zeal of a new convert the U.S. began to use bilateral trade agreements 60

Samuelson and Browning (1997). Samuelson (1996, pp. 434–9). 62 Samuelson (1999, pp. 528–33). 63 Browning (1997). 61

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to pursue its strategic objective of strengthening IPR regimes. Many African and GRULAC countries were unhappy that audio-visual performances were excluded from the WPPT; many African countries were also unhappy WPPT did not consider the protection of folklore. However, their feelings were assuaged by a resolution of the DipCon calling upon the WIPO to take all the necessary steps for the adoption of a protocol to WPPT dealing with audio-visual performances not later than in 1998, and the decision of WIPO to organise a forum on folklore in Phuket in association with UNESCO in April 1997, and thereby hasten the process for organising an instrument for the protection of folklore. India was happy with the negotiating outcomes all its negotiating objectives were fulfilled.

2.5 Overall Assessment The overall assessment of the DipCon by the participants as well as others present was aptly summed up by Seth Greenstein, the chronicler of the Conference. The treaties to be considered by the DipCon were intended to cover rights and obligations basic to the electronic networked environment. Even though the future of the digital technologies was not known WIPO and its Member States leapt ahead “in a matter of months, not decades”. It was inevitable that ‘tomorrow overtakes today’; however, today we “hope (against hope) that the clarity of principled thought and well-intentioned action still may create structure and meaning for decades to come”, and that over the last three weeks, we have reached “a higher promontory from which to view the future, and that our efforts secured treaties flexible enough to carry us forward into the next decades”. It was gratifying that in the end reality and reason prevailed, and overly restrictive aspects of the proposed rights under these treaties “were forsaken instead for a righteous balance among rights and the many technological and societal realities”.64 To jump the story, Greenstein’s hope that “our efforts secured treaties flexible enough to carry us forward into the next decades” was amply fulfilled because even after nearly a quarter century the structure and meaning of the Internet treaties continue to be valid, and they could withstand the creative gales of technological destruction. The only aspect of the digital agenda which is showing some signs of wear and tear is the secondary liability of intermediaries (see Chap. 10), but the fixing could be done by amending the safe harbour provisions of the early implementation legislations without in any way touching the Internet Treaties.

2.5.1 What Is Special About the TRIPs and Internet Treaties Susan Sell65 characterised the Berne Convention to be a legal instrument of the international era of IP and that the entry into force of the TRIPs agreement on January 64 65

Greenstein (1996), ‘The Final Day’. Sell (2003, pp. 10–3).

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1, 1995, marked the end of the international era and the beginning of a new global era in the history of intellectual property. Unlike in the international era, global era instruments like the TRIPs agreement do not aim at harmonisation but lay down binding minimal norms of IP protection. However, events did not unfold the way one would expect from transition for the international to global era of IP. Neither the WCT nor the WPPT, nor for that matter the two multilateral instruments related to copyright and related rights adopted after the Internet Treaties—the BTAP (2012), and the Marrakesh Treaty (2013)—lay down inflexible binding norms. The Internet Treaties provisions relating to digital transmission, technological measures and rights management systems follow the time-honoured principle of ‘freedom of legal characterisation’ which made its debut with the Berne Convention. Suffice to say, WCT, WPPT, Beijing and Marrakesh Treaties are a category distinct from the TRIPs agreement. As would elaborated below (see Sect. 12.7), the enforcement provisions of the TRIPs agreement turned out to be not inflexible. The TRIPs agreement was an aberration in that neither before the TRIPs agreement nor after it did any multilateral copyright and related rights instruments lay down binding, inflexible standards of protection. The lasting novelty of the TRIPs negotiations lay in linking negotiations over standards of IPR protection and enforcement with multilateral trade negotiations which spanned a vast range of trade issues covering many sectors. The precedent set by the TRIPs negotiations was followed in bilateral and regional trade agreements concluded by the U.S. the EC and Japan. Graeme Dinwoodie put forth the view that it is the making of the Internet Treaties “which represented a watershed moment in international copyright law” and “not the TRIPs agreement”. It was a watershed moment in that “the process that led up to the conclusion of the two Internet treaties and the conduct of the diplomatic conference at which they were considered were quite different in several respects from that which had been seen heretofore” (italics in original).66 In discussing Dinwoodie’s characterisation of the Internet Treaties, it is analytically useful to distinguish between the provisions of those treaties relating to the digital agenda from those relating to updating the long overdue minimum standards of protection of the Berne and Rome Conventions. Dinwoodie’s characterisation applies only to the provisions relating to digital agenda. The non-digital agenda sought to make up for the fact that the Rome Convention was never revised, the Berne Convention was not revised from 1971 and that the TRIPs negotiations could not fully update the Rome and Berne Conventions. Much thinking, some of which went back to 1980s, were behind the proposals relating to non-digital agenda considered by the DipCon; in fact, quite a few countries had already legislated on these proposals. A comparison with the earlier treaties would bring out the extra-ordinary pace with which the Internet Treaties were concluded. It took nearly three odd decades for the idea of an international copyright convention to fructify as the Berne Convention, and about half a century for the idea of an international law for protecting performers and producers of phonograms to fructify as the Rome Convention. It took eight years of negotiations for the TRIPs agreement to be concluded or a little over four years, if 66

Dinwoodie (2007, pp. 751–3).

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one takes into the account the fact that the final agreement only marginally differed from the Dunkel Draft of December 1991. In contrast, just 14 months elapsed between the digital agenda being seriously considered for the first time by the Committees of Experts (September 1995) and the DipCon. Internet Treaties were settled in informal negotiations in just about five days from 15-20 December. There is no precedent in international treaty-making for the speed with which Internet Treaties were negotiated and concluded. The second distinguishing character of the Internet Treaties is that the provisions in Internet Treaties relating to the digital agenda were not “received wisdom”, and did not codify “commonly held, and already nationally implemented laws”67 ; unlike the provisions of the Berne Convention the digital provisions of Internet Treaties were prospective solutions to new problems; they should be “seen as an attempt to create an international norm that would then be used to structure then-nascent national models (particularly with regard to prohibitions on circumvention of technological protection measures)”.68 Even the TRIPs agreement, in spite of its much-vaunted distinctiveness, was in large part backward looking. Even the TRIPs agreement, in spite of its much-vaunted distinctiveness, was in large part backward looking as its substantive provisions were built on existing instruments such as the Paris, Berne and Rome Conventions. All in all, the digital provisions of the Internet Treaties differed from classical copyright conventions in three respects: (i) the speed with which they were negotiated, (ii) they their laying down of a legal frame for national legislations to be enacted instead of harmonising national laws, and (iii) they being anticipatory in that they sought to adapt copyright and related rights in the nascent stage of the development of new technologies abandoning the tradition of waiting to see how the new technology would evolve, and then adapt copyright and related rights. However, in so far as they provided flexibility by following the principle of ‘freedom of legal characterisation’ they adhered to the tradition of the classical Berne Convention. Hence, it may be more apt to characterise the Internet Treaties as ‘Neo-classical’. Yet, like the TRIPs agreement, the Internet Treaties also did not make a transition to a new era or way of IP law making. BTAP was sixteen years in the making if one takes note of the fact that the issue of audio-visual performances was an unfinished agenda of that Conference. The Marrakesh Treaty was in the making for nine years if one takes note of the fact that SCCR began to informally discuss enhancing the access to printed material by visually impaired persons from 2004, and five years if one factors in the fact that it was only in 2008 that SCCR began to formally discuss a treaty for visually impaired persons to access information in useable formats and technologies69 ; it was also from 2008 that the World Blind Union and Knowledge Ecology International arranged for an expert group to propose a treaty to address access to copyrighted material for those with reading disabilities.70 Suffice to say, neither before the Internet treaties nor later was any treaty concluded with the speed 67

Dinwoodie (2000, p. 493). Dinwoodie (2007, p. 759). 69 Scheinwald (2012, pp. 449–50). 70 Yap (2017, pp. 360–2). 68

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with which the Internet Treaties were concluded. And further, quite a few countries had many provisions similar to those in the Beijing and Marrakesh Treaties; thus, a WIPO study brought out that fewer than half the Member States of WIPO had created specific exceptions and limitations to copyright for the benefit of the visually impaired.71 Suffice to say, while the making of the Internet Treaties had distinctive features which separated it not only from the previous treaties on copyright and related rights but also from those concluded later; the Internet Treaties did not in any way mark the transition to a new way of making treaties on copyright and related rights.

Appendix: An Indian Negotiator’s Tale72 Opportunity Knocks the Door The year 1995 ended with a happy note; I was promoted to the position of Additional Secretary, just one rung below the highest in the civil service ladder. The celebratory mood did not last long; in a couple of days, I found that in my new assignment I was no more than a glorified sinecure very much like most American Vice-presidents. In contrast to the custom of the Additional Secretary supervising two or three Joint Secretaries, a single joint secretary, Rudhra Gangadharan, was to report to me, and that too only in respect of a part of his charge: book promotion and copyright, considered to be an inconsequential charge- a fact vouched by the fact that a few years earlier, when the Secretary of the Department was incensed with a Joint Secretary in a rage he assigned that Joint Secretary the book promotion and copyright division, and banished him to the Curzon Road Barracks, a derelict building a kilometre away from the Department, housing the book promotion and copyright division as well as furniture and junk discarded by the Department. That division had hardly any work because under Indian copyright law, once a literary or artistic work was created the author of the work automatically acquired copyright without fulfilling any formalities. Time hung heavily on my hands, and I had few visitors and fewer files; I spent almost all the time by myself. To while away the hours I spent in office, I took to reading Stewart’s International Copyright and Neighbouring Rights. From a previous posting where I oversaw the regulation and development of the pharmaceutical industry, I acquired a fairly good understanding of the Indian Patent Law and the Paris Convention on Protection of Industrial Property; but Copyright was terra incognito, and exploring it was a fascinating voyage of discovery, and a challenge to the mind. As if to prove that life has a divinely ordained purpose, I soon found that my study was not a mere scholastic exercise but of direct and proximate relevance to 71 72

WIPO Study (2007, paragraph 2.1). Excerpted from Ayyar (2021). The excerpts are limited to only a few episodes.

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my job. Two months into my job, I came to know that WIPO would be convening a Diplomatic Conference in December 1996 to adopt a Protocol to the Berne Convention and a New Instrument which would update the Rome Convention. As my luck would have it, a week later the Copyright Division organised in collaboration with WIPO a national seminar on digital technologies and copyright.73 I acquired some idea about the treaties-in-the-making from the papers circulated for the seminar, and my interaction with Mihály Ficsor, Assistant Director General (Copyright), WIPO, Lewis Flacks, Director (Legal Affairs), IFPI and Daniel Gervais, Assistant Secretary General, International Confederation of Societies of Authors and Composers. The treaties-in-the-making were, among others, expected to remove the uncertainties which businesses of publishing and distributing literary, artistic and musical works would face because of the spread of new digital technologies of recording, scanning, storage and communication. It did not take too long for me to comprehend the true significance of the digital technologies because a decade earlier, when I held another sinecure post, I made good use of the abundant free time to study technological innovation, Schumpeter’s grand theory which related structural changes in world economy since industrial revolution to periodic technological revolutions, and contemporaneous futuristic speculation about the post-industrial information society and knowledge economy in the embryo. As I read the documents of the Seminar, it readily occurred to me that the futurologist speculations, I read about a decade earlier, were turning out to be true, and a digital reformation of society and economy was imminent. From the documents circulated for the WIPO-India Seminar and my conversation with Ficsor, Flacks and Gervais I came to know that in the face of the formidable challenge to copyright that was expected to be posed by the emerging digital technologies the U.S., EC and WIPO were keen to put in place a new international copyright framework, as comprehensive as the current state of knowledge would permit, that would anticipate and lead the development of cybermarkets and amendment of national copyright laws; in other words, they wanted to write the rules of the road for the ‘global information superhighway’ still in the making. WIPO set great store by the adoption of the treaties by the DipCon, a fact which came out during my conversation with Ficsor who counselled me and my colleagues to get ready for ‘an accelerated period of consultations’; he labelled the Protocol to the Berne Convention that the Conference was expected to adopt as the Protocol of Good Hope, a play on words given that Cape Town where the Conference was expected to be held was known as the Cape of Good Hope. My concern was that India might not be able to meaningfully participate in the DipCon and shape the treaties-in-the-making in a way that suited its interests as Internet for general users arrived only in August 1995, Internet with a dialup modem connection was terribly slow, e-mail was a novelty confined to technology buffs and even such buffs knew little about the fledgling digital technologies. As I said in my valedictory address in the concluding session of the Seminar, “there is a juggernaut which is already set in motion; you have got a

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WIPO-INDIA National Seminar (1996).

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DipCon, dates are more or less settled, the venue is more or less settled, the preparatory process almost completed, and the developed countries can rightly say well the consultation process on the digital agenda has been going on for over a year”. Attending the Seminar was a learning experience in another sense: I got acquainted with the interest group politics enveloping the arena of copyright. Looking back, the participants in the seminar took no note of the treaties-in-the-making; they were focussed on articulating their interests and concerns. The conflict of interest between authors, collecting societies and broadcasters came out vividly in the speeches of some of the participants. I realised that the making and implementation of copyright policy has to reckon with interest group politics and that the Indian response to the provisions of the treaties-in-the-making needs to take note of the conflicting views of the interest groups and harmonise those conflicting views to the maximum extent possible. My understanding of the interest group politics enveloping copyright was greatly facilitated by the course on negotiations I took at Harvard during my sabbatical. That course offered by the distinguished negotiation theorist ‘Jim’ Sebenius was a defining moment in my life, and thanks to that course I discovered the true nature of a life in government. My previous assignment gave me ample opportunities of the insights I acquired from Sebenius in my interactions and formal negotiations with a variety of bilateral, regional (the EC) and multilateral organisations. When I began my engagement with the DipCon, the fact which struck me most was the unseemly haste with which the DipCon was being convened without providing developing countries, who had little exposure to the new digital technologies, the time and space to get acquainted with the issues and deliberate over them. At the WIPO Seminar, I was inclined to look at the DipCon and the issues which would be considered at the DipCon solely from the perspective of a developing country with little exposure to the new digital technologies. I was upset that the documents furnished by WIPO for the seminar did not include any which put forth the perspective of developing countries. I mighty irritated Ficsor by bluntly asserting that India’s perception of the treaties-in the-making might not be those of WIPO; he might have wondered who the new bull in the china shop was. Some of the views I expressed at the Seminar were unnuanced, and in line with the strident rhetoric of ‘we’ (developing countries) versus ‘you’ (developed countries) that most Indian delegates used in international conferences, particularly during the TRIPs negotiations. I was also blind to the fact that in the matter of copyright the interests of India were not necessarily congruent with developing countries given that India was the leading producer of films in the world, a major producer of software and had a respectable book publishing and recorded music industry, and that Indian movie industry, in particular, was being hurt significantly because of piracy in India and neighbouring countries. Indian film and software industries stood to lose more in the digital environment. As I deeply studied the issues, I developed a more nuanced response to the issues which would be considered at DipCon. All in all, the negotiating strategy that India should adopt was adhering to the principles of balance it had long espoused and at the same time support efforts to strengthen protection in the digital medium in a manner that would not constrict its choices as digital technologies and markets evolve and would pass muster with domestic politics.

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Preparations for Negotiations Even though I was told only two months before the DipCon that I would be leading the Indian delegation, soon after the WIPO seminar I began to think about the DipCon and prepare for the negotiations there. One of the books Sebenius commended for reading by his was students The Art and Science of Negotiation by Howard Raiffa.74 It was a seminal book which imparted a precious lesson that stood me in great stead in my career: the importance of preparation for successful negotiations. The first step of the preparations was identifying national interest in respect of every issue which would come up during the DipCon, envisioning the most desirable outcomes at the DipCon in respect of each issue as well as the least desirable outcomes. At Harvard, I chanced to read Chalmers Johnson’s book MITI and the Japanese Miracle,75 and that book cast a powerful spell on me. My reading of Johnson helped me to recognise in a trice that for ascertaining national interest it would be expedient not only to have interministerial consultations but also have continual and close interaction with copyright experts and representatives of industries for which copyright protection is vital such as book publishing, recorded music, visual art, film and computer software. To that end, I suggested to my boss P. R. Dasgupta the constitution of a national resource group, a suggestion which he readily accepted. By today’s norms and mores, the omission of civil society groups is a glaring omission in the composition of that group; but then yesterday was not today, and the policy environment for copyright was so different those days. In fact, even in Canada, the U.S., and West European countries the policy environment for copyright changed only after the wide spread of high-speed Internet and emergence of social media by mid-2000s. Whatever, the resource group constituted for the DipCon received wide publicity; the Economic Times wrote an editorial recommending the constitution of a similar group for WTO. Looking around for expertise in international copyright law, I noticed that such expertise was sparse in India. Teaching of IP in universities was limited to equipping aspiring lawyers with rudiments of IP law needed for legal practice. There was hardly any research. Scarcity of expertise in policy-oriented intellectual property rights was not unique to India. It is pertinent to note that according to Lars Anell, Chairman of the TRIPs Negotiating Group, when the TRIPs negotiations began IP was a new subject, very few IP experts were posted in Geneva, and many delegations could not rely on high-level expertise even in their capitals. The yawning gap in expertise in an area increasingly important for the Indian economy spurred me to think of concerted efforts to promote multidisciplinary IPR studies; the establishment of MHRD (Ministry of Human Resource Development of which the Department of Education was a constituent) chairs for IPR studies in some universities is an offshoot of that effort. My immediate need for copyright expertise was met by Valsala Kutty, deputy secretary in the copyright division, who located an extremely gifted IP expert, Prof. N. S. Gopalakrishnan of National Law School, Bangalore. DipCon was the 74 75

Raiffa (1982). Johnson (1982).

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venue where Gopalakrishnan cut his teeth in policy advice and international treatymaking. He went on to advice the Department of Education, Ministry of Information and Broadcasting and Ministry of Commerce and Industrial Development on many different matters relating to IP and join official delegations to international conferences such as the Marrakesh Diplomatic Conference (2013). Unusual in India, he was an academic who came to straddle the world of serious academic study of IPRs and the world of policy advice and participation in international negotiations. No less importantly, as MHRD Chair of IPR and Founding Director of the Inter-University Centre for IPR Studies (IUCIPRS), Cochin University of Science and Technology, he pioneered the grooming of a new breed of IPR professionals. By a stroke of luck, a fantastic breakthrough occurred in early June 1996 when I came across Pamela Samuelson’s Copyright Grab in a bunch of articles which I used to receive from the American Center’s article alert service every month. The aggressive polemical tone of a tract by a pre-eminent scholar of IP, technology and information vividly brought out in sharp relief that from the American perspective the DipCon was an extension of the bitter policy debate over the bills introduced in the Congress in late September 1995 to give effect to the recommendations of the Lehman Report. Pamela Samuelson elaborated in quite some detail the contentious recommendations of the Lehman Report and the corresponding provisions of the Bills and explained how the bills sought to advance the interest of the copyright industry to the detriment of public interest. Pamela Samuelson’s tract was a call to arms, a clarion call to the public to enlist in the campaign against the Bills and stop the machination of ‘copyright maximalists’ in their tracks. My preparation for the DipCon was invigorated by the inputs provided by Pamela Samuelson’s tract. I learnt from Sebenius that during preparations it is imperative to know oneself and know the other. Knowing oneself involved, among others, (i) identifying one’s interest in regard to every issue under negotiation, (ii) assessing whether these different interests are congruent, and if not, what are the tradeoffs, (iii) assessing one’s best available alternative to negotiated agreement, and (iv) assessing one’s bargaining power, and the elbowroom one has in the negotiations. Knowing oneself is not limited to ascertaining what one wants from the negotiation as well as the agreement one could live with. It is also necessary to ascertain the domestic policy environment in respect of the issues being negotiated; a strong domestic consensus on the issues being negotiated would enhance the bargaining power of a party to negotiation, and conversely, a bitter domestic contest over the issues being negotiated weakens bargaining power. Developing communication strategies for shaping public perceptions and building support for the positions and outcomes the government desires is an important aspect of the preparation for negotiations. Knowing the other is a similar exercise in respect of other key parties to the multilateral negotiation. While preparing for multilateral negotiations it is important to acquire a good knowledge of the domestic politics enveloping the main issues which would be negotiated of key countries. Against this background, Pamela Samuelson’s tract was a valuable intelligence input. The DipCon was the first international conference where all the interested parties made extensive use of the Internet and Websites as well as e-mail to gather and exchange information as well as to lobby. I began to scour on the Internet information relating

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to the DipCon and the Copyright Wars raging in the U.S.; my efforts secured ample rewards. Openness of the policymaking process, adversarial interest group politics and the deep-rooted tradition of interest groups working on the media to shape public opinion and bring pressure on the government are defining features of American polity. Thanks to those features, I could garner a wealth of information useful for my preparation for the DipCon. I was in for a surprise when the record of the deliberations in the February 1996 session of the Committees of Experts were received a couple of weeks after the WIPO-India Seminar. As I pored through the record of that session, I noticed that in addition to the WIPO Internet Treaties another treaty for creating new sui generis right for databases was in the making.

The U.S. Lobbies In its bid to hasten the DipCon and ensure its success the U.S. began to lobby with the Member States of WIPO. Thus, as requested by Lehman, Kanthi Tripathi, Minister Commerce), Indian Embassy, Washington, met him and Ms. Carmen GuzmanLowrey, Associate Commissioner for International and Governmental Affairs, Patent and Trademark Office on July 31, 1996. Lehman began by saying that in the past the relations between India and the U.S., particularly in the area of patents, were not cordial; in India, there was ‘some residue’ of the old way of looking at international relations and of keeping the U.S. at a distance. But times had changed, and because of India’s advances in information technology there was now a commonalty of interest between India and the U.S. The U.S. wanted a dialogue with India on the issues to be considered by the DipCon. He also said that the negotiations at WIPO thus far had not really progressed because some of the countries sent delegations that were narrowly technical and had no idea or vision about global developments. GuzmanLowrey supplemented Lehman’s observations and listed three specific areas where the U.S. sought Indian support: (i) the American proposal on sui generis database right, (ii) anti-circumvention provisions, and (iii) the American stand on the rights of performers in audio-visual works which was contrary to that of the French. Kanthi Tripathi assured Lehman that India would not reject or object to any proposal out of pique, and the Indian responses would be based on reason and content. The subject matter of the DipCon was of considerable interest to India, especially in the areas of software, films and music. Therefore, India was open to discussions with the U.S. Six days after the meeting between Kanthi Tripathi and Lehman the Deputy Chief of the American Embassy, New Delhi presented a démarche to Gangadharan which reiterated the points made in the Tripathi-Lehman meeting. In addition, the démarche sought India’s support for a successful conclusion of the DipCon and highlighted the fact that the issues which would be considered at the DipCon issues were not North– South issues but issues of utmost relevance for ensuring that all authors and creators were protected in the ‘world of information superhighways’; without such protection, they would not make their works available in the new marketplace. The growth of the

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global information society would provide new opportunities for economic growth, job creation and cultural enrichment for all countries. The scope of performers’ rights was an issue that had long resisted comprehensive international resolution, and to achieve success of the DipCon, the scope of performers’ rights should be limited to phonograms and not extended to audio-visual works. Regarding sui generis database right, the démarche resorted to poetic licence. During the meetings in WIPO, several countries expressed concern that there would not be adequate time to fully consider and evaluate the proposals. However, the American proposals were modest in scope and were discussed extensively in several formal and informal expert group meetings. Therefore, they should not be postponed but considered at the DipCon. The American government was prepared to discuss with the Indian government any concerns or questions which the Indian government might have. Further, American experts would be available at the forthcoming Asian Group meeting in November 1996. To jump the story, there was no further bilateral contact between the two governments till the DipCon. Because of these two meetings, one in Washington D.C. and the other in New Delhi, I could get a clear picture about the stand which India should take vis-à-vis the U.S. and its proposals at the DipCon well before I left for Geneva to attend the General Consultations organised by WIPO on October 14–15, 1996.

General Consultations, Geneva (October 1996) My participation in the General Consultations gave me a foretaste of the way the DipCon would be conducted. It was made clear at the very beginning of the General Consultations that no record would be kept. The General Consultations as well as the meeting of the Asian Group were thinly attended. Unusual for it. the U.S. mounted a tiny delegation of two. I met Liedes for the first time; he played a pivotal role in the runup to the DipCon as well as during the DipCon and had the exceptional distinction of being entrusted with drafting the three draft treaties instead of the International Bureau of WIPO. In addition to drafting the negotiating texts, he also attended each of the regional meetings of the three developing country groups including the meeting of the Asian Group at Chiang Mai, Thailand (November 21–2, 1996) as well as a briefing meetings in the U.S. He informed the General Consultations that while drafting the treaties he took into account his assessment of what was acceptable to the majority of Members States; further, he proceeded from the premise that the negotiating text should be a little ambitious going much beyond the lowest common denominator of protection possible. During the General Consultations, I had an exposure to Jukka Liedes’s way of conducting meetings as if they were seminars where everyone could have his say for any length of time and any number of times. The imagery of a seminar which struck me when I sat through the General Consultations was not off the mark. In response to a question at the U.S. Briefing Session, Liedes described the discussions in the Committees of Experts he had chaired as “discussing some issues in a free space,

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like in a seminar, when we are trying to find the wisdom”.76 He seemed to believe that what was important was to keep the dialogue going, that eventually a consensus would emerge, and that he could constructively use his position as Chairman to sum up the discussions in a way that the process could be moved forward to next stage. At Geneva, I had a side meeting with Michael Scott Keplinger of the U.S. Patent and Trademark Office (PTO). I came to know from that conversation that the Bills introduced in the Congress to implement the recommendations of the Lehman Report had lapsed, and that officials of the PTO were negotiating with different groups in order to resolve the differences and arrive at an American position that could be adopted at DipCon. I guessed that the U.S. might alter its position depending on the outcome of the ongoing negotiations as well as the political scene after the Presidential and Congressional elections in November 1996. I also came to know from Keplinger that Hollywood was strongly opposed to the inclusion of audio-visual works in the WPPT. Keplinger’s observation together with the support the American Government sought in Washington D.C. as well as New Delhi for the American version of the sui generis database right as well as the exclusion of audio-visual works helped me discover that the conflict over the digital agenda was not the only conflict associated with the making of the Internet Treaties. There were conflicts among rightsholders as did among nations strongly supporting the digital agenda. At another level, during the General Consultations the differences between the U.S., the prime mover of the DipCon and the EC which strongly supported the American move to convene the DipCon early came out in the open. Each of them wanted their own proposals accepted on matters where their proposals differed such as digital transmission and sui generis database right. They had also sharply divergent views on audio-visual works as well as a few aspects of the Draft WPPT. The digital agenda was not the only unfinished agenda of the TRIPs negotiations. Both the U.S. and EC attempted to rectify the inadequacies of the Rome Convention, and because of their divergent economic interests and no less importantly, their copyright philosophies, not much progress could be made. These differences paled into insignificance when compared to the vast Atlantic Ocean which separated the American and EC’s position on audio-visual works. I did not expect the differences would remain unresolved before the DipCon convened; hence, I was totally surprised on the very first day of DipCon that they were not. At the General Consultations, I also got a hint that the Database Treaty may not pass muster with the DipCon; many Member States expressed the view that the Database Treaty was premature and needed further study and consultation, and during a luncheon meeting with me, Ficsor indicated that should the Database Treaty be not concluded by the DipCon the sui generis database right could be taken up for consideration at Phuket, Thailand where WIPO and UNESCO were organising in collaboration with the Thai government a World Forum on Protection for Folklore in April 1997. The course of events seemed to have infused pessimism in Ficsor; when I asked him why the DipCon was not being held at Cape Town he replied that the new South African Minister in charge of IP withdrew the offer to host the conference, and the Cape of Good Hope 76

US Briefing (1996, p. 68).

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was no longer a suitable venue as there was not much hope about the outcomes of the DipCon.

Negotiations Between Organisations: Securing Negotiating Mandate Negotiations at the DipCon were negotiations among Member States of WIPO. In terms of negotiation analysis, governments are organisations. Negotiations between organisations are analytically distinct from negotiations between individuals. Organisations, particularly governments, are not monolithic, rational entities approaching negotiations with utmost rationality, identifying their interests and single-mindedly pursuing those interests with a negotiating strategy chosen rationally for effectively pursuing those interests. If two organisations A and B negotiate, there are actually three negotiations: (i) internal negotiations within A, (ii) internal negotiations within B and (iii) external negotiations between A and B. External negotiations between A and B would be successful only if its outcome is consistent with the outcomes of the two internal negotiations. Government is a constellation of departments; each department having a stake in a given multilateral negotiation is a player in its own right. Thus, while the Department of Education was the nodal agency responsible for interaction with WIPO, it was not the arbiter of deciding what the government’s stand ought to be. It has to carry along other departments having a stake in the issues covered by the DipCon, particularly (i) the Ministry of External Affairs which bears the overall responsibility for India’s external relations with other countries and multilateral organisations like WIPO, (ii) the Commerce Ministry which steered the TRIPs negotiations and is the nodal ministry for WTO, and (iii) the Information and Broadcasting which as ministry in charge of films, broadcasting and television has a stake in the rights covered by Draft WPPT. Mechanisms like the Committee of Secretaries strive to reconcile the divergent interests and viewpoints of different departments. In important matters like a multilateral negotiation, the final decision-making authority is the Cabinet or one of its Committees. The negotiating mandate, as shaped by the Committee of Secretaries and approved by the Cabinet Committee on Economic Affairs comprised ten elements. First, only such obligations should be entered into which were in India’s national interest and which protect the interests of Indian industries, authors, performers and users. Second, the language of the provisions should be clear and unambiguous based on a common understanding among the Contracting Parties of what the obligations were. Third, with regard to the Database Treaty, the preferred option was deferring the treaty for further examination. In case this was not possible, then the second-best option was to ensure that there was greater clarity in the definitions, that protection was limited only to databases which were marketed, and that specific exceptions, such as those provided in the EC Directive, were provided for. Fourthly, where an obligation under the TRIPS Agreement was proposed to be incorporated in the WCT

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or the WPPT, it should be incorporated as it is in the treaty in question, without any modification of the scope or level of protection, and without any change in language lest the difference in language should lead to divergent interpretations of a TRIPs provision and its corresponding WCT or WPPT provision. Fifth, the preferred position on enforcement measures was adapting the TRIPs provisions without any reference to the TRIPs agreement. It should also be ensured that these treaties do not have any linkage to TRIPs agreement. This stand was non-negotiable. Sixth, on TPMs, the preferred option was deleting the provisions altogether as circumvention of TPMs could be dealt with by other laws. Alternately, it could be suggested that the use of TPMs to prevent infringement should be made illegal rather than prohibit the preparatory acts. Seventh, with regard to the right of distribution, the alternative which integrates distribution right with importation right should be opposed. This was non-negotiable. Eighth, the preferred option with respect to right of rentals was incorporating in WCT and WPPT what was agreed to in the TRIPs agreement without any change. In case this was not possible, then the second-best option was to go with the consensus particularly among developing countries. Ninth, regarding the phasing out of non-voluntary licences for sound recordings and primary broadcasting, the problems arising from lack of well-functioning collective administration societies should be highlighted. A transition period longer than the three years proposed should be sought. Tenth, regarding the scope of related rights, the preferred alternative was exclusion of audio-visual fixation from WPPT.

Lobbying by Interest Groups Begins As I was preparing for the forthcoming regional conference at Chiang Mai, I had a foretaste of what was in store in Chiang Mai by the visitations of two high-profile personalities. The first visitor was Suresh Mathur, a retired officer who had been Secretary in the Ministry of Commerce and Industrial Development, and after retirement was working for American Telephone and Telegraph Company (AT & T). He said his employers were keen that the treaties should not saddle them with liability for infringement of rights by third parties and further, should not be burdened with the responsibility for monitoring the content they were transmitting to check whether there was any infringed material which they were transmitting. Many telephone companies had come together and set up an Ad Hoc Copyright Coalition to protect against measures in the treaties-in-the-making which might hurt them. Alerted by Mathur, I later ascertained details about the Ad Hoc Copyright Coalition. The Coalition comprised twenty-five American telecommunication companies, ISPs and OSPs including MCI Communications, AT & T, America Online, Netscape and the U.S. Telephone Association. It was formed to oppose the American legislation based on the Lehman Report and targeted the DipCon once it became clear that the Clinton Administration was following a dual-track strategy to implement the recommendations of the Lehman Report.

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The very next day after Mathur met me, I had another high-profile visitor who was as different from Mathur as chalk was from cheese and who lobbied for exactly the opposite position on the three contentious elements of the digital agenda giving chapter and verse. Denis de Freitas was an authority on copyright who had been Chairman of the British Council for thirteen years (1973–89) and played a leading role in the establishment of national collecting societies in many countries including the Copyright Licensing Agency and the Authors’ Licensing and Collecting Society in United Kingdom. His expertise in copyright law, talent for clarity, ability for bringing together competing interests and effecting sensitive compromise were widely recognised and his expertise was sought not only by a variety of governments (the United Kingdom as well as countries in Asia, Africa and North America) but also by WIPO, the EC and Commonwealth Secretariat. He had been Chairman of the Legal and Legislation Committee of the International Confederation of Societies of Authors and Composers and a long-time consultant to the IFPI, which represents the recording industry worldwide. All in all, he was an eminent personality and meeting him was a privilege. When Denis turned up in his office, I found him a charming man of the world; he began the meeting by presenting me a copy of a study on the impact of digital technology on copyright commissioned by IFPI as well as IFPI’s position paper on Draft WPPT. As could be expected from a world-renowned expert on copyright, he filled me in on all the provisions of Draft WPPT of immediate relevance to IFPI, the position of IFPI in respect of each such provision and justification for that position. He outlined how the digital technologies had already begun transforming how music was created, recorded and marketed and observed that the next two decades would witness further transformation of the music industry. An industry built upon distributing physical copies of phonograms was becoming an industry which would rely on transmission of services to satisfy the public demand for music. The services would not be limited to digital delivery of recorded music; they would also offer interactive programming services enabling many to dispense with the ownership of copies of recorded music. Rights in phonograms would be administered electronically, transforming many aspects of licencing, accounting, and monitoring of usage, and distribution of income among authors, performers and produces. All in all, the new digital technologies present the recorded music industry with great opportunities and at the same time they pose great dangers which might undermine its economic viability through infringement on a scale hitherto inconceivable. It was imperative to empower the industry to curb infringement by (i) conferring exclusive rights on producers of phonograms to authorise or prohibit commercially significant uses of phonograms in the digital medium and (ii) providing legal protection for the technological measures producers use to secure recorded music against unauthorised use, and to administer rights in phonograms. While the relevant provisions in Draft WPPT do go away a long way in enabling the industry to curb infringement in the digital medium they need to be further tightened. At the same time, it is important to realise that the full adaptation of national and international law to the opportunities and dangers of digital technologies would take time; similarly, marketplace solutions need time to adopt. And further, before they attempt wholesale reform and

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harmonisation Governments need greater familiarity with the social and economic impact of digital technologies. Therefore, instead of striving to achieve wholesale reform and harmonisation of copyright and neighbouring rights the DipCon should attempt to clarify the existing legal regime and moderately enhance the rights of producers of phonograms, particularly reproduction and transmission rights, and prohibit circumvention of TPMs. The DipCon should not open up the whole range of issues dealt with in the Rome and Geneva Phonograms Conventions; the treaties “should not attempt to resolve all the disagreements of the past, but instead build upon fundamental agreements about the future”. It is neither possible nor even desirable that “the entire question of exclusivity versus equitable remuneration in respect of broadcasting and communication to the public under the Rome Convention can be resolved at the December Diplomatic Conference”. It was “far more important to affirm the application of the reproduction rights and enhance transmission rights in areas unique to new digital services (specifically “on-demand” transmissions and subscription/fees services) than to contribute to a more general debate that has already gone for over 60 years”.77 The voice of moderation was also designed to ensure that the contractual arrangements whereby economic and moral rights were fully assigned in countries with ‘Copyright’ system were not upset, audio-visual works which the Rome Convention did not cover were not brought within the fold of WPPT, and the provisions of Article 12 of the Rome Convention in regard to remuneration in respect of broadcasting and communication to the public were not extended to subscription and fees services. All in all, IFPA was keen that the provisions relating to the digital agenda in Draft WPPT were not stalled by contentious issues which might reopen delicate balance struck in the Rome Convention between performers, phonogram producers and broadcasters lest it should lead to an outcome which could be uncertain and undesirable. To jump the story, what the DipCon accomplished with WPPT largely corresponded to what Denis suggested. That meeting with Denis was the beginning of my association with him; he used to drop in in the room at the DipCon venue which I was assigned as Chairman of the DipCon and pass on gossip about the informal negotiations between delegations and about how different lobbying groups fared.

Asian Group Regional Meeting: Chiang Mai, Thailand (November 1996) The Regional Meeting of the Asian Group at Chiang Mai was a five-day event comprising a three-day WIPO-Asian Regional Congress on Copyright and Neighbouring Rights followed by a two-day inter-governmental meeting to exchange views on the forthcoming DipCon. Japan was the co-organiser of the Congress along with WIPO and the Thai Government, and the Agency for Cultural Affairs, Government 77

IFPI Position Paper (1996).

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of Japan financed the Congress. The Japanese government sent a high-level delegation comprising, among others, Akinori Shimotori, Director General, Cultural Affairs Department, Agency for Cultural Affairs, and his deputy Kaoru Okamoto both of whom were later part of the Japanese delegation to DipCon. The high-level participation and funding of the Congress was part of the Japanese strategy to cultivate ASEAN countries. Small conversation with the Japanese officials and Japanese interest groups brought out Japan was greatly upset about the case brought against it by the U.S. and EC in the WTO in regard to retroactive protection of the rights of producers and phonogram producers, and many Japanese officials felt that Japan should improve its clout in the international copyright arena by building a strong relationship with Asian countries. Apart from the official delegates, the Japanese interest groups were in full attendance; prominent among them were the Japanese Electronic Industry Development Association (JEIDA), Recording Industry Association of Japan, the copyright and contracts division of Japan’s leading broadcaster Nippon H¯os¯o Ky¯okai (NHK) and the Japanese Society for Authors, Composers and Publishers (JASRAC). At the behest of the hosts, the Japanese officials were even allowed to participate in the first session of the inter-governmental meeting. The interventions made by Japanese official delegates and representatives of interest groups as well as small talk with them outside the conference venue brought out vividly that as in the U.S. Copyright Wars in Japan had turned nasty. The Agency for Cultural Affairs and JEIDA had sharply conflicting views on the temporary, incidental reproduction as well as TPMs; as could be expected, JEIDA was supported by its patron, the formidable Ministry of Trade and Industry (MITI). Takashi Yamamoto, a lawyer who spoke at the Asian Congress, spoke of the inter-ministerial discussions as a battle. The Asian Congress also turned into a battlefield when Okamoto responded to the presentation by JIEDA and said he was sorry and disappointed with JEIDA’s stance and presentation. He was confident that his Agency’s views would be supported by the Japanese government. As an aside, the JEIDA representative asked him not to be so sure. Masahiro Kamei of Fujitsu, a member of the JEIDA delegation, who was my dinner companion on 20 November 1996, told me that Okamoto did not want JEIDA to come to the Congress with a strong delegation and expound its views. As in Japan, a similar battle royale was going on the other side of the Pacific, so much so that Ms. Shira Perlmutter, Associate Registrar for Policy and International Office, U.S. Copyright Office who was scheduled to be a major speaker at the Asian Congress, did not show up. Though not as numerous as the Japanese the American interest groups were well represented. Also present were a few multinational business organisations like IFPI, International Federation of Reproduction Organisations, and International Confederation of Societies of Authors and Composers. I came to know from the Peter Choy who represented the Sun Microsystem that Lehman’s game was up, and that the White House itself was seized of the DipCon; Laura Tyson, Chairman of the National Economic Council, was entrusted with the task of reviewing U.S. positions on treaty matters in the forthcoming DipCon. The sui generis Database Treaty was the target of the most virulent attack by a variety of organisations and editorial comment. I also came to know from Ficsor who attended the Chiang Mai

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meeting that at their regional meetings the African Group and GRULAC felt that consideration of the Database Treaty was premature, and more study was needed. It was at Chiang Mai that I personally felt the gusty winds of intense lobbying by interest groups which wanted to shape the treaties in the way that suited them, and at DipCon the gusty winds turned into a terrific tornado. I was to be flooded by a deluge of such documents at Chiang Mai and later at DipCon; delegations of interest groups even gave presentations to groups of countries like the Asian group. Almost all the lobbying hovered round three elements of the ‘digital agenda’ of the Internet Treaties (right of reproduction, right of communication and technology protection measures) and the sui generis database right. Only a few academics opposed the right management system the fourth element of the digital agenda. The information provided by competing lobbies was invaluable for delegations which had ‘an information deficit’ compared to the delegations of developed countries. The information that a lobby provides is no doubt strategic in the sense that the information provided is selective and designed to embellish the merit of one’s preference and tarnish the appeal of the competing preferences. Exaggeration, misrepresentation and ‘negative advertising’ cannot be discounted. However, there was such intense competition among lobbies that analogous to the pursuit of self-interest in competitive markets promoting social good, the information that competing lobbies provided proper correction for bias and proper evaluation, and was extremely useful for delegations like the Indian delegation to size up the issue and refine one’s stand. All in all, the sharp adversarial advocacy of interest groups illuminated the finer aspects of the digital agenda in a manner that staid academic prose could not. Ficsor gave the Asian group some idea of the forthcoming DipCon. He expected an agreement on the posts would be reached in the ‘15 + 15 + 1 + 1’ meeting on 29–30 November 1996. The DipCon would begin with adoption of the Rules of Procedure and election of office bearers like the President and Vice-presidents of the Conference, and Presidents and Vice-presidents of (i) Main Committee-I (which would consider and finalise the substantive provisions of the treaties), (ii) Main Committee-II (which would consider and finalise the administrative and final clauses of the treaties), (iii) Credentials Committee and (iv) Drafting Committee. The Main Committees might constitute working groups. Ficsor expected the Main Committee-I to begin its work on the third day of the DipCon and conclude its work by the end of the 2nd week of the DipCon or latest early third week; thereafter the Main Committee-II and Drafting Committee could complete their work and then the Plenary could adopt the treaties, and thereafter the Treaties opened for signature by WIPO Member States. True to the saying that the best laid plans of men and mice often go awry the DipCon had starting trouble, got stalled in the middle when it looked as though not even a single treaty might be adopted, and had a late ending with the Main Committee-I concluding its deliberations with forty minutes left for the scheduled closure of the DipCon (midnight of 20th December), and the Plenary concluding its work just a few minutes before midnight on the scheduled day of closure. Ficsor said nothing about the specifics of the ‘15 + 15 + 1 + 1’ meeting, and in fairness to him, no one asked him about it. No attempt was made during the Asian Group Consultation Meeting to forge a common position on the issues which would come up in the DipCon.

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In an article, he wrote for a compilation on WIPO completing fifty years of its existence, Ficsor wrote that “the series of regional consultations made it possible for the developing world to participate in the negotiations in a well-informed manner”. He is partly correct. The Chiang Mai meeting was notable for the insights it gave on the stand of Japan and on interest group politics, particularly of the American and Japanese interest groups. However, the regional meeting, held just about ten days prior to the DipCon, provided few inputs to the Indian delegation.

Curtain Raiser: 15 + 15 + 1 + 1 Meeting The ‘15 + 15 + 1 + 1’ meeting held just two days before the opening of the DipCon (2 December–20 December 1996) did not serve the purpose that was expected from it. The ‘15 + 15 + 1 + 1’ meeting was envisaged to be a closed-door meeting of representatives of thirty-two select countries. When I arrived at the conference venue, I found that the meeting was open to all the delegations present, and as ever Liedes presided over the meeting, or more accurately a seminar. He began by saying that the purpose of the meeting was to exchange views on all questions relating to preparations for the DipCon and proposed that the meeting begin with reporting by the different regional groups about the conclusions they arrived at the regional meetings, followed by a ‘scanning’ of the substantive provisions of the treaties, article by article, and then finally take up the procedures and workplan of the DipCon such as order and sequencing of business, exchange of views on the office bearers, principles of intervention by participants, position of inter-governmental organisations and NGOs, and so on. Liedes and Ficsor made clear that there would be no written report of the meeting. As is customary in meetings chaired by Liedes the scanning went on and on even by lunch the next day. Basically, the scanning exercise was an encore of the General Consultations in October 1996. During the tea break and later at luncheon on the second day of the meeting, I lobbied many delegates to support my proposal to guillotine the scanning exercise when the meeting resumed after lunch so that the meeting could meaningfully discuss the preparations for the DipCon and its workplan. I secured support from many regions. Rashid of Pakistan made a percipient observation that the scanning exercise may be going on and on because the developed countries did not want a discussion on procedure and workplans as they might be having significant differences. When the meeting resumed after lunch Liedes began the scanning of the Database Treaty article by article and called for comments. I interjected to say that the feeling of most countries was that the Database Treaty needed more study, and therefore rather than go article by article the general comments on the treaty could be quickly collected so that the meeting could turn its attention to the preparations and workplan of the DipCon. It was already the afternoon November 30th and discussion of procedure and workplan was nowhere in sight. It would be odd if the DipCon were to start two days later without any schedule, without any

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consensus on the office bearers, and without any clarity as to whether after the adoption of Rules of Procedure and election of office bearers the Member States would be called upon to make general statements in the Plenary. I was strongly supported by many delegations. What I conveyed undiplomatically Moses Frank Ekpo, Director General, Nigerian Copyright Commission and Chairman, WIPO General Assembly said as an ace diplomat would do. Time was needed to handle procedure; the African group would not benefit from further scanning exercise as it was not able to offer any comments on the Database Treaty. Therefore, the general discussion on the Database Treaty could be regarded as the starting point of further study of that treaty. After hearing him I felt slight remorse for being so direct in my remarks; however, once I heard the Soares of Brazil my remorse vanished altogether because Soares was vehemently forthright. He said protection of investment (in databases) as IP was absurd; there were other ways of protecting investment like unfair competition and trade laws. His delegation reserved its right to oppose protection of an item which was unprotectable as IP. Rashid proved to be right when the discussion on preparations and workplan proved to be perfunctory and avoided important issues like Rules of Procedure and distribution of posts. Quite a few delegates felt that the duration of the DipCon was too brief to consider the treaties, and therefore wanted all frills like general statements to be done away with.

DipCon Venue: Mega Bazaar Centre International de Conférences Genève (CICG) was the venue of the DipCon; it was a familiar place as I had attended the International Conferences on Education in the very same venue in September 1992 and again in October 1994. The DipCon was the largest ever international conference on IPRs and was attended by about 800 participants. Of the 161 Member States of WIPO invited 127 were represented; in contrast, only 74 of the then 129 WIPO Member States participated during the Stockholm Revision of the Berne Convention (1967). Far more significantly, EC did not participate in the Stockholm revision; EC’s participation made a significant difference to the dynamics of negotiations in the DipCon in that it was a strong supporter of the digital agenda spearheaded by the U.S. and at the same time had substantial differences with the U.S. over its voting rights as well as over the digital and non-digital agenda. Its differences with the U.S. on the audio-visual question almost threatened to wreck the DipCon; North–North confrontation was a salient feature of the DipCon from its beginning till almost the end while North–South confrontation was conspicuous by absence. Invitations were also sent to 30 Member States of the United Nations who were not members of WIPO, 25 inter-governmental organisations and 140 NGOs to send to the DipCon observer delegations. Most of the invitees turned up. Some of the delegations of interest groups were jumbosized; the IFPA, for example, had nineteen delegates from ten countries. No wonder that over two hundred of the eight hundred odd participants of the DipCon were

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representatives of interest groups. The foyer of the Conference Venue was chockfull of representatives of interest groups who exchanged information—much of it gossip—and buttonholed any delegate of a Member State of WIPO who passed by to lobby. The benefit of accreditation lay in the interest group being entitled to receive all documents of the DipCon and to attend formal meetings of the Plenary and the two Main Committees. The opportunity to observe the deliberations was lost once the Main Committee-I began meeting in informal sessions from 15th December; that Committee had a formal session only on 19th December by when a consensus was reached on most provisions of the WCT and WPPT. Once the Main Committee-I began informal sittings from 15th December the representatives of interest groups scoured for information, to quote Seth Greenstein, the Chronicler of the DipCon, ‘reading tea leaves and endlessly waiting’ in the foyer.

DipCon: Starting Trouble The DipCon began with a plenary session in the main hall of the Conference venue. In the familiar cavernous main hall, I mounted the flight of steps leading to the seats assigned to India with my rather tiny delegation: Subhash Chandra Jain, Additional Secretary, Ministry of Law and Justice, Rudhra Gangadharan, Valsala Kutty, Dilip Sinha, Counsellor, Permanent Mission to WIPO and Gopalakrishnan. By happenstance, the delegation of the U.S. was seated just across the aisle; the American delegation was the largest with thirty-four members. As I espied the jumbo delegation across the aisle, I could not help feeling that the Indian delegation was David pitted against Goliath. But it did not take long to realise that Goliath was a split personality, or to mix metaphor and use the famous expression of Abraham Lincoln, the American delegation was a house divided against itself. The American delegates were drawn not only from the Executive Branch but also from the Senate Judicial Committee, and more significantly included eighteen interest groups, some of whom like the MPAA and BSA were strong supporters of Lehman and his policy initiatives at home and in DipCon, while the others were bitter critics of Lehman and everything he stood for. Few delegations of Member States had private interest groups, and the inclusion of such many interest groups with conflicting interests was a sign of American exceptionalism. Given the composition of the American delegation, it was not unusual for some of the American delegates to lobby delegates of other Member States against the American official stance. The ever-witty Lewis Flacks once quipped that the whole world waited as the American delegation was negotiating with itself. Given the political dynamics of the EC prolonged and intense internal negotiations were needed for EC and its Member States to arrive at a common position. Compared to the gargantuan American delegation, the tiny Indian delegation was very cohesive and functioned with a neat division of work based on specialisation. Jain had enormous experience of drafting legislation and advising government on dicey issues of law; Gopalakrishnan had extensive knowledge of copyright law. Between them, Jain and Gopalakrishnan could incisively analyse the amendments proposed, advise me

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on the stand to be taken and draft the amendments India proposed. Gangadharan used his excellent inter-personal skills to gather intelligence which is a valuable input in multi-party, multi-issue negotiations; Dilip Sinha guided us on diplomatic niceties and helped lobby support of other delegations, and took care of Main CommitteeII where the common Administrative and Final Clauses of WCT and WPPT were considered; Valsala Kutty was the sheet anchor of the delegation, was in touch with the ‘headquarters’ back in New Delhi, meticulously scrutinised the proposals and never hesitated to remind the delegation of its negotiating mandate should it stray from the mandate in respect of any proposal. Bogsch, DG, WIPO presided over the opening session of the Plenary, and in his stentorian voice welcomed the delegates and hoped for the success of the DipCon. He said once the Rules of Procedure were adopted and the President of the DipCon elected he would vacate the chair in favour of the President of the DipCon. However, it was only three days later, on 5th late morning that he could do so as DipCon had to be adjourned again and again to allow intense informal discussions and lobbying over two issues: (i) the number of elective offices and their distribution among different regions, and (ii) the competence of European Commission to vote on behalf of its Member States. Apart from the delay in arriving at an agreement on the number and distribution of posts, the vacillation of the African Group contributed to the delay in DipCon beginning its substantive business. Initially, the African Group was keen on the Presidency of the Conference but later it had second thoughts as it found it difficult to secure an agreement on a single candidate. On 2nd evening, it looked as though the Asian Group would have presidency of the DipCon, and the consensus was that I would be a good choice. However, that opportunity slipped away next day. Eventually, three positions of Vice-president of the Conference, Chairman and two positions of member of the Drafting Committee and one position of a member of the Credentials Committee were allocated to the Asian Group, and I was chosen to be Chairman of the Drafting Committee. Ms. Esther Mshai Tolle of Kenya was chosen as the President of the Conference. The remit of the Drafting Committee was limited to checking whether the translations of the final texts from English into the other Conference languages (French, Spanish, Russian, Chinese and Arabic) were accurate. As the Main Committee-I began to settle the final versions of the Articles only around noon of the penultimate day of the DipCon the Drafting Committee could have its meetings only on late 19th and 20th evenings. Even as the DipCon was stalemated over procedural matters, I had a luncheon meeting with Lehman. It would be fair to say that the DipCon would not have been convened so soon had it not been for Lehman’s efforts in starting the digital agenda rolling; figuratively, he was the architect of the DipCon while Liedes was the engineer who laboured on building the edifice of the treaties considered by the DipCon. Soon after the ‘15 + 15 + 15 + 1’ meeting began on 30 November 1996, Jeffrey Kushan the main American negotiator walked across to the place where the Indian delegation was seated and requested for a bilateral luncheon meeting on 3 December 1996 at La Perle du Lac. I proceeded to the meeting along with Dilip Sinha, and Gopalakrishnan. Situated on Lake Geneva and serving French grande cuisine, the posh restaurant was a grand setting for the bilateral meeting. Lehman, Kushan and Keplinger were already

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seated at the table when we reached the restaurant. Lehman was at his evangelical best and articulated the common interest of India and the U.S. in a successful conclusion of the treaties. He elaborated the common historical legacy of India and the U.S.: they had a common colonial master and common legal and copyright traditions. He also highlighted the common interests in software and film industries. He also spoke of the special relation the U.S. wanted to have with China and India. He also spoke of the emphasis attached to India by the Clinton administration. I used the brief, rather far too brief, intermissions in his monologue to indicate that importation right was a make-or-break issue for India, and to elicit the American position on the enforcement provisions. I also sought to elicit Lehman’s opinion on the treaties, whether they struck a balance between adaptation of the rights to the digital environment on the one hand and fair use on the other. I also used the occasion to probe whether an agreement could be reached in the U.S. between the content providers and other interests. Significantly, Lehman made no pitch for the Database Treaty. In his view, the treaties were balanced; he conceded, however, that all the groups were not yet in favour of the treaties. He, however, asserted that it was for the national legislation to accommodate diverse interests as there was only so much that an international treaty could do. Kushan intervened to ask whether American multinationals were lobbying against the treaties in India. Lehman’s defence of importation right was rather feeble; he justified it on the ground that it made price differentiation and market segmentation possible, thereby benefitting the rightsholders. He clarified that the U.S. was now of the view that there was no need for enforcement provisions in the treaties. He also indicated that the U.S. was keen to meet the Europeans halfway on audio-visual works and would be presenting a text. Kushan offered to share the text and explain it. I also raised the question of decompilation of computer programmes and sought to know his views on the EC Directive on computer programmes; Lehman replied that the Japanese were raising the decompilation issue to undo the language advantage English speaking countries like the U.S. and India have. Before he rushed off for an interview with CNN, he conceded that he spoke all the time himself without giving an opportunity to his guests to put forth their point of view. I reciprocated the American hospitality by hosting a luncheon meeting about ten days later; I had similar luncheon meetings with select EC delegates. My interaction with other delegations brought out that it would be quite some time before the treaties enter into force as many countries were not happy with the proposal in the Draft Administrative and Final Clauses that a treaty would come into force within three months of just five countries ratifying a treaty; most countries wanted that number to be far higher. Once the distribution of offices of the DipCon was settled, the Plenary turned to the making of opening statements by delegations. The honour of speaking first was given to Lehman. Apart from the coordinators of the regional groups, UNESCO, ILO and EC, and about forty countries made their opening statements. Many countries spoke about the need for a balanced protection. Lehman himself spoke of the importance of a meaningful and balanced protection. Speaking on behalf of the EC and its Member States, Paraig Hennessy of Ireland stressed that the Conference should ensure that the rights of authors, performers in all media, and producers of phonograms and databases are fully protected, and that the right balance is maintained

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between the various categories of rightsholders as well as between those rightsholders and users. Asian delegates and most Latin American and African delegates emphasised the need for a balance between rightsholders and public interest. Most speakers expressed the view that the Database Treaty needed more study and clarification. Opinion was divided on the coverage of audio-visual works by WPPT, temporary reproduction and TPMs. Many delegations highlighted the importance of briskly moving ahead on a new broadcasting treaty. New Zealand and some African countries like Nigeria highlighted the importance of similarly moving forward briskly towards an instrument for the protection of folklore. In my opening statement, among others, I set out guiding principles for a successful conclusion of the DipCon Conference. The treaties should be stand-alone instruments and should be implemented as such. Where obligations under the TRIPS Agreement were proposed to be incorporated in the treaties under consideration, verbatim language of the TRIPS Agreement should be employed. Such obligations should stand alone, and the treaties should not refer to the corresponding provisions of the TRIPS Agreement. In no case should rights guaranteed in the TRIPS Agreement, such as rental, be expanded. The international regime of protection could not be too far ahead of national laws; it could not ignore the wide diversity of market structures and technological dissemination around the world. A gradualist approach should be taken to the creation of rights in respect of digital technologies, the long-term impact of which on economy could only be guessed now, and a careful balance should be maintained between the interests of content providers, online service providers, electronic hardware manufacturers, and the general public. The new treaties should not impede the flow of international trade, and the proposal for a right of importation was such an impediment.

Midlife Crisis: Champagne and Broken Glass Participating in the DipCon was like a roller coaster ride. After the Plenary concluded on the evening of 5th December, I left the Conference venue with a sense of exhilaration. The stalemate over the distribution of offices was overcome through the deal brokered by Bogsch, and the opening statements were music to my ears. Almost everyone who spoke of the need for balance. The next morning, the Main Committee began well, and it looked as though the saying well begun is half done would turn out to be true. The principles which Liedes enunciated in his introductory remarks were impeccable. Liedes gave priority to the WCT and the WPPT over the Database Treaty; only after the WCT and the WPPT were settled would the Database Treaty taken up. This prioritisation was taken by most delegates as well as the interest groups to be requiem for the Database Treaty. Turning to the WCT and the WPPT, Liedes suggested that substantive clauses (dealing with rights) should be discussed first followed by the framework clauses (dealing with the links between the proposed treaties and the existing treaties, clauses concerning the application, eligibility for protection, application in time) next and

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lastly the preambles and titles. He accepted cluster approach suggested by me; each of the issues common to the WCT and the WPPT would be discussed together. He identified seven cluster issues: (i) publication and place of publication, (ii) right of reproduction; (iii) distribution and importation rights, (iv) rental right, (v) communication right (insofar as it addresses interactive communications), (vi) TPM and RMI, and (vii) enforcement. Apart from suggesting the cluster approach, I significantly contributed to the proceedings of the Main Committee-I by coming up with the idea of an agreed statement to resolve unending arguments about the wording of contentious provisions of the draft treaties. The idea of an agreed statement was based on a commonsensical approach of first reaching an agreement on what an article of the treaty should convey, then attempting to find an appropriate treaty language to record that agreement, and if need be, supplement the treaty language by an agreed statement which would indicate how the treaty language should be interpreted. Lest the agreed statements should be forgotten after the DipCon they were to be adopted by the Main Committee-I and the Plenary and printed along with the texts of Treaties. Even though the idea of agreed statements was initially received rather coolly, its value in cutting short unending arguments over the language of a provision was appreciated much once the informal sessions began and time was of the essence; an agreed statement came to be a useful way of building consensus and was widely resorted to. Except the agreed statements on the right of reproduction (Article 1 (4) of WCT and Articles 7, 11 and 16 of WPPT) every other agreed statement was unanimously agreed to in the Main Committee. No wonder that Ficsor called DipCon the “Diplomatic Conference of Agreed Statements”.78 Agreed statements were resorted to by subsequent treaties like the BTAP and Marrakesh Treaty. I found later that a similar commonsensical approach was used in the TRIPs negotiations to break impasses.79 Progress in the Main Committee was slow mainly because unlike the customary practice, DipCon was not preceded by informal negotiations with the result that the consideration of the substantive provisions by the Main Committee-I had to start from the scratch. Once again, as during the General Consultations (October 1996) and the ‘15 + 15 + 1 + 1’ meeting, scanning of the Articles began, the difference being that now clusters of articles were taken up. It was clear even by the end of the first day of the formal session of the Main Committee-I (6th December) that the only article on which there was no disagreement was Article 11 dealing with the term of protection of photographic works so much as that a wit quipped that the only treaty one could be certain about was a treaty on photographs. By 8th December, discontent over the scanning exercise began to mount. With his stentorian voice, ready wit and body language, Bogsch was a natural actor; at a lunch he hosted for a few heads of delegations like me on 9th December, he mimicked Lehman and asked with a frown 78

Ficsor (2002, paragraphs 2.31–3, pp. 61–4). A case in point was the lengthy ‘theological’ discussions on enforcement provisions based on one’s own judicial systems. Lengthy discourses on the benefits of civil law versus common law, and vice versa could not yield negotiated solutions. Ultimately, the simple solutions that were found were based on the common principles underlying both types of law. See Gero (2015, p. 97). Gero was a Canadian negotiator for TRIPS in the Uruguay Round.

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on his face, ‘when will this seminar end?’ Concerned that the conference she was presiding over might end ingloriously without concluding any treaty, the President of the Conference Ms. Tolle called for a meeting of the Steering Committee on the afternoon of 11th December. Liedes appraised the Committee of the progress of discussions so far and said good progress had been made. The Committee had received several written amendments and it had heard a series of interventions on all substantive issues and elements of WCT and WPPT, except their preambles and titles. He said that consensus could be achieved in respect of certain provisions. By the afternoon of 12th December, he could come up with Partly Consolidated Texts, one each for WCT and WPPT; that text would indicate where consensus was possible and where more intense discussion was needed. No one expected that the release of Liedes’s Partly Consolidated Text of Treaty-I 80 on 12th afternoon would trigger a violent, volcanic eruption of indignation. The expectation delegates had from the Draft was summed by Alejandro Rogers of Chile who emphasised that that a consolidated text meant a text containing all the amendments submitted, without any exception. Instead, most provisions had only minor changes and substantive changes to several important provisions reflected only one of the possible offered alternatives. Liedes took great pains to explain the method underlying the Partly Consolidated Text he prepared, and to assert again and again that all proposals and amendments, even if not included in the Partly Consolidated Text were still on the table. The German, Russian, British and American delegates did their very best to persuade the delegates that what Liedes did was in accordance with the decision of the Steering Committee, and that Liedes deserved praise rather than censure for putting in so much effort over long hours to produce a text in such a short time. Several Asian, African and Latin American delegations were upset as they felt that their points of view were not reflected in the texts, and the DipCon shed much of its diplomacy. The hurt feelings of the delegates from the African, Asian and GRULAC countries were not assuaged; they demanded that the meeting be adjourned, and the Steering Committee convened to consider the further course of action. I administered the coup de grâce by highlighting the fact that my views on re-opening the TRIPs agreement were not full reflected in the Partly Consolidated Text, and that it was a matter of concern as to how the treaty language would be established. I found the procedures of the Conference difficult to understand. Compared to many international conferences, the delegates were not being provided a daily journal or a transcript of the interventions. Consequently, it was difficult for Delegations to check whether their interventions and proposals were correctly reflected. It was not clear whether the Partly Consolidated Text prepared by the Chairman was in accordance with the decisions of the Steering Committee. If they were not, as it seemed to be the case, a new document should be prepared to reflect the varying shades of opinions. I suggested convening of the Steering Committee to discuss procedural problems and to establish transparent, credible, and acceptable procedures. There was pin drop silence after I spoke meeting was adjourned shortly thereafter. As we

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came out Kushan came over to me, threw up his hands and asked in bewilderment what I wanted. In the Steering Committee meeting, it was decided to ask the delegations to submit amendments, if any, by 1 PM on 14th December; the WIPO Secretariat was requested to prepare a list of these amendments. The idea of a new Partly Consolidated Text (to be prepared by Jukka) was given up; the amendments together with the basic proposals would constitute the negotiating texts. The Russian delegate bemoaned the fact that two out of the three weeks of the Conference were already over. Hélène de Montluc of France wanted the work of Main Committee-II to start so that the negotiations of the final clauses could be taken up. She was unable to understand the delay in convening Main Committee-II as only two issues, namely the voting right of EC and the minimum number of countries which need to accede to a treaty for it to enter into force, were to be resolved. However, neither the U.S. nor the EC were ready for a meeting of the Main Committee-II; later, it came out that they did not wish any discussion of the final clauses till they could resolve their differences over the audio-visual question which in turn determined whether the DipCon would adopt one or two treaties or none at all. Whatever, it was decided to convene the meeting of the Main Committee-II on 17th December. The President of the Conference Ms. Tolle wanted the Main Committee-I to meet on Monday, the 16th December but in deference to the request of the U.S. and the EC advanced it to Sunday, the 15th December. The turn of events delighted WIPO staffers who bitterly resented WIPO being divested of its traditional role of drafting the draft treaties; that even Bogsch shared this feeling came out when during the discussion in the Steering Committee he interjected in his stentorian voice “the Chairman’s texts are the Chairman’s; the Secretariat does only translation”. From the Steering Committee meeting, I moved to the WIPO building to attend a buffet reception hosted by DG, WIPO to commemorate the midpoint of the DipCon. Greenstein’s characterisation of the day as ‘broken glass and champagne’ aptly captured the events of the day. After the fracas witnessed over the Partly Consolidated Texts, the delegates and WIPO staffers now savoured a gala party. The festive mood of Christmas which was around permeated the party. Abundant supply of canapes, wine, and champagne loosened tongues. Accentuating the festive mood was the feeling of schadenfreude widely shared among many delegates and WIPO staffers. Japan, as it came out at Chiang Mai, resented the dominance of U.S. and EU in the run up to the DipCon. No wonder that Akinori Shimotori sought me out and congratulated me for my intervention which administered the coup de grâce to the texts of Liedes. The WIPO staffers figuratively floated on the air, happy that Liedes, and by extension the U.S. and the EC, got their just desserts. The otherwise weary looking Ficsor was figuratively levitating in the air and told me that Liedes deserved what he got and that he overestimated the forces backing him. I also heard the gossip that the EC wanted Liedes to play an unusually large role in the DipCon so that he could smoothly succeed Bogsch as DG, WIPO, and that today’s turn of events doomed the aspiration of Liedes to succeed Bogsch. The next day, Ficsor turned up in my office in the Conference venue to clarify that WIPO had little to do with the organisation of the DipCon, and that WIPO was

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not at fault for the mess created by the Partly Consolidated Texts. The DG, WIPO and the Secretariat stayed clear of the DipCon as Lehman wanted the Member States to take control of the conference and prepare the draft treaties themselves instead of the Secretariat. Lehman was unhappy that for very long WIPO was headed by an ‘European’ and it was time for an American to head it, never mind that that European (Bogsch) got naturalised as an American citizen in the very same year as the then U.S. Secretary of State Madeleine Albright was naturalised. After DipCon was stalemated over the number and choice of office bearers, Bogsch sent Ficsor to Lehman to check where it was OK for him if he brokered a deal. The role of WIPO Secretariat was limited to attending to the logistics of the DipCon, drafting the Rules of Procedure of the DipCon as well as the Administrative and Final Clauses of the three treaties. I explained to Ficsor that I had nothing against WIPO, that India was a great supporter of WIPO and that even during the TRIPs negotiations India’s stand had been that IPRs should be discussed only in WIPO. I wanted to convey to him, Bogsch and WIPO that we were WIPO’s well-wishers. I told him that, if need be, I can meet Bogsch and clarify. I had an occasion to do so soon thereafter at a meeting of the Steering Committee; after hearing me out Bogsch cryptically observed ‘this is a very strange conference indeed’. In retrospect, 12th December turned out to be a watershed for more than one reason. It is said that a crisis can also be an opportunity to usher in far-reaching changes which were hitherto unthinkable. A good example of embracing the unthinkable is the DipCon giving up the WIPO tradition of ‘open covenants, openly arrived at’, and opting for the less transparent GATT/WTO practice of brokering deals in closed, informal sessions. Hitherto negotiations in WIPO Diplomatic Conferences took place in formal meetings in the presence of all invited participants, including member delegations, observer delegations and observer-representatives of intergovernmental and non-governmental organisations. After the fracas over the Partly Consolidated Texts many delegations began to feel that agreement is better secured through informal discussions than in the formal setting of Main Committee-I. From 15 to 19th Main Committee met in informal sessions without any formal notes of the proceedings being recorded, and without being ‘observed’ by representatives of observer delegations. The consensus that emerged during the informal sessions was reflected in two documents: (i) Draft Substantive Provisions of Treaty No. I (WCT), and (ii) Draft Substantive Provisions of Treaty No. I (WPPT). These draft treaties were considered in the formal meetings of the Main Committee on 19–20 December, 1996. The informal sessions were so successful that for lack of consensus voting had been taken in the formal meeting only in respect of five provisions: (i) rental rights in WCT, (ii) abolition of non-voluntary licences for broadcasting in WCT, (iii) right of reproduction in both treaties, (iv) moral rights in WPPT and (v) National Treatment in WPPT.

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Nail Biting Climax: Reproduction Right The informal consultations in the Main Committee-I on the reproduction right went on and on. GRULAC countries excepting Brazil strongly believed that the right of reproduction set out by Article 9(1) of Berne Convention was all embracing while Australia, Denmark, Norway, Sweden and South Africa did not. Eventually, the view that if Article 7 of Draft WCT and its corresponding provisions in Draft WPPT did no more than clarify or confirm the existing reproduction right they could as well be deleted gained ground. On the morning of 19 December, 1996, I had a small chat with Professor Reichman, and during the course of that chat, he informed me that Lehman told a group of NGOs that the U.S. might have no objection to Article 7 being dropped. Reichman proved to be right. During the course of the day, the formulation of Visser (South Africa) that Article 7 of the Draft WCT should be dropped subject to an agreed statement being adopted gained ground, and Kushan agreed to develop an agreed statement in consultation with other delegations. Not every delegation was happy with this dénouement. When the consensus began to gain ground Zapata López of Colombia gave vent to the agony of GRULAC delegates by saying that “we lost much: rental right, importation right, communication right”, and “we should ask for more time”. In fact, there was much speculation that as many issues were yet to be settled even by December 19, 1996, the DipCon might be extended by a day or two. Whatever, the consensus to drop Article 7 was formalised in the formal meeting of the Main Committee-I on the morning of 20th December. Visser proposed deletion of Article 7 of Draft WCT saying that “the right of reproduction could be left subject to Article 9 of the Berne Convention and the well-established and flexible principles developed thereunder”. That Article “had coped admirably with every technical development”, and “he was confident that it would continue to do so”. Kushan supported the deletion of Article 7 subject to the condition of acceptance of an appropriate agreed statement for the Records of the Diplomatic Conference. Nørup-Nielsen of Denmark accepted the deletion of Article 7 and thought that Article 9 of the Berne Convention could be applied with its normal flexibility in the digital situation. With these interventions the Main Committee-I approved by consensus the deletion of Article 7. WPPT is not anchored in the Rome Convention the way that WCT is in the Berne Convention. Consequently, Articles 7 and 14 of Draft WPPT dealing with the right of reproduction could not be wholly deleted the way Article 7 of Draft WCT was. Hence, a consensus grew around the proposition that the phrase ‘whether permanent or temporary’ in Articles 7 and 14 of Draft WPPT be deleted and limitations and exceptions of the reproduction left to the article dealing with general limitations and exceptions. The modifications to Articles 7 and 14 of Draft WPPT were formally approved by a formal meeting of the Main Committee-I on 20 December, 1996. There is a famous American saying that ‘it ain’t over till it is over’; true to that saying the adoption of the agreed statements on the right of reproduction in the WCT and the WPPT turned out to be a prolonged, excruciating process which lasted nearly

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two hours and twenty minutes of the three hours left in which to complete the Diplomatic Conference, and turned the closure of the DipCon into a nail-biting suspense. Liedes began the last session of Main Committee on the evening of 20th December saying that deletion of Article 7 of Draft WCT had been subject to the approval of an agreed statement on the same question. Kushan said that the U.S. had been working with a number of other Delegations to try to fashion a statement that was to be created as part of the understanding through which Article 7 was deleted. The first sentence of the agreed statement stated that the reproduction right, as set out in Article 9 of the Berne Convention, and the exceptions permitted thereunder, fully applied in the digital environment, in particular to the use of works in digital form. The second sentence of the agreed statement stated that storage of protected works in digital form in an electronic medium constituted reproduction within the meaning of Article 9 of the Berne Convention. As Article 7 of Draft WCT was deleted, the agreed statement was tagged on to Article 1(4) which obligates Contracting Parties to comply with Articles 1–20 (excepting Article 6bis) and the Appendix to the Berne Convention. The import of the agreed statement regarding the right of protection in the WPPT was identical to that of the WCT; the language, however, was slightly different as the WPPT, unlike the WCT, is not a special agreement under Article 20 of the Berne Convention. Kushan added that it was his understanding that the import of the second sentence of the statements, namely that storage of protected works in digital form in an electronic medium constituted reproduction within the meaning of Article 9 of the Berne Convention, had been accepted in substance for a fairly long time and requested the Secretariat to confirm his understanding. Ficsor confirmed that Kushan’s understanding reflected what was an agreement in the copyright community for nearly fifteen years; that agreement arose from the study by a Committee of Experts jointly convened by WIPO and UNESCO in 1980. EC and its Member States, GRULAC countries except Brazil and Canada supported the statement. The chorus of support to the agreed statements was interrupted by Silva Soares of Brazil and Kim of the Republic of Korea. Soares expressed the view that the second sentence “storage of a protected work in digital form in an electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention” conflicted with their technical understanding and legal analysis that browsing to make a work perceptible, and digital transmission did not implicate the reproduction right. Kim of Korea favoured deletion of the second sentence as it was a one-sided expansion of rights. At that stage, I made a forceful intervention urging acceptance of the agreed statement. I began by saying that it would be extremely strange if the Diplomatic Conference concluded without at least some sort of statement concerning the core of the digital agenda. Unfortunately, there was not sufficient time for the Conference to fully analyse, discuss and reach agreement on the issues involved. Given that digital technologies were new there had not been as yet a definitive understanding of their implications; consequently, it was not possible to come to agreement on treaty language. However, there was a consensus in the informal consultations that Article 7 should be dropped, but an appropriate statement should be agreed upon for approval by the Plenary. That understanding should be respected; even among

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thieves, there is honour. The agreements might not be perfect; however, they have the merit of allowing Contracting Parties flexibility in interpreting the statements and thereby legally cope with a variety of situations in which temporary storage was integral to a technical process. It was understood that there was no reduction in the discretion of any country to provide limitations and exceptions permitted under the Berne Convention. Clearly, there was a need to address the liability of online service providers; the liability should be treated as a larger issue, not just of copyright law. With that understanding, I said that India was able to support the statement as drafted. The statement was much appreciated; Kushan supported it, and in his journal, Greenstein called my statement thoughtful. Abbasi of Pakistan who followed me said he had a problem with the statement as it had no consensus and a statement without consensus could not be given the same status as a statement adopted by consensus by all Delegations which were present in the Conference. He was supported by Soares of Brazil. Discussion on the second sentence continued after the first sentence was adopted by consensus. Apart from voicing disagreement on the content of the second question, the dissenters brought in procedural questions and sought to stall the agreed statement through procedural wrangling. Marc Georges Séry of C˘ote d’Ivoire wondered whether a statement about which some delegations had reservations could be considered a Conference document and wanted that the principles for adopting an agreed agreement and the interpretative value of agreed statements decided through voting should be settled first. Alfons Schäfers of Germany stated that the question raised by Séry had to be seen in the context of the Vienna Law of Treaties. Agreed statements could be adopted by majority, if necessary. He also pointed out that adoption by majority was the established practice in all the conferences under the aegis of WIPO. Kushan pressed for voting if consensus was not possible. Ficsor made a last-minute fervent plea for a consensus. He began by saying that this was the last issue to be discussed by the Main Committee-I, and that it was preferable to achieve an agreement based on consensus. He noted that the first sentence of the proposed statement had been approved by consensus. With regard to the second sentence, he felt that it had been a clearly established principle, since the early 1980s, that storage of protected works in digital form in an electronic medium was to be considered reproduction, and that principle could hardly be questioned. He felt that the problem was rather about the interpretation of the word ‘storage’. He suggested that a possible solution was that the second sentence might also be agreed upon by consensus, not excluding, however, the possibility of differing interpretations at the national level, which otherwise could not be fully excluded even in respect of certain aspects of the texts of the Treaties themselves. François-Xavier Ngoubeyou of Cameroon insisted on a roll call vote to avoid any misunderstandings regarding the number of States which approved or rejected the second part of the proposal by the U.S. Even as Kushan pressed for a vote Séry of C˘ote d’Ivoire sought the adjournment of the meeting so that his group could have consultations. Hardly 40 min were left for the midnight, and unless a formal resolution was adopted by the Plenary to extend it the DipCon would have ended without concluding any treaty. Khlestov of Russia brusquely said that the Committee should stop going around in circles and should proceed to take

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up voting. Thereupon, the second sentence was put to vote; it was approved with 49 votes in favour, 13 against and 23 abstentions. As soon as the voting was completed Main Committee-I concluded its work and passed into history. In regard to contentious issues ‘it ain’t over even after it is over’. One would have expected that the agreed statement having been approved by the Main Committee-I it would have a smooth passage in the Plenary. It did not. With about forty minutes left for the scheduled closure of the DipCon no sooner did the Main Committee finished its business when the Plenary met and Ms. Tolle, the Chairman of the DipCon, rushed through the proceedings. When she sought the approval of the Plenary for the agreed statements of the WCT Soares rose to demand separate voting on agreed statements approved by consensus and those which were not. Kim of Korea seconded the proposal of Brazil. On being put to vote, the agreed statement on reproduction right was adopted with 51 votes in favour, 5 votes against, and with 30 abstentions. What remains etched in my memory of the rushed closing session of the Plenary was the reaction of Lehman to the vote on the adoption of the agreed statement on the right of reproduction in the WCT. When in response to the President’s call to those in favour of the agreed statement to raise their hand and in response to that call as many as fifty-one delegates raised their hands and it became obvious that the motion was carried Lehman gave vent to his jubilation boisterously. He went on vigorously waving the name board of the U.S.; his torso also moved briskly in unison with his arm, and he went on waving his nameboard even when the President called upon those opposed to the statement to raise their hands. From the Conference Venue, the delegates walked across to the WIPO building nearby to attend the signing ceremony and a farewell reception. As champagne flowed freely at the Last Supper, as the reception came to be called by some delegates, the delegates complimented each and bade bon voyage and goodbye. Prof. Reichman and the Norwegian delegation complimented me for my intervention on the agreed statement relating to the right of reproduction, Kushan turned emotional at the reception. He said he was indeed wonder struck at the cordial relation that India and the U.S. developed at the DipCon. He had come to realise that during the TRIPs negotiations U.S. wanted more than what was necessary, and India offered less than it could. The reception came to an end around 2 AM. Except for a few whom I met in Geneva in March 1997 at the meeting of the WIPO General Bodies, where Kamil Idris was elected as successor to Bogsch, I never saw any of the delegates again, the reason being that I moved out from the Department of Education in August 1997 and never again dealt with copyright.

Indian Reaction to Negotiation Outcomes I had every reason to be happy for every element of the negotiating mandate given to my delegation by the Indian Government was fulfilled. India prevailed with overwhelming support, including support from the U.S., and EC, in its stand that the TRIPs agreement should not be re-opened before the stipulated period for its review;

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among others, the rental right continued to be the same as in the TRIPs agreement, and it was decided not to reopen the TRIPs provision regarding exhaustion and parallel imports. The Internet Treaties had no legal nexus with the TRIPs agreement. India was in the forefront of the move to ensure that the Internet Treaties strike an appropriate balance between rights of authors, performers and producers of phonograms on the one hand and public interest on the other; it could successfully get the DipCon to adopt a preambular clause and with the help of other countries it could ensure that agreed statements were adopted whereby that Contracting Parties could carry forward and appropriately extend into the digital environment limitations and exceptions in their national laws which have been considered acceptable under the Berne Convention, and to devise new exceptions and limitations that are appropriate in the digital network environment.

Bibliography A. Articles and Books Anell, L. (2015). Keynote speech at TRIPs symposium. In J. Watal & A. Taubman (Eds.), The making of the TRIPS agreement: Personal insights from the Uruguay round (pp. 365–72–52). WTO. Ayyar, V. R. V. (1998). Interest or right: The process and politics of a diplomatic conference on copyright. Journal of World International Property, 1(1), 3–35. Ayyar, V. R. V. (2009). Public policymaking in India. Pearson Longman. Ayyar, V. R. V. (2021). Present at creation: The making of WIPO internet treaties, 1996. Can be accessed at https://rvvayyar.com/ Browning, J. (1997). Africa 1 Hollywood 0. Wired, March 1997. Dinwoodie, G. B. (2000). A new copyright order: Why national courts should create global norms. University of Pennsylvania Law Review, 149, 469–580. Dinwoodie, G. B. (2007). The WIPO copyright treaty: A transition to the future of international copyright lawmaking. Case Western Reserve Law Review, 57, 751–766. Ficsor, M. (1996). International harmonization of the protection and management of copyright and neighbouring rights. In WIPO worldwide forum on the protection of intellectual creations in information society, Naples, pp. 133–41. Ficsor, M. (2002). The law of copyright and the internet: The 1996 WIPO treaties, their interpretation and implementation. Oxford University Press. Ficsor, M. (2006). ‘The WIPO internet treaties’: The U.S. as driver: The United States as the main source of obstruction—As seen by an anti-revolutionary central European. John Marshall Review of Intellectual Property Law, 17(6), 16–39. Gero, J. (2015). Why we managed to succeed. In J. Watal & A. Taubman (Eds.), The making of the TRIPS agreement: Personal insights from the Uruguay round (pp. 95–98). WTO. Gervais, D. J. (1998). The TRIPS agreement: Drafting history and analysis. Sweet and Maxwell. Ginsburg, J. C., & Sirinelli, P. (1991). Authors and exploitations in international private law: The French supreme court and the Huston film colorization controversy. Columbia—VLA Journal of Law and Arts, 15(2), 135–159. Greenstein, S. (1996). WIPO diplomatic conference: News from Geneva. Available at http://web.arc hive.org/web/19970301064839/http:/hrrc.org:80/wiponews.html. Last accessed on 25 July 2021.

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IFPI Position Paper. (1996). International Federation of the Phonographic Industry (IFPI). In Draft treaty for the protection of performances and producers of phonograms: IFPI position paper. September 30, 1996. Johnson, C. (1982). MITI and the Japanese miracle: The growth of industrial policy, 1925–75. Stanford University Press. Kamina, P. (2002). Film copyright in the European Union. Cambridge University Press. Lax, D. A., & Sebenius, J. K. (1986). The manager as negotiator: Bargaining for cooperation and competitive gain. The Free Press. Litman, J. D. (2006). Digital copyright. Prometheus Books. Nimmer, D. (1995). The end of copyright. Vanderbilt Law Review, 48, 1385–1419. Nimmer, D. (1998). Time and space. IDEA: The Journal of Law and Technology, 38, 501–527. Otten, A. (2015). The TRIPs negotiation: An overview. In J. Watal & A. Taubman (Eds.), The making of the TRIPS agreement: Personal insights from the Uruguay round (pp. 55–79). WTO. Pavis, M. G. A. (2016). The author-performer divide in intellectual property law: A comparative analysis of the American, Australian, British and French legal frameworks. Ph.D. Thesis, University of Exeter. Piotraut, J.-L. (2006). An authors’ rights-based copyright law: The fairness and morality of French and American law compared. Cardozo Arts and Law Entertainment Journal, 24, 549–616. Putnam, D., & Watson, N. (2000). Movies and money. Vintage Books. Raiffa, Howard (1982). The art and science of negotiation. Harvard University Press. Reinbothe, J., & von Lewinski, S. (2015). The WIPO treaties on copyright: A commentary on the WCT, the WPPT, and the BTAP (2nd ed.). Oxford University Press. Ricketson, S. (1987). The Berne convention for the protection of literary and artistic works: 1886– 1986. Centre for Commercial Law Studies, Queen Mary College. Ricketson, S., & Ginsburg, J. C. (2006). International copyright and neighbouring rights: The Berne convention and beyond (2nd ed.). Oxford University Press. Samuelson, P. (1996). The U.S. digital agenda at WIPO. Virginia Journal of International Law, 37, 369–439. Samuelson, P. (1999). Intellectual property and the digital economy: Why the anti-circumvention measures need to be revisit. Berkeley Technology Law Journal, 14, 519–564. Samuelson, P., & Browning, J. (1997). Confab clips copyright cartel: How a grab for copyright powers was foiled in Geneva. The Wired, January 3, 1997. Scheinwald, A. (2012). Who could possibly be against a treaty for the blind? Fordham Intellectual Property, Media and Entertainment Law Journal, 22(2), 445–511. Sell, S. K. (2003). Private power, public law: The globalization of intellectual property rights. Cambridge University Press. Taubman, A. (2015). Negotiating ‘trade-related aspects’ of intellectual property rights. In J. Watal & A. Taubman (Eds.), The making of the TRIPS agreement: Personal insights from the Uruguay round (pp. 15–52). WTO. Vaver, D. (2007). Copyright and the internet: From owner rights and user duties to user rights and owner duties. Case Western Reserve Law Review, 57, 731–750. von Lewinski, S. (2008). International copyright law and policy. Oxford University Press. Yap, N. (2017). Fitting Marrakesh into a consequentialist copyright framework. Journal of Intellectual Property and Entertainment Law, 6(2), 351–382. Yu, P. K. (2011). Six secret (and now open) fears of ACTA. SMU Law Review, 64, 977–1094.

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B. Official Documents United States Agreement Between the World Intellectual Property Organisation and the World Trade Organisation. (2005). WIPO Publication No. 223 e. Harvard Worldwide Symposium. (1993). In WIPO Worldwide Symposium on the Impact of Digital Technology on Copyright and Neighbouring Rights. Harvard University, March 31–April 2, 1993. Lehman, B. A. (1995). Lehman report. In Intellectual property and the national information infrastructure. The Report of the Working Group on Intellectual Property Rights, September, 1995. Records of the Intellectual Property Conference of Stockholm. (1967). June 11–July 14, 1967. World Intellectual Property Organisation (WIPO) Worldwide Forum, Naples. (1995).WIPO Worldwide Forum on the Protection of Intellectual Creations in Information Society. Naples, October 18–20, 1995. Worldwide Symposium, Paris. (1994).WIPO Worldwide Symposium on the Future of Copyright and Neighbouring Rights. Le Louvre, Paris, June 1–3, 1994. Worldwide Symposium, Mexico City. (1995).Worldwide Symposium on Copyright in the Global Information Infrastructure. Mexico City, May 22–24, 1995. WIPO (1995). Agreement between the World Intellectual Property Organisation and the World Trade Organisation. WIPO Publication No. 223 (E). WIPO-INDIA Seminar. (1996).International harmonization of copyright in the face of the globalization of trade and the new technologies. WIPO-INDIA National Seminar on Digital Technology and Intellectual Property, New Challenges and New Opportunities, New Delhi, February 16–17, 1996. WIPO Study. (2007). WIPO study on copyright limitations and exceptions for the visually impaired, prepared by Judith Sullivan. SCCR/15/7 dated February 20, 2007. U.S. Briefing. (1996). U.S. Department of Commerce, Patent and Trademark Office. In Briefing on Request for Comments on the Chairman’s Text of the Diplomatic Conference on Certain Copyright and Neighbouring Rights Related Questions to be Held in Geneva from December 2–20, 1996. U.S. Copyright Office. (2019). Authors, attribution, and integrity: Examining moral rights in the United States: A report of the register of copyrights. April, 2019.

WIPO Diplomatic Conference (1996) Documents 1. Link to All Conference Documents https://www.wipo.int/meetings/en/details.jsp?meeting_id=3010. Last accessed on February 26, 2021. 2. Link to Negotiation Texts CRNR/DC/3. (1996). Basic Proposal for the Administrative and Final Clauses of the Treaty to be Considered by the Diplomatic Conference. CRNR/DC/3 dated August 30, 1996. Available at https://www.wipo.int/edocs/mdocs/diplconf/en/crnr_dc/crnr_dc_3.pdf. Last accessed on February 26, 2021. Draft WCT. (1996a). Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions Concerning the Protection of Literary and Artistic Works to be Considered by the Diplomatic Conference. CRNR/DC/4 dated August 30, 1996a. Available at https://www.wipo. int/edocs/mdocs/diplconf/en/crnr_dc/crnr_dc_4.pdf. Last accessed on February 26, 2021. Draft WPPT. (1996b). Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions Concerning the Protection of Literary and Artistic Works to be Considered by the

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Diplomatic Conference. CRNR/DC/4 dated August 30, 1996b. Available at https://www.wipo. int/edocs/mdocs/diplconf/en/crnr_dc/crnr_dc_5.pdf. Last accessed on February 26, 2021. 3. Reports of the Committees of Experts Committees of Experts. (1996). Report Adopted by the Seventh Session of the Committee of Experts on a Possible Protocol to the Berne Convention May 22 to 24 1996) and Sixth Session of the Committee of Experts on a Possible Instrument for the Protection of the Rights of Performers and Producers of Phonogram (May 22 to 24 1996). WIPO BEP/CE/VII/4-INR/CE/VI/4 dated August 5, 1996. 4. Preparatory Committee of the Proposed Diplomatic Conference WIPO PrepCom Report. (1996). Draft Report of the Preparatory Committee of the Proposed Diplomatic Conference (December 1996) on Certain Copyright and Neighboring Right Questions. WIPO CRNR/PM/8 Prov. Dated May 24, 1996. 5. DipCon Records WIPO Publication. (1999). Records of the Diplomatic Conference on Certain Copyright and Neighboring Rights Questions, Geneva (2 Vols.). WIPO Publication No. 348E. Volume I has all the amendments proposed to the substantive provisions of Draft WCT and Draft WPPT, Agreed Statements, Final Act of the Diplomatic Conference, Resolution and Recommendation adopted by the Diplomatic Conference. Available at https://www.wipo.int/edocs/pubdocs/ en/wipo_pub_348_vol_i.pdf. Last accessed February 26, 2022. 6. Final Text of WCT and WPPT WCT. (1996). CRNR/DC/94 dated December 23, 1996. Available at https://www.wipo.int/edocs/ mdocs/diplconf/en/crnr_dc/crnr_dc_94.pdf. WPPT. (1996). CRNR/DC/95 dated December 23, 1996. Available at https://www.wipo.int/edocs/ mdocs/diplconf/en/crnr_dc/crnr_dc_95.pdf.

Chapter 3

The Making of DMCA (U.S. Implementation Legislation)

Abstract This Chapter narrates the politics and process of enacting the Digital Millennium Copyright Act (DMCA), which was exceptionally adversarial and acrimonious even by American standards. The making of DMCA is a turning point in that the making of copyright legislation ceased to be a negotiation between business interest groups; committed academics entered the policy arena and began to demand that the law enacted should not reflect only the interests of business interests. The Chapter details the provisions of S.1201 (anticircumvention provisions) and S.512 (which provides safe harbour to intermediaries which fulfil the stipulated conditions); together these provisions constitute the bedrock of DMCA. S.512 was comparatively non-controversial, and with some modifications here and there, the safe harbour and ‘notice and take down’ regime of S.512 had come to be an accepted norm over most of the world. In contrast, S.1201 was highly controversial, and the Chapter elaborates the arguments for and against S.1201. The Chapter briefly adverts to the safe harbour and ‘notice and take down’ regime losing its sheen over time; it also outlines how bilateral trade agreements were used by the U.S. and the European Community to induce the partner countries to accept their anticircumvention regimes.

3.1 Politics of Making DMCA The enactment of DMCA was a pitched policy battle right from the beginning to the end. Immediately after the DipCon, fair use proponents argued that DMCA was largely unnecessary to implement the WCT because U.S. law already complied with all but one minor provision, namely obligations concerning rights management system. However, neither the Clinton administration nor most of the Congressmen wanted to take a chance; they believed that the U.S. would lose out the El Dorado to Japan and the EC unless the U.S. puts in place a legal framework which would resassure content providers that they could safely disseminate and exploit their content through the Internet. An additional argument put forth by some fair use proponents was that even if it was necessary to amend the copyright law it was preferable to adopt The full title of the legislation is Digital Millennium Copyright Act of 1998. © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_3

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a policy of wait and watch so that greater clarity was acquired about how TPMs are used and circumvented; as one information economist put it “let content producers build their technical fences… but do not legislatively reinforce those fences until experience proves the existence of one or more abuses in need of a specific cure”.1 However, neither the Clinton Administration nor the Congress, not to speak of the content industries, were willing to adopt a policy of wait and see. As Jack Valenti of MPAA told a Congressional Committee with poetic licence, “Internet piracy is not a ‘maybe’ problem, a ‘could be’ problem, a ‘might someday be’ problem. It is a ‘now’ problem”.2 The firm position of fair use proponents was that if in case the amendment of copyright law was unavoidable and circumvention of TPMs was to be prohibited the prohibition should be limited to the act of circumvention of protected content specifically for the purpose of infringing copyright and related rights, and that on no score should business of making available circumventing devices and services (or to use jargon ‘preparatory acts’) be prohibited. If the preparatory acts were prohibited, it would be difficult for ordinary individuals to secure access to content protected by TPMs even for a use permitted by law; in other words, the right to fair use would be extinguished. The apprehension that fair use3 would be extinguished was the reason why the prohibition of preparatory acts was bitterly opposed in the runup to the enactment of DCMA in the U.S., and of the Canadian Bills introduced between 2005 and 2011 to transpose the Internet Treaties into Canadian law. In support of their stand, fair use proponents argued that Article 13 of the Draft WCT and Article 22 of the Draft WPPT had a specific provision which prohibited ‘the importation, manufacture or distribution of protection-defeating devices’ and the decision to delete this provision in the final version of the Treaties was deliberate. Those in favour of the prohibiting the preparatory acts argued that without such prohibition protection against circumvention of TPMs would not be effective, and that an interpretation of Article 11 of the WCT and Article 18 of the WPPT that limits prohibition to acts of circumvention alone was incompatible with the obligation cast by those articles. Among those who expressed such a view were von Lewinski,4 Reithbone and von Lewinski,5 Jane Ginsburg,6 and Ginsburg and Ricketson.7 Further, given that digital technologies had erased the distinction between private copying and sharing on the one hand and commercial copying and distribution on the other prohibiting circumvention of TPMs alone would necessitate copyright law enforcing authorities 1

Mackaay (1996). According to Joseph Liu, DMCA was drafted rather prematurely without any good idea of the types of technologies that it was intended to regulate, some of the provisions of DMCA indicate lack of clarity about what the TPMs and circumvention technologies would look like, and that DMCA’s lack of flexibility was problematic. Liu (2016, p. 827). 2 Cited in Nimmer (2001, p. 858). 3 Fair use is called fair dealing in Canada. 4 Von Lewinski (2008), Paragraph 17.98, pp. 464–465. 5 Reinbothe and von Lewinski (2015), Paragraph 7.11.34, p. 173. 6 Ginsburg (2005, pp. 17–19). For a critique of the legal arguments of Ginsburg (2005), and Ricketson and Ginsburg (2006) see Hinze (2006, pp. 789–790). 7 Ricketson and Ginsburg (2006, p. 977).

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to go after myriads of individuals in the privacy of their homes. It is administratively more expedient to pursue a small number of circumventing device manufacturers and suppliers than myriads of private individuals. In the policy battle over the enactment of DMCA, there were three distinctly different issues, each with its own array of interest groups. The first related to liability of intermediaries for contributory infringement; it was in no way related to TPMs but was connected with incidental reproduction and storage for the purpose of transmission of digitalised content. Intermediaries were particular that legislation-in-themaking should totally absolve them; however, content industries were reluctant to totally absolve intermediaries as their cooperation was invaluable in the battle against online infringement and a strict liability for subscribers’ copyright infringement was a good policy lever to persuade intermediaries to extend cooperation to them. The second issue related to TPMs no doubt but had no connection with the legal props for preventing circumvention of TPMs. Consumer electronics industries were particular that they should not be obligated to design and manufacture equipment which suited every type of TPM used by content provider. The third issue related squarely to the legal props for preventing circumvention of TPMs. Content industries were keen to have the strongest possible legal protection against circumvention of TPMs and the barest minimum limitations and exceptions. Among those opposed to the demand of the content industries, the foremost was DFC (see Sect. 2.1.3), a grand alliance of two distinct groups. The first comprised industry groups representing industries engaged in encryption research, reverse engineering in order to ensure interoperability of computers, testing security of computers, computer systems and computer networks; they desired exemption from the legal prohibition of circumvention of TMPs. The second group comprised proponents of fair use like the American Library Association and copyright experts in the academia who were in the forefront of the struggle against the Lehman Report and the opposition to the initial American stand at the DipCon. In effect, they advocated extending as it is all the existing uses covered by fair use into the digital environment, and for devising new exceptions and limitations that are appropriate in the digital network environment without being constrained by the Three-Step test. Their arguments and the counterarguments of the content industry were an encore of the arguments put forward during the debate on the Lehman Report and the Bills introduced in the Congress based on that Report. As the fair use proponents emphasised again and again in the runup to the DMCA, infringement of copyright and related rights is not the be all and end all of circumvention. Circumvention could be for securing access to protected content for lawful purposes such as fair use or for encryption research or testing computer security or decompilation of computer programmes for ensuring interoperability or for lawful reverse engineering. Of the three policy contests, the third was the most bitter. It was said, perhaps with a bit of exaggeration, that participants in “the debate over technological means for committing or forestalling copying were all paranoid, each suspecting the other of bottomless malevolence in their respective endeavours to control or liberated copyrighted material”.8 The policy conflict over circumvention 8

Ginsburg (2002, p. 67).

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provisions were also described, rightly so, as the Battle between the Silicon Valley (technology firms) and Hollywood (entertainment industries)9 the combatants were evenly matched in their lobbying power.

3.2 Policy Negotiations and Outcome As is customary in the runup to any copyright legislation in the U.S., there were several rounds of negotiations before an agreement could be reached.10 The negotiations were more protracted and bitter than the negotiations at the global level which culminated in Article 11 of the WCT and Article 18 of the WPPT as the outcome of negotiations had to be precise and free of any ambiguity lest it should fail to stand to judicial scrutiny. Members of Congress insisted that legal protection of TPMs and safe harbour for intermediaries should be treated as a pair and declined to enact one without the other; they wanted a balance to be struck between protecting copyright and related rights on the one hand and fostering the growth of Internet service providers in order to expand Internet access. The concerns of consumer electronics industries were met through a ‘no-mandate’ rule whereby consumer electronics manufacturers were not obliged to design a device to respond to a particular TPM. The no-mandate rule was followed by a voluntary agreement between all concerned on the type and standards of technological measures so that the design and manufacture of consumer electronics equipment are adapted to such technological measures as are agreed upon. The third policy battle revolved round the specifics of the anticircumvention provision, and the limitations on and exceptions from the anticircumvention provision. Compounding the complexity of policymaking in a situation wherein the interest groups for and against the legislation were evenly matched was that the making of DMCA was one of its kind. It was the first time when far-reaching changes were being made to copyright law in anticipation of technological and market developments; the technologies for digitalisation, digital transmission, technological protection of content and circumvention technologies were all at a nascent stage, and expectations about future technological and market developments were at best intelligent guesses. In such a situation, it was but natural that expectations about technological and market development differed widely, and so did views about the manner in which the legislation could meet the obligations imposed by Article 11 of WCT and Article 18 of WPPT.

9

Samuelson (1999, pp. 4–5); Baldwin (2014, pp. 265, 293–294). For an elaboration of some of the negotiations see Senate Subcommittee Hearing (2020a, 2020b, 2020c), Jonathan Band Statement. Band was a partner at the D.C. office of the law firm Morrison & Foerster, and on behalf of his clients he participated in the negotiations on the prohibition on circumvention, software interoperability and ‘safe harbour’. 10

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All in all, DMCA established (i) mechanisms for combating online infringement, S.1201 dealing with anticircumvention provisions being the main line of defence against infringement of copyright, and (ii) provision of safe harbours to intermediaries which are (i) engaged in transmission and hosting of content and system caching and (ii) serve as search engines.

3.2.1 Anticircumvention Provisions (S.1201) S.1201 prohibited: (i) circumvention of access controls as well as (ii) preparatory acts in regard to access as well as use controls. Only devices or services that are developed or distributed with the primary purpose of enabling circumvention of TPMs come within the purview of S.1201. The purpose could be established by: (i) the way that a device or service is designed or produced, (ii) the way it is marketed and (iii) the fact that a device or service has only a limited commercially significant purpose or use other than circumvention. Among devices excluded from the purview of S.1201 were general-purpose devices whose accidental, incidental or unwitting use would result in circumvention, and devices that, while capable of, and even used for circumvention, were primarily designed or used for purposes other than circumvention. S.1201 did not specify the technologies covered because to do so would doom it to rapid technological obsolescence. Any technology was covered if “in the ordinary course of its operation, [it] prevents, restricts, or otherwise limits” the exercise of exclusive rights. The DMCA differentiated between copyright infringement on the one hand and unauthorised circumvention of TPMs. DMCA made it clear that the anticircumvention provisions had no impact on rights, remedies or defences under copyright; consequently, fair use, the traditional defence to copyright infringement, does not apply to technological circumvention. The reason why DMCA prohibited only access controls and not use controls was the fact that if a person circumvented rights controls for committing an act which was not permitted by copyright law, he was liable for infringement of copyright; if on the other hand, a person circumvented rights controls for committing an act permitted by copyright law he was not liable at all. Hence, prohibiting circumvention of use control was redundant. In contrast to use controls, circumvention of access controls was another matter because exceptions like fair use do not guarantee access to the work in order to permit an act permitted by copyright. Most American academics who were in the forefront of the opposition to the Lehman Report, the American position at DipCon and subsequently to the DMCA took the view that prohibition of access controls created a new exclusive access right which neither the Berne Convention nor the WCT granted11 ; that view, however, was rebutted by Ginsburg who contended that fair use normally comes into play only after access to the copy has been lawfully

11

De Werra (2002, p. 15), footnote 73.

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obtained. It may be fair use to copy from a protected work; it is not, however, fair use to secure access by stealing the book in order to copy from it. In the context of drawing up limitation to and exceptions from the legal provisions for preventing circumvention of TPMs, conceptually a distinction could be drawn12 between substantive exceptions whose primary purpose is making available works so that those works ‘may be seen, listened to, studied, enjoyed as entertainment’, and non-substantive exceptions whose primary purpose is not making available works qua works but fulfilling public policy objectives. Section 1201 of DMCA provided seven non-substantive exceptions, all incorporated in the Act itself. Law enforcement, intelligence and other governmental activities received a blanket exemption from S.1201 in its entirety. This exemption prevented suspected Mafiosi and terrorists securing an unintended benefit from DMCA; they could have challenged the decryption of their records or communications by law enforcement or intelligence agencies. Other exemptions granted were as follows: (i) circumvention by non-profit library, archive and educational institutions solely for the purpose of making a good faith determination as to whether they wish to obtain authorised access to the work, provided that an identical copy of that work was not reasonably available in another form, (ii) reverse engineering to create noninfringing interoperable computer programmes, (iii) encryption research, (iv) testing the security of computers, computer systems and computer networks, (v) protecting personal privacy and (vi) preventing children from accessing objectionable material on the Internet. Unlike non-substantive exceptions, substantive exceptions are not listed in DMCA. DMCA envisaged substantive exceptions to be provided through a triennial administrative rulemaking by the Librarian of Congress based on the recommendation of the Register, Copyright Office. Designed as a fail-safe mechanism because marketplace realities could result in less access to copyrighted materials that are important to education and scholarship, the triennial review was expected to identify particular classes of works whose users would be unable to make non-infringing uses because of the provisions of DMCA regarding circumvention of access controls; users of works so identified would not be subject to liability for circumventing access controls of such works till the next triennial review. While recommending exceptions, the Copyright Office is required to take into account (i) the availability for use of works protected by copyright, (ii) the availability for use of works for non-profit archival, preservation and educational purposes, (iii) the impact that prohibition on the circumvention of TPMs has on criticism, comment, news reporting, teaching, scholarship and research, (iv) the effect of circumvention of TPMs on the market for or the value of copyrighted works and (v) such other factors as it considers appropriate. The burden of proving that circumvention of TMPs is required for noninfringing use of a work is on the party seeking exemption. Each triennial rulemaking is de novo: a class identified in a prior rulemaking is not automatically reinstated and the Copyright Office must determine de novo that an exemption is justified. Granting non-infringing exceptions based on a triennial review has two built-in advantages: 12

WIPO Guide (2003), CT-11.18 to 23, pp. 218–220.

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(i) the decision to grant or revoke an exception would be based on the latest information and (ii) decision-making would be easier than through amendment of an Act. The flipside of such an arrangement for grant of substantive exceptions is that the continuance of an exception in the next triennial review is unpredictable.

3.2.2 Secondary Liability of Intermediaries (S.512) The concept of ‘safe harbour’ was incorporated in the DMCA to limit the liability of intermediaries for copyright infringement when engaging in certain types of activities. Thus, S.512(a) covered ISPs that act as mere conduits for the automatic online transmission of material as directed by third parties, S.512(b) covered intermediaries that cache (temporarily store) information to improve network performance, Section 512(c) covered hosting, that is to say storing material at the direction of a user on an intermediary’s system or network and S.512(d) covered search engines which refer users to or link users with information location tools. An intermediary covered by S.512 was exempted from secondary liability if it was in no way involved with the information transmitted. Thus, it should not (i) initiate the transmission, (ii) select the receiver of the transmission, (iii) select or modify the material contained in the transmission and (iv) keep a copy of the material made and stored for the purpose of transmission longer than necessary for the purpose of transmission. An intermediary covered by the last three subsections (b), (c) and (d) was required to remove an infringing content when it receives a notice from the rightsowner (‘notice and take down’); even without the notice from rightsowner an intermediary was required to remove the infringing content if it had actual knowledge of infringement or was aware of facts or circumstances from which infringing activity was apparent (‘red flag knowledge’). Thus, an intermediary would not be liable for its subscribers’ infringing actions so long as it had no reason to suspect that infringement was taking place; however, once a content owner notified it of a violation, the intermediary was required to remove infringing material and to terminate the access of repeat infringers13 lest it should lose the ‘safe harbour’ status. The content owner was not required to substantiate his claim of infringement. And further, intermediaries were required to provide information to the content owner which could help identify the violators of copyright. S.512 completely exempted intermediaries from liability in suits by subscribers complaining that their material had been improperly removed in response to a rightsholder’s complaint or that their access had been unreasonably terminated for material wrongly alleged to be infringing.14 Section 512 also contained a provision to ensure that intermediaries were not placed in the position of choosing between limitations on liability on the one hand and preserving the privacy 13

‘Repeat infringer’ means subscriber of an intermediary service who is found to be repeatedly infringing copyright. 14 Litman (2006, p. 135). This is a very valuable resource on the politics and process of making DMCA.

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of their subscribers, on the other. Section 512 (m) explicitly stated that nothing in Section 512 required an intermediary to monitor its service or access material in violation of law (such as the Electronic Communications Privacy Act) in order to be eligible for any of the liability limitations. All in all, Section 512 was expected to facilitate inexpensive and efficient takedown of clearly infringing hosted content or links to infringing web sites from the Internet in a fair process, with no need for court review in most cases.15 The DMCA provisions regarding safe harbour and ‘notice and take down’ regime had come to be an accepted norm over most of the world and found a place with some changes in the EC’s E-Commerce Directive (2000) as well as laws in Australia, China, India, Japan, Singapore and many other countries.16 However, it is worth mentioning that in the U.S. S.512 covered only liability related to copyright infringement and that the immunity from other types of liability (e.g. transmission of defamatory material) is provided by S.230 of the Communication Decency Act, 1996. In contrast, the scope of some legislations (e.g. EC’s E-Commerce Directive and S.79 of India’s Information Technology Act, 2000) is not limited to providing immunity from liability related to copyright infringement. A few countries adopted variants of the ‘notice and take down’ system of S.512. At one extreme is the ‘notice-and-notice’ regime introduced in Canada which does not oblige a service provider, on receipt of a notice, to remove the unauthorised content or to cancel the user’s service. Service provider is only required to forward the notices from copyright owners to users, alerting them that their accounts are linked to alleged copyright infringement. A notice-and-notice regime generally does not impose any obligations on the user who receives the notice. On the other extreme is the ‘notice-and-stay down’ regime introduced in Germany wherein a takedown notice from a rightsholder generally triggers a duty for the service provider to proactively identify and remove all instances of the infringing content and prevent future uploads.17

3.2.3 Academic Critique of DMCA The enactment of the DMCA did not mark the end of the Copyright Wars which began with the Lehman Report: the barrage of academic criticism continued unabated. Most of the academic commentators targeted S.1201 dealing with anticircumvention provisions, and their comments were predominantly hostile. In contrast, S.512 hardly received any attention. The anticircumvention provisions were assailed on a number of grounds. First, while they achieved a balance of sorts between content industries and competing industrial and institutional interests, they gave short shrift to ‘public interest uses’, 15

Urban and Quilter (2005), 631,687. This article offers a detailed commentary on Section 512 (pp. 624–631). 16 Senate Subcommittee Hearing (2020a, 2020b, 2020c), Hughes Statement, p. 2. 17 U.S. Copyright Office (2020, pp. 52–53, 54–55).

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comprising fair uses, privileged uses and other non-infringing uses of copyrighted works,18 even though the WCT and the WPPT obligated such a balance to be incorporated in implementation legislation. Secondly, given that S.1201 prohibited trafficking in circumvention tools of all types even a work which had lapsed into public domain or whose use was permitted by law may be locked up by TPMs, thereby blocking lawful access to that work. Thirdly, there had been many unintended uses of S.1201 to shut out competition. Fourthly, the scope of the triennial review by the Librarian of Congress is too narrow to be of much use, not to speak of being inconsistent with the American tradition of fair use. Fifthly, S.1201 chilled scientific research and innovation, and even curbed freedom of expression by aiding attempts to block publication of research. All in all, much of the academic commentary was a damning indictment, more policy advocacy rather than a balanced assessment. Several fair use proponents held the view that S.1201 of DMCA was unconstitutional as it eliminated fair use which is constitutionally guaranteed, and further, it interfered with freedom of expression. However, the application of access controls to control access to work protected by copyright had so far stood judicial scrutiny.19 The second point, works whose copyright had expired being locked up by TPMs, greatly agitated librarians, archivists and public interest; if the TPM protecting the work is based on obsolete technology, the work locked up might be lost forever. It is apposite to mention the opposite point of view. It was claimed that the fear that rightsholders would prevent access to their works through the use of TPMs and thus prevent users from availing limitations and exceptions was unjustified and largely exaggerated. This was because “rightsholders depend in economic terms on the consumption of their works, and therefore, it is their own genuine interest to make [works] to a wide public”. The availability of works for purposes such as education, library use or research, may be effectively safeguarded through licensing arrangements. TPMs may even facilitate the operation of certain limitations and exceptions through a targeted technology, such as ‘copy once’ technologies. Further, TPMs have a rather specific application and are hardly applied to all formats and categories of works.20 Turning to the third point, manufacturers of software-embedded products such as electric garage door openers, printers and cell phones began to use access controls to prevent access to their software and use the legal prohibition of the circumvention of access controls to discourage the marketing of compatible accessories, independent repair and maintenance businesses, even repair by customers of their dysfunctional products, and attempts by cell phone owners to install software of their choice. Much of such anticompetitive behaviour, but not all, was curbed by judicial decisions and provision of exemptions under the triennial review by the Librarian of Congress. Turning to the fourth point, the triennial review by the Librarian had come in for much criticism. It had been claimed that the triennial review ‘to identify and exempt specific categories of users of specific categories of works on a finding of need’ is similar to the European practice of listing definitive specific exemptions, and that it 18

Samuelson et al. (2008, p. 21). Ginsburg (2007, pp. 21–23). 20 Reinbothe and von Lewinski (2015), paragraph 7.11.45 at pp. 175–176. 19

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runs counter to the American tradition of an open-ended fair use system that leaves the task of identifying individual exemptions to courts. S.1201 reversed the presumption of fair use that traditionally was attached to non-commercial uses; instead, the burden of convincing the Librarian of Congress that a use is fair use was on those who seek exemption.21 The opposite point of view held that the conventional American system of fair use would not work in the digital environment; a fair use system makes sense when “the vast majority of uses are unregulated” while in the digital environment “everything becomes presumptively regulated”.22 Such a regulation is necessitated because the distinction between private and commercial copying as well as private sharing and commercial distribution is erased in the digital environment. Even in the analogue environment, the delimitation of the boundaries of fair use requires prolonged, costly litigation. And further, fair use “is not always or consistently accorded an expansive interpretation in the U.S. courts, notwithstanding its potential breadth”, and “its application is notoriously unpredictable”.23 That unpredictability gives rise to legal uncertainty which is increased manifold in the digital environment. Critics of the triennial review also contended that the review was limited to the impact of only access control on non-infringing uses of classes of works; it does not extend to the impact of device ban, thereby ignoring “the most significant technologyregulating provision in the DMCA”. The exemption granted after the Review is limited to circumvention of access controls, and the Librarian has no power to direct rightsowners to stop using TPS in respect of non-infringing use of the class of works for which exemption had been granted.24 Consequently, beneficiaries of the exemptions granted by the Librarian have to neutralise access controls themselves; those who cannot have to either forgo the benefit of exemption or engage the services of a hacker to neutralise the access control. Further, the process for securing exemption is burdensome. Exemption granted in a review is valid only till the next review without a presumption that the exemption granted would continue unless there is conclusive evidence that exemption should not be continued because of changed circumstances. Consequently, every three years, even those exemptions which ought to have been made permanent (e.g. institutions which provide accessible copies of works to the blind and print disabled in formats they can perceive) have to be re-examined de novo. Re-examination of each and every case of exemption granted earlier clutters the process of review. All in all, the triennial rulemaking, envisaged as a safety valve and prevent unintended impact on non-infringing uses by the ban on circumventing access controls as well as circumventing devices and services, “may not let off enough steam”.25 Turning to the fifth point, in the runup to DMCA and for a few years thereafter the innovation which S.1201 purportedly chilled was innovation by professionals 21

Cohen (1999, pp. 238–239). Lessig (2004, p. 145). 23 Craig (2017, p. 28). 24 Samuelson (1999, pp. 560–562). 25 Ginsburg (2007, p. 17). 22

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in the areas of computer software, encryption, computer security and computer programmes. Most such innovations emanate out of ‘tinkering’ with technologies and other human-made artifacts to learn, among others, how things work, to discern flaws or vulnerabilities, to build their skills, to tailor the artifacts to serve one’s specific needs or functions, to repair or make improvements to the artifacts and to adapt them to new purposes.26 S.1201 impedes tinkering. The celebrated cases of Ed Felten, a Princeton computer science Professor and a Russian programmer Dimtry Sklyarov were often cited as impediments to research, innovation and freedom to publish created by the anticircumvention provisions of DMCA (see Sect. 4.4). Among the suggestions made by fair use proponents to ward off the undesirable consequences of DMCA were (i) amending DMCA such that circumventing a TPM or manufacturing and supplying circumvention devices and services would be unlawful only if done for the purpose of, or if it would lead to, infringement of copyright, and (ii) creating a flexible mechanism to permit access to, and use of, circumvention devices and services to use copyrighted works for lawfully permitted purposes.27 It is pertinent to mention that Ficsor consistently put forth the view that effective TPMs are indispensable for the protection, exercise and enforcement of copyright in the digital, networked environment, and therefore, exceptions to Article 11 should be carefully crafted and narrowly focused lest the legal prohibition of TPMs should be rendered nugatory. Referring to the demand made by some fair use exponents that an exception should be provided to allow commercial distribution and trafficking in circumvention devices or services for the purpose of fair use, he expressed the view that such an exception would “swallow the whole, since almost any such device could, in theory, be used for that purpose, and once placed on the market for such purpose, would become available to all to use with impunity”. A declaration system included in the law, under which “the importation and distribution of circumvention devices is allowed if the importer or the distributor, respectively, declares that the devices are to be made available for ‘permitted purposes’”, is far from being a sufficient guarantee, since as soon as a circumvention device is distributed, it is impossible to reduce its use for non-permitted purposes.28 Not all academic comment was hostile. Jane Ginsburg raised the seminal question what balance meant in the digital environment. Section 1201 did represent a rebalancing of power between copyright owners and users; however, “we should not immediately assume that any change in the prior state of affairs is a bad thing”. “Newer technology”, she noted percipiently, “undermines the factual premise for tolerance (for use which does not require the authorisation of the rightsholder); if the tolerance is to persist as a prerogative, it requires a legal basis”.29 In other words, neither rights nor limitations and exceptions can remain the same in the digital environment of perfect and easy reproduction, and real-time communication to myriads of person all over the world. She cited a three-year study of the impact of S.1201 26

Samuelson (2016, p. 564). Hinze (2006, p. 820). 28 WIPO Guide (2003), C11.13, 11.20, 11.21, pp. 217, 219. 29 Ginsburg (2005, pp. 35–36). 27

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of DMCA by the Columbia Law School’s Kernochan Center for Law, Media and the Arts to argue that there was little evidence at this point to show that technological controls were preventing privileged uses; Section 1201 had provided substantial benefits to consumers by encouraging the development of innovative new business models for delivering sound recordings, motion pictures, books and other copyrighted works to consumers. On the whole, “whatever its many imperfections”, the DMCA “endeavours to foster a digital environment in which enhanced security encourages the digital release of works, and limitation on service provider liability promotes their broad circulation”.30

3.3 Turn of the Tide In 2020, when the IP Subcommittee of the Senate Judicial Committee began hearings on DMCA and the measures being taken in other countries to curb online piracy, it was S.512 which received most of the attention,31 mainly because (i) new types of intermediaries like YouTube who are major purveyors of online content and social media made their appearance from about 2005, and they are a class apart from the intermediaries which were provided safe harbour status by early implementation legislation, (ii) S.512 did not function the way it was expected of it, and “has come to be a system no one likes”,32 and (iii) getting the intermediaries play a more active role came to be perceived as holding the key to the curbing of online infringement as well as hate mail and fake news.

3.4 ‘Export’ of DMCA Provisions Through Trade Agreements Following the collapse of the Doha Round Trade Negotiations, both the EC and the U.S. have been attempting to enter into bilateral and regional trade agreements. Bilateral Free Trade Agreements had come in handy for the EC and U.S.33 to insist that the country with which they enter into a trade agreement (i) ratify/accede to the Internet Treaties, (ii) strengthen copyright enforcement and (iii) adopt in its implementation legislation the provisions of EUCD34 /DMCA relating to technological measures and secondary liability of online intermediaries. They could plausibly put forth the argument that in order to succeed a Free Trade Agreement should dismantle barriers to trade within the area covered by the agreement and that disparities in IP laws 30

Ginsburg (2002, p. 68). Senate Subcommittee Hearing (2020a, 2020b, 2020c). 32 Boyden (2013). 33 Gasser (2006, pp. 51–56). 34 European Union Copyright Directive: see EUCD (2001). 31

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function as a trade barrier. As a matter of policy, the numerous bilateral agreements established by the EC “contain a chapter dedicated to IP”, and “this chapter usually establishes that a very high standard of protection of IP (including the enforcement thereof) must be achieved”.35 Provisions on the enforcement of IP in bilateral trade agreements were expected “to allow the EU to by-pass the multilateral trading system and to consolidate key elements of multilateral intellectual property rights treaties by targeting specific countries where there are particular concerns about counterfeiting and piracy”.36 The U.S. policy in regard to bilateral and regional trade agreements is as clear as that of EU. The U.S. Trade Act of 2002 explicitly stated that “the principal negotiating objectives of the United States [include] ensuring that the provisions of any multilateral or bilateral trade agreement governing intellectual property rights that are entered into by the United States reflect a standard of protection similar to that found in United States law”. As during the TRIPs negotiations, trade concessions were leveraged to secure concessions in respect of IPRs. To illustrate, the Australian Digital Agenda Act, 2000 (DAA), enacted to implement the Internet Treaties, prohibited only the business of providing the means for circumvention; the act of circumvention itself was not prohibited. The prohibition applied to devices and devices (i) whose sole purpose was circumvention of TPMs or (ii) had limited commercial significance or purpose other than circumvention. Further, instead of an absolute ban on circumvention devices and services, the DAA set up an administrative process, whereby circumvention devices or services could be supplied to ‘qualified persons’ for circumventing TPMs and making a use permitted by law. If need be, a circumventing device could be made or imported for supply to a qualified person.37 Consequent to the U.S. Australia Free Trade Agreement (2004), Australia had to replace DAA by a Copyright Amendment Act modelled on the DMCA.38 The Australian modification of its copyright law is not an exception. Pursuant to trade agreements since 2002, apart from Australia, Bahrain, Chile and Colombia, countries covered by the Dominican Republic-Central America Free Trade Agreement, Morocco, Oman, Peru and Singapore were persuaded to accede to WCT and adopt TPM regimes modelled after the regime in DMCA.39 The insistence in the bilateral agreements entered into by the EU and the U.S. that the other party should ratify or accede to the Internet Treaties and introduce anticircumvention measures similar to that of EUCD or DMCA led to a backlash against the Internet Treaties themselves. Thus, the U.K. Commission on Intellectual Property (2002), a sharp critique of IP, expressed concern about the pressure being exerted on developing countries through bilateral trade agreements “to accede to the WIPO Copyright treaty, or even to adopt stricter prohibitions against circumvention of technological protection systems and effectively, thereby reducing the scope of 35

European Union (2005). Matthews (2008, p. 14). 37 De Werra (2002, pp. 33–39). 38 Hinze (2006, p. 815–816). 39 Hinze (2006, p. 788) and footnote 13; for a more detailed treatment see Kaminski (2014). 36

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traditional fair use in digital media”.40 Such views influenced some developing countries like Brazil and Egypt not to accede to the Internet Treaties. However, for the sake of perspective, it is important to bear in mind that even among GRULAC countries, only a few island states and Bolivia, Brazil, Cuba, Guyana, Haiti, Surinam and Venezuela did not accede to or ratify the Internet Treaties; the rest are Contracting Parties.

Bibliography A. Articles and Books Baldwin, P. (2014). The copyright wars: Three centuries of trans-Atlantic battle. Princeton University Press. Boyden, B. (2013). The failure of the DMCA notice and takedown system: A twentieth century solution to a twenty-first century problem. Center for the Protection of Intellectual Property. Cohen, J. E. (1999). WIPO copyright treaty implementation in the United States: Will fair use survive? 21 European Intellectual Property Review, 21, 236–260. Craig, C. (2017). Globalizing user rights-talk: On copyright limits and rhetorical risks. American University International Law Review, 33(1), 1–73. De Werra, J. (2002). The legal system of technological protection measures under the WIPO treaties, the Digital Millennium Copyright Act, the European Union directives and other national laws (Japan, Australia). In J.C. Ginsburg (Ed.), Adjuncts and alternatives to copyright, Proceedings of the 2001 ALAI Congress, U.S.A. Association Littéraire et Artistique Internationale. Gasser, U. (2006). Legal frameworks and technological protection of digital content: Moving forward towards a best practice model. Fordham Intellectual Property, Media and Entertainment Law Journal, 17(1), 39–113. Ginsburg, J. C. (2002). Essay—How copyright got a bad name for itself. Columbia Journal of Law and the Arts, 26(1), 61–77. Ginsburg, J. C. (2005). Legal protection of technological measures protecting works of authorship: International obligations and the U.S. experience. Columbia Journal of Law and the Arts, 29, 11–37. Ginsburg, J. C. (2007). The pros and cons of strengthening intellectual property protection: Technological protection measures and Section 1201 of the US Copyright Act. Columbia Public Law Research Paper No. 07-137. Hinze, G. (2006). Brave new world, ten years later: Reviewing the impact of policy choices in the implementation of the WIPO Internet treaties’ technological protection measure provisions. Case Western Reserve Law Review, 57(4), 779–821. Kaminski, M. E. (2014). The capture of international intellectual property law through the U. S. trade regime. Southern California Law Review, 87, 977–1052. Lessig, L. (2004). Free culture: How big media uses technology and law to lock down culture and control creativity. Penguin Press. Litman, J. D. (2006). Digital copyright. Prometheus Books. Liu, J. (2016). Comment on Gwen Hinze. Case Western Reserve Law Review, 57(4), 823–828. Mackaay, E. (1996). The economics of emergent property rights on the internet. In P. Bernt Hugenholtz, & L. Guibault (Eds.), The future of copyright in a digital environment. Kluwer Law International.

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U.K. IP Commission Report (2002, pp. 106, 108).

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Matthews, D. (2008). The fight against counterfeiting and piracy in the bilateral trade agreements of the EU. European Parliament Briefing Paper. Nimmer, D. (2001). Back from the future: A proleptic review of the digital millennium copyright Act. Berkeley Technology Law Journal, 16, 855–876. Reinbothe, J., & von Lewinski, S. (2015). The WIPO treaties on copyright: A commentary on the WCT, the WPPT, and the BTAP (2nd ed.). Oxford University Press. Ricketson, S., & Ginsburg, J. C. (2006). International copyright and neighbouring rights: The Berne convention and beyond (2nd ed.). Oxford University Press. Samuelson, P. (1999). Intellectual property and the digital economy: Why the anti-circumvention measures need to be revisit. Berkeley Technology Law Journal, 14, 519–564. Samuelson, P. (2016). Freedom to tinker. Theoretical Inquiries in Law, 17, 563–600. Samuelson, P., Reichman, J. H., & Dinwoodie, G. (2008). Legally speaking: How to achieve [some] balance in anticircumvention laws. Communication of the ACM (Association of the Computing Machinery), 51(2), 21–26. Urban, J. M., & Quilter, L. (2005). Efficient process or chilling effects—Takedown notices under Section 512 of the Digital Millennium Von Lewinski, S. (2008). International copyright law and policy. Oxford University Press.

B. Official Documents European Commission/European Union EUCD. (2001). Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society. European Union. (2005). Strategy for the Enforcement of Intellectual Property Rights in Third Countries. United Kingdom U.K. IP Commission Report. (2002). Integrating Intellectual Property and Development Policy. Report of the Commission on Intellectual Property. United States Digital Millenium Copyright Act. (1998). Public Law 105–304-October 28, 1998. Senate Subcommittee Hearing. (2020a, February 11; March 10). The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress. Hearing on the Digital Millennium Copyright Act at 22: What Is It, Why It Was Enacted, And Where Are We Now; Hearing on Copyright Law in Foreign Jurisdictions: How Are Other Countries Handling Digital Piracy. Senate Subcommittee Hearing. (2020b, February 11). Statement of Jonathan Band. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on the Digital Millennium Copyright Act at 22: What Is It, Why It Was Enacted, And Where Are We Now. Senate Subcommittee Hearing. (2020c, March 10). Statement of Justin Hughes. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on Copyright Law in Foreign Jurisdictions: How Are Other Countries Handling Digital Piracy. United States Copyright Office. (2020, May). Section 512 of Title 17. A Report of the Register of Copyright. World Intellectual Property Organisation (WIPO) (1996). Final Text of WCT and WPPT. WCT. (1996). CRNR/DC/94 dated December 23, 1996. Available at https://www.wipo.int/edocs/ mdocs/diplconf/en/crnr_dc/crnr_dc_94.pdf

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WPPT. (1996). CRNR/DC/95 dated December 23, 1996. Available at https://www.wipo.int/edocs/ mdocs/diplconf/en/crnr_dc/crnr_dc_95.pdf WIPO Guide. (2003). Guide to Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms.

Chapter 4

New Technologies Unleash Creative Destruction

Abstract This Chapter describes how Napster, a Peer-to-Peer (P2P) filesharing service, burst on the copyright scene within about two years of the adoption of the Internet Treaties, and knocked out much of the music copyright system in one fell swoop. Napster was just the beginning; tackling online infringement turned out to be a cat and mouse game as an unending stream of distributed platforms followed Napster and transmuted legal victories of rightsowners into pyrrhic victories. Legal action, in desperation, to sue thousands of individual infringers and computer researchers served only to trigger a normative backlash against the copyright system itself. By early 2000s, the copyright policy environment in the U.S. became very complex with social media driven activism acquiring salience. Internet activism foiled efforts by the Congress to enact more stringent ‘second wave’ enforcement legislation. A digital renaissance made its appearance once the content industries realised that the best way to combat online infringement was to develop and market business models which offered a better listening and hearing experience than ‘pirated’ content. Such models help hundreds of millions of users to have lawful access to an almost unimaginably rich array of digital content through licensed services and ensured that figuratively the sky was rising for the entertainment industry.

4.1 Peer-to-Peer File Sharing Bursts on the Copyright Landscape In less than a year after Digital Millennium Copyright Act (DMCA) was enacted, and even before the prohibition of the act of circumvention came into effect,1 the inadequacy of the electrified fence (Technological Protection Measures [TPMs] backed up by legal prohibition of circumvention) was brought to the fore by the emergence of Peer-to-Peer (P2P) sharing of music files and consequent rampant online infringement of recorded music. Events proceeded at a dizzying pace with technical, legal, social and industrial developments occurring in rapid-fire succession. An estimated 1

The relevant section of DMCA, S.1201(a)(1)(A) came into effect only on October 28, 2000.

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_4

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four million people in the United States listened to digital music in the month of June 1999, as compared to a few hundred thousand less than a year earlier; almost all the digital music was music obtained through infringement of copyright. A confluence of reasons explain why music industry was the first content industry to be subjected to massive infringement through P2P file sharing.2 First, almost all the recorded music marketed in advanced countries was in the digital format as CDs had come to be the mainstay of the music industry since 1983. Secondly, the advent, in mid 1990s, of audio compression devices like MP3, and CD ripping techniques made it possible for the content in CDs to be copied and stored in computer memory and transmitted over the Internet. The introduction, in September 1998, of one of the first portable consumer MP3 digital audio players “dramatically increased consumer interest in downloading MP3 files3 over the Internet and extracting or ‘ripping’ sound recording files from CDs to a computer hard drive and compressing them”.4 Thirdly, the endto-end architecture of the Web allowed end users to exchange files5 (regardless of whether they were copyrighted or not) without having to pass any filter.6 Fourthly, discovery of works available on the Web was facilitated by the emergence of simple and powerful search mechanisms. Fifthly, files containing high-fidelity music could be made small enough, and hence both storage and downloading were reasonable tasks as compared to films. The maximum speed of Internet in 1998, when the DMCA was enacted, was 56 kbp, a tiny fraction of today’s speed, and with that speed a single song took 10 min or more to download, and a movie a day or more. Sixthly, music was popular with the youth who had easy access to the required technology and the sophistication to use it. Seventhly, music could be enjoyed with the existing technology: good speakers could be easily attached to a computer, producing near-CD quality sound, and a variety of portable MP3players were available that hold 30 min to an hour of music. All in all, the groundwork needed for massive P2P file sharing was completed when Napster introduced P2P file sharing in in September 1999. In the 2000s, digital piracy “has made the media market look increasingly like utopian anarchy, a government-free world where no demand is compromised because the supply is seemingly infinite. From Napster to KaZaA, LimeWire to The Pirate Bay, RapidShare to Megaupload, file-sharing sites have established their own stable of name brands. For people using the Internet as a tool to get the media and information they want, the system works well. For the content industries, it’s a terrifying picture”.7 Prior to the advent of P2P file sharing file transmission in the digital environment was through downloading from the website where the file was located; the website was located through search engines. In this client–server model of file transmission, individual computers communicate with central servers that control, coordinate, and 2

National Research Council (2000, pp. 76–78). MP 3 files are compressed digital representations of musical recordings. 4 Menell (2002–2003, p. 139). 5 A file is a compilation of data comprising a string of 0 and 1 s specific to say a song or a video. 6 Renda (2011, p. 197). 7 Fischer (2011). 3

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manage client requests. In such cases, communication between individual computers is indirect and the server operates as a central conduit for information transfers. This model suffered from two deficiencies. First, when the server was down files were not available for transmission. Secondly, because all connections should be routed through a central server or a cluster of servers, users might experience lengthy delays when many simultaneously download files; the central server or cluster of servers might even crash in the event of far too heavy load. P2P technologies overcame the deficiencies of the client–server model by decentralising distribution whereby users could directly obtain files from other users bypassing central servers; consequently, users need not queue at the gates of the server, and thereby congestion was avoided at dedicated servers. P2P technology converted every computer running the software and connected to Napster into a ‘servent’, enabling it to function as both a server and a client. The more peer nodes (in simple words, users) there are on a P2P network at any given time, the greater the network’s total capacity. P2P technology vastly expanded the effective storage and exchange capacity of the Internet by enabling computer users to search the computer drives of thousands of other users for files encoded in the MP3 compression format, a format commonly used for music files. P2P technology provided a more robust system as one peer’s crash does not affect other peers in the peers’ network because files are not located on one central server; multiple copies are dispersed throughout the network. In 1999, Napster transformed the Internet from a curiosity to an indispensable device and ignited P2P sharing revolution; it also triggered a tectonic shift in the music industry and profoundly altered the balance of power between the recorded music industry on the one hand and consumers on the other. It profoundly altered “consumer behaviour, transforming within a matter of months how millions of consumers gained access to music and accelerating the transition to a digital music”.8 The decentralised model of P2P networking posed a significant challenge to sectors of the entertainment and information businesses that followed a model of centralised control over content distribution. Napster for the first time demonstrated how difficult it was to prevent copyright infringement in the digital medium. The measures envisaged by the Internet Treaties and enacted by DMCA to curb online infringement proved inadequate to totally put down the large-scale online infringement made possible by P2P technologies. TPMs and S.1201 seemed to be of not much use in curbing infringement occurring through use of P2P file sharing, and so did invoking the assistance of intermediaries to take down the infringing content through the issue of a notice under S.512. This was because the content was not hosted on a central server, and files spread quickly and simultaneously from many users and sources. Whatever, if at the time of adopting the Internet Treaties and the DMCA, the untamed web was scary “the explosive adoption of peer-to-peer software was mortifying”.9 It looked as though Barlow was right on the dot when he predicted that copyright would not survive the Napster bomb, but creativity would.10 8

Menell (2002–2003, p. 144). Herman (2012, p. 187). 10 Barlow (2000). 9

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Napster offered Music Share, a MP3 music file-sharing software, and a directory service that contained an index of all the MP3 files that Napster users wished to share with other Napster users. When the user searched for an artist or title of a song, the Music Share software used the index on the Napster server to locate another user with that MP3 file. If he chose to download the file, the software then connected the two users together and a transmission proceeded directly between them, rather than go through any Napster server. In effect, Napster simply acted as a middleman between users, facilitating them to easily communicate with other users in order to obtain the music they wanted. At its peak, Napster had an estimated sixty-five million users all over the world; at any given time, file swapping was being undertaken by over 7000 Napster users, swapping over 1.5 million files.The loss that recorded music industry suffered because of Napster’s operations was substantial; unit sales of recorded music dropped 26% and record industry revenues fell 14%—a $2 billion decline.11 Napster was estimated to have distributed more music than the whole record industry had since it came into existence; no wonder that Napster was considered to be destroying the music record industry.12 This point of view was contested by academics who were sceptical about the desirability of strengthening the rights of copyright owners in the digital medium. In their view, the entertainment industry was crying wolf “much the way that traditional print publishers did in arguing that public libraries and later photocopiers would undermine the market for books and journals, radio would rob the music industry, the video cassette recorder would lead to the demise of the film and television industries, and analogue cassette recorders would destroy the sound recording industry”.13

4.2 Legal Challenge to P2P File Sharing Service Providers Napster was a new type of intermediary which did not distribute works by itself; nor did it copy or store MP3 files onto its own equipment. The music files were located on the hard disk drives of Napster users. Napster did not in any way reproduce, adapt, distribute to the public, publicly perform, or publicly display works; it only provided the software and information about the locations where the files which a customer was looking for could be found. That being so, the question that arose was whether Napster bore secondary liability for the infringement done by its customers. In the suit filed by the Record Industries Association of America (RIAA) in the District Court for the Northern District of California, Napster argued that it was no more than an intermediary and hence eligible to exempted, under Section 512 of DMCA, from any secondary liability for the infringing activities of its customers. However, the argument was not accepted by Judge Patel who issued, in June 2000, a preliminary injunction preventing Napster “from engaging in, or facilitating others to engage in 11

Parloff (2003). Menn (2003, p. 161). 13 Menell (2002–2003, pp. 101–102). See also Ku (2002, p. 290). 12

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copying or duplicating all copyrighted songs and musical compositions of which the plaintiffs (music industry) hold copyright”. Thereupon, Napster filed an appeal in the U.S. Court of Appeals for the Ninth Circuit. In the appellate court, Napster put forth a number of grounds in its defence, including the Sony judgement14 which was hailed as the Magna Carta of the Information Technology Industry for the safe harbour it provided for technologies suitable for substantial non-infringing use. Napster invoked the Sony judgement, asserting that not all the files were copied without authorisation, and that P2P architecture could, in future, spawn more non-infringing uses.15 It is interesting that eighteen copyright professors, a Who is Who of copyright experts who opposed the strengthening of copyright in the digital medium such as Peter Jaszi, Jessica Litman and Pamela Samuelson, filed an amici curia brief in the U.S. Court of Appeals, Ninth Circuit.16 In brief, they argued that Napster’s P2P file sharing system was an enormously promising technology that facilitated search for and sharing files that reside on the hard drives of other personal computers, and thereby giving individual consumers enhanced control over the information they find, save and transmit over the Internet. By changing the way Internet worked, P2P file sharing might hold solutions for a number of problems plaguing the Internet such as easing traffic congestion in the Internet, lessen the role of Internet as a repository of information and make it a conduit that lets any PC owner reach into any other wired hard drive in the world; it could also enable users to search for data on countless number of hard drives simultaneously instead of only on the Internet. Further, Napster was covered by the Sony judgement as Napster could have non-infringing uses it. An adverse decision would wipe out a promising technology. The arguments of Napster and its supporters did not pass muster with the appellate court which distinguished the Napster case from that of Sony. Unlike Sony, Napster had an ongoing relationship with its customers and could exercise control over the use of its services. If it chose, it could stop its use for the infringement of copyright because it kept indexes on its premises and could therefore filter out copyrighted works without fundamentally altering its current architecture. Napster was not an innocent middleman as proof was adduced by the plaintiff RIAA that Napster knew that its customers were making available copyrighted music in violation of copyright law.17 The judgement of the appellate court forced Napster to shut down. In retrospect, Napster ‘brought music to the masses’,18 and popularised the ability to download songs online and helped usher in changes to the music industry that led the streaming and sale of music online through services like Rhapsody and Spotify, and retail sites like the iTunes Store and Amazon.

14

Sony v. Universal City Studios, Inc., 464 U.S.417 (1984). For details of the grounds adduced by Napster and critique of the judgments of the District Court and the Appellate court see Rimmer (2001), Ginsburg (2008). 16 Napster Consortium of 18 Copyright Law Professors Amicus Curiae (2000, p. 5). 17 A&M Records, Inc. v. Napster, 239 F.3d 1004 (9th Cir. 2001). 18 Hunter and Lastowka (2004, p. 974). 15

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The Achilles heel of Napster had been the centralised file system which led the Ninth Circuit appellate court to infer that it could control the use of its services, and that if it chose, could stop its use for the infringement of copyright. Soon after Napster judgment, Fred von Lohmann, an attorney with the Electronic Frontier Foundation (EFF19 ), posted an advice to programme developers on the EFF’s website outlining how one could skirt around the Napster judgment. A disaggregated mode, where functions were disaggregated and each of the functions handled by a different product and vendor, would limit what a court could order.20 Von Lohmann’s ideas were operationalised by subsequent file-sharing systems, including FastTrack (used by Grokster and KaZaA) and Gnutella (used by Morpheus and LimeWire); these systems decentralised their architectures by eliminating the central indexing server. To improve search efficiency without creating a bottleneck at a central indexing server, FastTrack employed mini-indexing servers, called supernodes,21 which were dispersed throughout the network, and were responsible for indexing the contents of nodes connected to them. These later generation P2P file sharing systems enabled Internet users to search for and to exchange with other users not only MP3 music files as Napster did but also computer programs, movie videos and e-books. It is pertinent to point out that the distinction between Napster and the next generation P2P file sharing networks consisted of not only disaggregated software architecture but also revenue models which generated substantial advertisement revenue from the network’s use. Motion Picture Association of America (MPAA) and RIAA filed copyrightinfringement lawsuits against three file-trading services, Grokster, StreamCastand KaZaA contending that the defendants were liable for both contributory and vicarious copyright infringement. In both the District Court (April 2003) and the Ninth Circuit appellate court (August 2004) they were unsuccessful. In the District Court, Judge Wilson held that the services offered by the defendants had substantial non-infringing uses such as “distributing movie trailers, free songs or other non-copyrighted works”, even “sharing the works of Shakespeare”. He also held that held that the defendants were not liable for contributory infringement because there was no evidence that they had any material involvement in the users’ conduct, and further that they were not liable for vicarious infringement also as there was no evidence showing that they had any right or ability to supervise and control users’ conduct. The Judge acknowledged that the P2P networks had been structured in such a way as to evade the threat of contributory infringement; however, it was not for the Court to expand the boundaries

19

EFF was a key player in the copyright field as a powerhouse of advocacy deploying every weapon in the armoury of advocacy to advance digital privacy, free speech and innovation, and to oppose the expansion of copyright. 20 Fred von Lohmann, ‘IAAL: Peer-to-Peer File Sharing and Copyright Law after Napster’, P2Panalyst.com, 2001. Cited in Ginsburg (2008, p. 582). Also see Parloff (2003) which elaborates the suggestion of Fred von Lehman, and the development of the KazaA system. 21 Supernodes were nodes which had greater bandwidth and processing power relative to other peers on the network.

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of copyright law to provide a remedy to the plaintiffs.22 The Ninth Circuit appellate court upheld the order of the District Court adopting the same reasoning. The judgement of the District Court led to the anomalous situation of the users of P2P file sharing services being liable for copyright infringement while the companies which provided P2P file sharing services and gained financially from such provision were legally untouchable. In desperation, RIAA and its constituents began to sue individual users which, as would be outlined below, did not stop the infringement but got a bad name for copyright and the record industry. The final appeal in the U.S. Supreme Court was an epic battle not only between interest groups (content providers and artists v. technology industries, venture capitalists, consumer electronics manufacturers and those advocating fair use, free software, open access and Creative Commons) but also a battle between copyright experts with different value systems. The conflicting value systems of the academic combatants can be vividly captured by drawing upon American history. On the one side are neo-Jeffersonians who look to “a decentralised future-in which the Internet and other digital technologies will place public discourse and economic innovation in the people’s hands”; what they “fear most is that the government will allow corporate leviathans to colonise the digital world, commodifying and then monopolising control over information and innovation”. The people they think about are developers and users of open source software, Internet start-ups, public librarians, music-file swappers, and public-school teachers. On the other side are neo-Hamiltonians who view IP rights as indispensable for fostering creativity and innovation and sustaining industries and services which make a huge contribution to the American economy-GDP, employment and balance of payments; Neo-Hamiltonians are less of a presence than Neo-Jeffersonians in the academic world but are powerful in the courts and legislatures.23 In all, twenty-three amicus curiae briefs were filed in favour of the petitioners, Metro-Goldwyn-Mayer and twenty-seven in favour of Grokster. In addition, eight briefs were filed in support of neither party, and the United States government and the State Attorney Generals filed briefs in support of the petitioners.24 Among those who filed briefs on behalf of the plaintiffs were (i) ten economists including Nobel Laureates Kenneth Clarke, George Stigler and Gary Becker and William Landes, renowned economist of IP; (ii) fifteen law professors, economics professors and treatise writers including Ralph Oman who served as Register of Copyrights and Hugh Hansen, founder and director of the well-known Fordham Annual Conference on International Intellectual Property Law and Policy, and; (iii) Professors Peter Menell, David Nimmer, Robert Merges and Justin Hughes. Among those who filed briefs on behalf of Grokster were seven groups of law, economics, media studies, technology and innovation professors; these groups included a group of sixty IP and 22

Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd., 259 F.Supp.2d 1029 (CD Cal, 2003) at 1034–1035. 23 Farber (2005, pp. 1319–1320). I have elaborated the reasons why Neo-Hamiltonians support strong IP. 24 List of the amici curiae briefs and web links of the briefs (2022).

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technology professors which included, among others, Pamela Samuelson, Jessica Litman, Jerome Reichman and Neil Netanel. In their brief, Pamela Samuelson et al. framed the case under consideration of the U.S. Supreme Case as one fundamentally about technology policy, not about file sharing or copyright infringement. They contended that the safe harbour rule in Sony for technologies with substantial non-infringing uses meant that in order for a developer of technology to avoid secondary liability, the technology at issue must already have, or there existed a reasonable possibility that it would have, noninfringing uses, and as in patent law, such uses should be deemed insubstantial if they were farfetched, illusory, impractical, or merely experimental. This rule struck a balance between various interests: the interests of rightsholders in legal enforcement of statutorily granted exclusive rights, the interests of developers of multiple-use technologies, and the interests of the public in access to technologies with noninfringing uses. The current dispute was part of a much larger phenomenon of copyright adjusting to digital technologies. Quoting the much-cited article of Peter Biddle et al25 they contended that no matter what the Court ruled in this case, unauthorised P2P sharing of copyrighted works would continue. Leading associations of the information technology industry, the consumer electronics industry, the Internet industry, the telecommunications industry, and the venture capital community had submitted amicus curiae briefs in this case not because they condoned copyright infringement, unauthorised file sharing, or the business practices of Grokster and StreamCast but because they saw clearly the risk that the Court would be so deeply troubled by the volume of copyrighted works being shared without authorisation via P2P networks that it would abandon the Sony safe harbour for technologies with substantial noninfringing uses in favour of a primary use or complex balancing test for judging secondary liability of technology developers. The aforesaid contention was questioned by Nobel Laureate Kenneth Arrow and other economists. Based on sound economic logic, they argued that if firms that developed P2P technology know that they would be completely immune from liability as long as their technology made possible some amount of non-infringing use, they would have no incentive whatsoever to attempt to discourage infringing uses even if the costs of doing so were very low. Copyright experts, Menell, Nimmer, Merges and Hughes also disagreed with Pamela Samuelson et al. One of the arguments they put forth was P2P technology was a strikingly different technology unimaginable when the Sony case was adjudicated. Furthermore, amendments to the Copyright Act since the Sony decision demonstrated that Congress did not believe that dual-use technology should be treated as inviolate under copyright law. To give an example, with a view to protect music copyright owners against the threat of unauthorised copying and distribution the Audio Home Recording Act (1992) prohibited the importation, manufacture, and distribution of any digital audio recording device that did not incorporate technological controls to block serial copies of a copy being made. This stipulation was made in spite of the fact that unregulated digital recording devices 25

Biddle et al. (2003). This article offers a good account of evolution of technologies for digital transmission, sharing of content and TPMs.

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clearly had non-infringing uses, such as making second generation copies of public domain works or authorised works. In stipulating the incorporation of technological controls, the Congress saw the balancing of copyright, consumer and technological innovation interests as the appropriate solution. In June 2005, the Supreme Court reversed the judgement of the Ninth Circuit without reversing the Sony judgment.26 It held that the Ninth Circuit misapplied the Sony Standard.27 The reasoning adopted was broadly similar to that of the brief of the U.S. government. Even though a device might be capable of non-infringing uses, if the distributor intended users to employ the device in order to infringe copyright, the distributor would be liable as a matter of basic tort principles. There was nothing in the Sony judgement that required courts to ignore evidence of the intent and inducement to promote infringement if such evidence existed. As unauthorised P2P distribution of copyrighted works extended well beyond the US, copyright owners pursued legal actions against KazaA in other countries. In September 2005, the Federal Court of Australia held KazaA to be guilty of infringement on grounds similar to those of the U.S. Supreme Court in the Grokster case. With these judgements, the battle against KazaA was won and hundreds of P2P download systems, including well known systems like WinMX, BearShare and LimeWire, were shut down. However, the war was far from over. The Grokster judgment did not stop or even slow down P2P file sharing; shut down one P2P network a more decentralised, more efficient and more difficult to shut down networks took its place. More sophisticated systems such as BitTorrent entered the stage; BitTorrent allowed users to download different sections of one file from multiple sources at once to enable faster download and upload speeds. It was not only used for widespread copyright infringement but also for legitimate purposes such as distributing open source software.28 The hydra headed Sweden’s Pirate Bay file sharing, which acquired quite a bit of notoriety for its cavalier attitude towards copyright infringement as for its technology, was a BitTorrent-based P2P file sharing system. Pirate Bay was set up by a Swedish think tank Piratbyrån (Pirate Bureau) established to support the free sharing of information and culture; later, Piratbyrån set up a Pirates’ Party which set an example for copyright activists in a few other countries to establish similar pirate parties. If Pirate Bay was hydra-headed so was the litigation it was involved with; it was involved in litigation in many European countries as well as the U.S. Over time, the importance of P2P file sharing as a source of infringement came down not because infringement had been finally put down but because streaming become the prime way of experiencing a work, and stream ripping, that is to say, creating a downloadable file from content that is available to stream online, became the most important source of infringement. Thus, in 2019, world over twenty-eight percent of listeners resorted to copyright infringement to listen to music or obtain a

26

MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913. Ginsburg (2008, pp. 583–585, 2009, pp. 113–119), Scharf (2011, pp. 808–809). 28 For a crisp outline of BitTorrent see Bridy (2011, pp. 699–703). 27

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copy of the music file; of such infringers, eighty-five percent used stream ripping as the modality for infringement.29

4.3 Sledgehammer to Swat a Fly: Backlash Against Copyright There was hardly any teenager in the U.S. who was not using P2P technologies for accessing and sharing music; a 2003 Gallup survey of American teenagers (aged 13 to 17 years) found that eighty-three percent of them believed that it was morally acceptable to download ‘music from the Internet for free’.30 When copying and sharing on such a massive scale was facilitated by a new technology, it was natural for the beneficiaries of copying and sharing to feel that government should facilitate citizens to avail the new opportunities that the new technology offered rather than deny such opportunities through antiquated copyright laws. This point of view was supported by many academics who were sceptical about the strengthening of the rights of copyright owners in the digital medium. Several arguments were put forth to support that point of view: (i) the system to procure licenses was a Kafkaesque IP labyrinth and fledgling online music distributing companies find it so difficult to secure licenses for reproducing and distributing recorded music, (ii) direct author to consumer and consumer to consumer dissemination of works that is possible in the digital medium dispenses with intermediaries like distributors, and as this system did away with intermediaries the author would have a higher share of the copyright cake than he would with conventional distributional channels. In short, the proposed system presented creators of works a New Deal, and (iii) P2P file sharing was an elevating experience as “people who might previously have been passive consumers now assert a more active, self-defining role in the enjoyment… of cultural expression”, and “share their interests… and active enjoyment with others”.31 Many alternatives were suggested to compensate copyright owners when proprietary distribution channels were replaced by P2P file sharing. While all these alternatives legalised P2P file sharing, they differ in the modalities of compensating the copyright holders of the files shared. The modalities varied from relying on market mechanisms32 to the government compensating the rightsholders either from general tax revenues or through special levies on the sale of any consumer product or service whose value was substantially enhanced by P2P file sharing.33 Typical of the gap between much of scholarly writing and the real world of copyright policymaking (See Preface), neither the copyright bar nor the judges who heard the Napster and Grokster case at all levels from the trial court to the Supreme Court nor the Congress, not to speak of 29

IFPI, Music Listening 2019. Hanway and Lyons (2003). 31 Netanel (2003, p. 3). 32 Loren (2003). 33 Netanel (2003, p. 4). Also see Ku (2002, pp. 263, 313), Fisher III (2004, pp. 199–258). 30

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the entertainment industry, shared the sanguine view of many academics about the merits of P2P file sharing. In the face of the infringement which spread like bush fire the first reaction of the entertainment industry was to put down the infringement legally, and hence it resorted to litigation and lobbying the Congress to enact more stringent ‘second wave’ enforcement legislation34 to deter online infringement. From a historical perspective, a major consequence of the massive P2P file sharing was extraordinary emphasis that began to be laid on enforcement so much so that copyright law began to be transformed from a proprietary right system to a regulatory regime.35 Every legislation proposed in the U.S. Congress for about fifteen years after Napster burst on the copyright scene proposed to strengthen enforcement and curb infringement. At the international level also, the U.S. with the support of a few developed countries attempted to negotiate a new and higher benchmark for enforcement of IP; when that attempt went nowhere in WIPO and WTO the U.S. moved the negotiations away from WIPO to an ad hoc plurilateral forum, and ACTA emerged from those negotiations. However, these attempts floundered in the face of protests against ACTA triggered by online anti-copyright activism. With a view to discourage the practice of illegal file sharing, the record industry not only sued the intermediaries who facilitated infringement like Napster and KazaA but also individuals who technically infringed copyright but had no motive to gain commercially from the unauthorised copying. Never before in the three hundred odd year history of copyright was infringement action bought against non-commercial infringers and end users; thereby copyright was transformed from a right traded by and enforced against professionals and commercial entities to a right targeted at individual consumers.36 In 2003, RIAA began the practice of issuing subpoenas to intermediaries demanding the names of individuals who allegedly shared music on P2P networks. By 2008, the RIAA sued roughly 35,000 persons for online file sharing. In 2004, the film industry joined the fray, and began filing suits with gay abandon.37 Apart from filing suits, the record and film industries also adopted a settleor-litigate practice calling upon thousands of individuals to whom it sent notices to settle by paying damages. Many of the individuals who were proceeded against had no intention of gaining commercially from downloading or copying files and perhaps had no knowledge that private copying was no longer fair use in the digital environment. Faced with widespread online copyright infringement so wide that it became a social norm the entertainment industry was caught on the horns of a dilemma. If non-compliance was not addressed the law would be as good as a dead letter. If on the other hand, the law was sought to be enforced effective deterrence would require legal action against so many as to trigger a backlash against stringent enforcement; that was what exactly happened with the litigation strategy. Hard cases, it is said, make bad law, and the litigation strategy spawned countless hard cases. 34

Second wave legislation is legislation which aims at extending the protection for digital content beyond the protection provided by first wave legislation (early implementation laws). 35 Menell (2014, p. 221). 36 Gervais (2009, p. 849). 37 Yim (2014, p. 7).

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Among the most egregious cases which received wide publicity were the issue of notices to a twelve-year-old girl in New York, whose mother lived in low income housing run by the New York City Housing Authority, to an eighty-three-year-old woman who had died over a month earlier, to a few girl scouts guilty of having played pirated songs while camping on a sunny afternoon, and directions by courts to a single mother to pay $1.92 million for sharing twenty-five songs.38 Wide publicity given to such cases landed the content industries in a public relations disaster. Such cases generated a backlash not only against the apparently arbitrary process used by the entertainment industry to pick the persons to be hauled up in a court of law for copyright infringement but also against law itself which harshly penalised a seemingly trivial offence. All in all, copyright law ceased to be an abstruse subject, the haven of lawyers and academics who specialise in copyright; it turned into an ogre in the eyes of ordinary people, particularly among the young. The bad name that entertainment industries acquired, and the normative backlash against copyright law together with legal actions to curb research on devices and services which could be used to circumvent TPMs fuelled protests against the ‘second wave’ legislation.

4.4 New Actors Make Copyright Policy Environment More Complex At about the same time, it sued Napster RIAA also began to invoke the provisions of S.1201 of DMCA against researchers and programmers who were exploring circumvention methods, the causes célèbres being the threat by RIIA to prosecute Ed Felton and his research team at Princeton and the arrest of a Russian programmer Dimtri Sklyarov. In April 2001, the RIAA threatened legal action against Ed Felton, a Princeton professor, and his research team when they tried to publish a research paper describing weaknesses in the music industry’s proposed digital watermark technology; RIAA contended that the information in the research paper would facilitate circumvention and that being so, publishing of that research paper was actionable under the DMCA. After Felten and his team filed a lawsuit to clarify their right to research and publish, RIAA withdrew its threat; after several months Felton could publish a vetted version of the paper.39 Dmitri Sklyarov, a Russian PhD student researching cryptography and an employee of Russian software firm ElcomSoft faced more serious legal problems than Felton and his team. He had worked on a software programme known as the Advanced eBook Processor, which allowed owners of Adobe™ electronic books (e-books) to convert them from Adobe’s ebook format into Adobe Portable Document Format (pdf) files, thereby removing the various restrictions (against copying, printing, text-to-speech processing, etc.) that publishers impose on e-books. Writing this program was legal in Russia. ElcomSoft produced and distributed this software over the Internet. Fair use proponents 38 39

See for example Yim (2014, p. 4). Hinze (2006, p. 806), Lessig (2004, pp. 155–157).

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contended that conversion into pdf format (format shifting) enabled legitimate uses like (i) reading it on a computer other than the one on which the e-book was first downloaded, (ii) reading an e-book on an alternative operating system such as Linux™ (Adobe’s format works only on Macs and Windows PCs), (iii) continue to access a work in the future, if the particular technological device for which the e-book was purchased becomes obsolete, and (iv) have a computer read aloud an e-book using text-to-speech software, which is particularly important for visually-impaired individuals.40 From Adobe’s perspective, Sklyarov’ programme circumvented the TPMs installed in an e-book, and thereby helped remove the restrictions placed on a e-book enabling the buyer of a e-book to copy it in pdf format, and even sell copies to others without the publisher’s permission. On a complaint from Adobe FBI arrested Sklyarov when he travelled to the U.S. to attend the 2001 DEF CON hacker convention in Las Vegas to give a presentation about the software. He was charged with trafficking in a circumvention device for profit, a criminal offence under S.1204 DMCA. After spending several weeks in prison, he was released on the condition that he testified against ElcomSoft. These two cases constitute an important milestone in the development of Internet citizen activism. Activists were hitherto mostly copyright scholars; the wide publicity these cases drew a large number of scholars from fields such as communication, computer science and cryptology as well as public spirited citizens to Internet activism. The Felten case drew the EFF, with considerable legal and public relations resources, into the movement against curbs on access to and use of Internet; in addition, a Washington, D.C. based NGO Public Knowledge was born largely to counterbalance the lobbying by content industries. Hitherto, except EFF, there were no permanent NGOs dedicated to further Internet activism. The period 1999–2002 was also the period when public intellectuals like Lawrence Lessig began to be in the public eye and lead a movement against ratcheting of copyright and conversely for protection and expansion of public domain. All these developments together turned the dawn of the new millennium into a turning point in the history of American copyright law. Copyright, which was hitherto a topic of little interest to the general public, suddenly captured the public’s attention. Greater public interest, together with the advocacy capacity of organisations like the EFF and Public Knowledge and the enormous outreach of online advocacy changed the policy environment for copyright.41

4.5 Advent of Web 2.0 Promotes Interactivity and Activism With the advent of Web 2.0 Internet came to matter more than ever in social, economic and political life of most of the population in countries with high high-speed Internet

40

Thomas (2003, pp. 283–284). For changes in policy environment and their impact see Herman (2012); for a more detailed narration see Herman (2013).

41

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penetration, and in such countries, life became inconceivable without Internet, platforms like YouTube and social media. The advent of Web 2.0 facilitated the hosting of interactive websites which immensely facilitated the formation of social groups, their mobilisation, fast exchange of information, online advocacy and carpet bombing of legislators with thousands of representations opposing any policy they liked. Public interest groups opposed to the strengthening of enforcement provisions and committed to furthering digital and user rights received strong support from a host of new technology companies such as Google, Yahoo, Amazon and eBay, and Social Media Sites like Facebook, YouTube, Reddit, Tumblr and Twitter which had a strong business interest in keeping Internet open and free of close surveillance; the business model of many of these new technology companies depend upon the content posted by users. All these developments compounded the complexity of policymaking and unfortunately sharpened polarisation of political and policy arguments. Such polarisation arose because social media ensures that one interacts only with persons of similar views thereby generating an echo chamber effect whereby certain ideas and beliefs are reinforced through repetition in a closed system that does not allow for the free circulation of alternative or competing ideas or concepts. With the advent of Web 2.0 Internet came to matter more than ever in social, economic and political life of most of the population in countries with high highspeed Internet penetration, and in such countries, life became inconceivable without Internet, platforms like YouTube and social media. The advent of Web 2.0 facilitated the hosting of interactive websites which immensely facilitated the formation of social groups, their mobilisation, fast exchange of information, online advocacy and carpet bombing of legislators with thousands of representations opposing any policy they liked. Public interest groups opposed to the strengthening of enforcement provisions and committed to furthering digital and user rights received strong support from a host of new technology companies such as Google, Yahoo, Amazon and eBay, and Social Media Sites like Facebook, YouTube, Reddit, Tumblr and Twitter which had a strong business interest in keeping Internet open and free of close surveillance; the business model of many of these new technology companies depend upon the content posted by users. All these developments compounded the complexity of policymaking and unfortunately sharpened polarisation of political and policy arguments. Such polarisation arose because social media ensures that one interacts only with persons of similar views thereby generating an echo chamber effect whereby certain ideas and beliefs are reinforced through repetition in a closed system that does not allow for the free circulation of alternative or competing ideas or concepts.

4.6 Second Wave Legislation In the U.S., and many Member States of the EU legislative proposals were introduced to strengthen the enforcement provisions of copyright law. However, even as the demand for second wave legislation arose the policy environment for copyright legislation became more complex than before and enacting the second wave of

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legislation became very arduous. The success of efforts to strengthen enforcement provisions varied from political context to context. Broadly speaking, second wave legislation designed to strengthen enforcement and curb copyright infringement proposed measures such as: (i) providing legal protection to rightsowners to use technical means such as interdiction, redirection and spoofing42 to disable or impair the unauthorised distribution, display, performance or reproduction of their copyrighted works, (ii) penal measures against habitual online copyright infringers, (iii) proceeding against sites hosting copyright infringing material (‘rogue’ websites) by (a) subjecting them to primary liability instead of secondary liability, (b) taking them down or blocking their Internet domain names, (c) directing intermediaries to block the domain names or Internet protocol addresses of specified rogue websites, (d) directing search engines to suppress search results that direct Internet users to ‘rogue’ websites, (e) cutting off rogue websites from credit card companies and payment intermediaries such as PayPal without whom, a rogue website would not be a robust business enterprise, and (vi) cutting off rogue websites from advertising networks which place advertisements on websites on behalf of merchants wishing to advertise their goods and services. Many second wave legislative proposals were proposed in the U.S.; excepting the Prioritising Resources and Organisation for Intellectual Property Act of 2008, all other proposals foundered due to strong opposition of public interest groups opposed to the strengthening of enforcement provisions. The most celebrated example of such opposition is the Internet insurgency43 which torpedoed in 2012 the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (PIPA) in the Senate and the Stop Online Piracy Act (SOPA) in the House of Representatives. What followed the introduction of these Bills was an unprecedented opposition spearheaded by a formidable coalition of (i) epistemic communities of techies, lawyers and academics, (ii) new technology giants like Google, Yahoo, Amazon and eBay, (iii) Social Media Sites like Facebook, YouTube, Reddit, Tumblr and Twitter, (iv) industrial interest groups perennially arrayed against strengthening of copyright such as Consumer Electronic Association, and Computer and Communications industry association, (v) NGOs committed to digital user rights and protection of public domain such as Creative Commons, Ecology International Association, EFF, Fight for the Future, Free Software Foundation and Public Knowledge, (vi) NGOs committed to libertarian values and citizen participation in governance like the American Civil Liberties union and Public Citizen, (vii) open Internet crusaders like Aaron Swartz and Alexis Ohanian, and (viii) legal scholars like Lawrence Lessig, Laurence Tribe and Yochai Benkler. 42

Interdiction, more commonly known as a denial of service (DoS) attack, occurs when a large volume of file requests is directed at a single peer machine, causing it to slow and effectively arresting the downloading process. Redirection contaminates the index of files maintained on a P2P network such that requests for copyrighted materials would be processed for delivery of undesired, bogus files. With spoofing, nodes that contain corrupted content are attached to a P2P network, so that downloading process is enormously slowed down making it difficult to share files. 43 For a theoretically rigorous account of the anti-SOPA/PIPA protests see Sell (2013). For a crisp account of the protests see Herman (2012, pp. 211–221). For a more detailed narrative see Herman (2013, pp. 180–219).

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Though American interest groups and firms dominated it, the coalition was transnational drawing the participation of Green Party Members of the European Parliament, European Pirate Parties and NGOs engaged in the protection of digital rights and public domain like La Quadrature du Net (QdN). Despite widely divergent interests, the coalition partners embraced a common objective of derailing the Bills.44 The rallying cry for stopping censorship united a broad, diverse, deep pool of activists in a common cause. The anti-SOPA/PIPA coalition successfully harnessed the power of the Internet to transform potentially interested individuals into a huge phalanx arrayed against the legislations. On January 18, 2012, a week before the Senate was scheduled to vote on PIPA, the largest ‘online protest in history’ was organised with 115,000 sites participating in the protest, 50,000 sites including Wikipedia, Mozilla and Reddit blacking out all or part of the site, and a hundred million users blocked from the sites. The intensity of the carpet-bombing of Congressmen comes out from the fact that during the Internet blackout ten million petitions were submitted, eight million calls were attempted, four million emails sent. But for the logistical and technical support provided by the technology companies the Internet Blackout and swamping the Congressmen with protest messages would not have been the spectacular shows they were, and without the high-profile participation of citizens and public interest groups the protests would have been no more than arm twisting by the new giants of Silicon Valley. While the coalition succeeded in stopping SOPA and PIPA the public interest groups did not succeed in getting legislation to roll back some of the provisions of DMCA which were considered imbalanced by many members of the coalition. Online advocacy had profoundly changed the policy dynamics around copyright. NGOs and scholars were at the core of a significant, permanent, organised coalition arrayed against a strong coalition of content industries. Going forward, “it is much less likely that copyright will be expanded”, and yet the coalition for a strong copyright was “still almost certainly strong enough to block any rollback of copyright”.45

4.7 Graduated Response The statutory route having been blocked, copyright industries began to enlist the collaboration of intermediaries to reach and shutter ‘pirate sites’ beyond the reach of the U.S. law,46 and thereby curb online copyright infringement. Graduated response refers to a system of online copyright enforcement that is an alternative to exclusively seeking judicial remedies against individual infringers. The linchpin of that response is a cooperative relationship between rightsholders and service providers 44

Sell (2013, pp. 69, 71). Herman (2013, pp. 223–224). 46 Annemarie Bridy had very systematically documented and critiqued these efforts. See Bridy (2010, 2013, 2016a, 2016b). 45

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whereby rightsholders can notify the service providers of potential infringement by their subscribers whereupon service providers take increasingly severe punitive measures against the errant subscribers. The measures include suspension and termination of service, capping of bandwidth, and blocking of sites, portals and protocols.47 The most widely publicised form of graduated response is a ‘three strikes and you’re out’ model, in which Internet access is suspended or terminated by a user’s ISP following the user’s receipt of three successive notices of copyright infringement. Collaboration is fostered by the development of symbiotic business relationship between the recording and movie industries on the one hand and sharing platforms on the other. Thus, YouTube’s Content ID and Vimeo’s Copyright Match offer content screening and filtering tools that can be configured by copyright owners to block users from uploading copyrighted content. The technology underlying both systems rely on digital fingerprinting to sample an uploaded file and compare it against a database of reference files provided by participating copyright owners. Instead of blocking the uploading of a file a copyright owner can ‘monetise’ the uploading through licensing. Voluntary agreements came in for criticism that they are negotiated privately; consequently, they “lack the deliberative transparency associated with public law-making”, and “the protocols they prescribe often presume liability for the accused and entail rushed or summary adjudications by inexpert authorities”.48 Therefore, instead of relying on voluntary cooperative efforts to put in place a graduated response countries like France, New Zealand, Taiwan, South Korea and the UK enacted ‘three strikes and you’re out’ type laws.49

4.8 New Business Models: Digital Renaissance It took quite some time for content industries began to realise that curbing online infringement was akin to an arms race with hackers, or to mix metaphor, a cat and mouse game. Infringement is a chronic condition and do what you might infringement could never be done away with; it could only be reduced but never be fully contained. Or to use jargon, darknet, the collection of networks and technologies used to share ‘pirated’ digital content, would continue to exist, and provide low cost, acceptable quality service to a large group of consumers.50 Therefore, the first line of defence against ‘pirates’ may as well be sensible business models which offer a better listening and viewing experience than the infringed content users can obtain via darknet channels for the same or less cost (that is to say, cost measured in search costs, download times, monetary outlay). Napster was popular not only because one could secure music free but also because of several attractive features as compared to the CD format which had been the music industry’s mainstay from the late 1980s. 47

Lovejoy (2011), Yu (2010). Bridy (2016a, p. 208), Hugenholtz (2010). 49 For details see Giblin (2014), Moreno (2012). 50 Biddle et al., (2003, pp. 344, 363–365). 48

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The perception became widespread that the recording companies were indulging in restrictive trade practice as they forced a buyer to buy a CD comprising about seven songs even though the customer may like only a song or two. In contrast to such an unbundled high-priced product, Napster gave the music lover enormous freedom to choose from a wide range of content with extreme ease and build up a library of one’s favourite songs. Further, all the songs in the library would be in the MP3 format which provided a standard that was sharable across platforms (e.g., Mac and Windows) and gave access to a number of online (Real Jukebox, MusicMatch Jukebox, etc.) and physical (Diamond Rio MP3 player) playback devices. It is no wonder that with the advent of P2P file sharing CD sales began to decline sharply in the U.S. as well as West European countries. It was with great reluctance that in 2001 that big record labels launched three online music subscription services, “none of which is exactly the Amazon.com of online music” because of crippling restrictions on how music could be downloaded or ‘burnt’ onto a CD each month.51 The real breakthrough to a new mode of music distribution came with the launch of iTunes and iPod by Apple in 2001. Steve Jobs, the legendary tech wizard and co-founder of Apple, turned to music to operationalise his grand vision of the personal computer becoming a ‘digital hub’ that coordinated a variety of devices, from music players to video recorders to cameras, and help the user to manage his music, pictures, video, text, and all aspects of what Jobs dubbed his ‘digital lifestyle’. He knew that the only way to stop piracy “was to offer an alternative that was more attractive than the brain-dead services that music companies were concocting”; he perspicaciously recognised that those who unauthorisedly downloaded or shared files were not thieves but ‘fans- rabid fans’. He set out to create an ‘iTunes Store’ which would sell single digital songs (not albums only) at a throwaway price of just ninety-nine cents. His proposal to sell digital versions of their songs, and that too sell ‘singles’ encountered ferocious resistance from the recording companies. Persuading the recording companies was more arduous than the technological challenge of devising the slick and high-performing MP3 player iPod; as Jobs recalled, “I never spent so much of my time trying to convince people to do the right thing for themselves”.52 He not only persuaded recording companies but courted and won over musicians like Bono of U2 and Beatles. When the iTunes store opened in 2003, the music industry’s revenue from digital sales was negligible, but by 2010, it had grown to $4.6 billion around the world, representing 29 percent of all revenue from recorded music.53 iTunes and iPod were phenomenally successful and true to the saying that imitation is the best form of flattery, Microsoft came up with Zune store and players, and Sony with Connect stores. By mid-2010s, streaming media services wherein the client could savour content on demand without owning it surpassed iTunes buy-to-own model, and eventually in 2019 Apple eliminated iTunes from the new version of Mac software it released. Not even Steve Jobs can escape

51

Warner (2002). Issacson (2011, pp. 498, 519). 53 Sisario (2011). 52

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creative destruction, the capitalist engine which incessantly destroys old products and incessantly creates new products to replace the old.54 Over years, a plethora of new online business models had sprung up; the distinctiveness of each model depends upon its unique combination of key elements such as: type of transport technology (downloading or streaming), type of IP network used (open network or proprietary), whether DRM is used, and if so, the type of DRM used, type of pricing structure (whether free with revenue raised from advertisements tagged to the content model or user charges or ‘freemium’ with free basic services and fees for premium services), level of interactivity and level of user involvement in the production and distribution of content.55 A very major development was the vertical integration of provision of online/social media service and content provision; thus, Apple, Amazon, Facebook and Google emerged as major online providers of books, music and videos. Because of the spread of high-speed Internet and emergence of new online business models the way users savour works now, particularly in developed countries, is vastly different from that when the Internet Treaties was adopted and DMCA and the EUCD were enacted. To elaborate a little bit of the contrasting pattern of savouring works now with that in 1998: At the time of the enactment of DMCA, DVDs were not yet the ‘predominant medium’ for the distribution of motion pictures in the home video market, and the first iPod would not be invented for three more years. Today, DVDs, Blu-ray, and 4K Ultra HD Blu-ray discs compete with streaming services such as Hulu, Netflix, Amazon Instant Video, and Google Play, while millions of consumers have ‘cut the cord’ with traditional cable services in favour of overthe-top subscription services. In the music industry, the majority of revenues now come from streaming services like Spotify, Pandora and Apple Music, displacing download revenues, which in turn previously displaced compact disc revenues. Likewise, cloud computing has become standard, and software as a service is now a leading licensing and delivery model for businesses and individuals.56

All in all, there had been a spectacular increase in the choice available for consumers to savour content. It is pertinent to mention that Pamela Samuelson, among the most prominent critics of the Lehman Report and the DMCA, had stated in her testimony before the Intellectual Property Subcommittee of the Senate Judicial Committee that “there is an immensely greater availability of online content today via legitimate online streaming and download services, as compared with 1998. These services have drawn large audiences of subscribers in the US and abroad, and copyright industries are generally thriving as never before… The upshot is that hundreds of millions of users now have lawful access to an almost unimaginably rich array of digital music through these licensed services”.57 All in all, we are in the midst of a ‘digital renaissance’58 even though infringement continues to be quite noticeable. 54

Schumpeter (1976, pp. 83–85). For a succinct account and classification of online business models see Guibault et al. (2007), Sect. 1.4 at pp. 7–16. 56 U.S. Copyright Office (2017, p. ii). 57 Senate Subcommittee Hearing (2020), Pamela Samuelson Statement, p. 6. 58 Waldfogel (2018). 55

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The Sky is Rising is an apt title for an annual report on the state of entertainment industry which brings out that “we are living in a true era of content abundance, largely made possible by the Internet”, and that in the aggregate the entertainment industry has been experiencing “an unprecedented, growth in both earnings and creative output”.59 There is no dispute that new technologies and new business models provide instant and affordable access to an online cornucopia that has reshaped how we find and engage with music, video and books. The fact that entertainment industry is in the midst of a digital renaissance in spite of the fact that online copyright infringement had not been eradicated and quite a few digital models do not use TPMs or DRMs had been used by critics to argue that the anti-circumvention provisions (e.g., S.1201of DMCA) could be done away with. However, this point of view, was rebutted by those who believe that anticircumvention measures were imperative in the digital environment. Writing in 2007, Jane Ginsburg observed that “to date, ‘digital lock-up’ persists in spectral guise, a grim, yet untranspired, anticipation”.60 While courts “must remain vigilant that this ghost does not take concrete form, they should also bear in mind the many new business models that protected digital protection measures (DRMs) enable, lest insecurity dampen the prospects for these models’ development”. She went on to outline how many new business models which enhance the consumers’ experiencing of audio- and audio-visual works depend on TPMs and DRMs. Thus Netflix, the most successful company offering videos through streaming, is a subscription service with a digital lock which prevents unauthorised access; the content it streams is encrypted in order to prevent the subscriber from downloading and communicating content to others. Accessing a work, be it text, audio or video, or a mix of them, had come to be more common in many developed countries than owning a copy of the work by downloading or buying a physical copy of a work; with this development access right has come to be very important. Reminiscent of the saying of Dostoevsky that ‘Man is fond of counting his troubles, but he does not count his joys’, Jane Ginsburg concluded that “In our solicitude for preserving user privileges in technologicallyprotected copyrighted works, we should also keep in sight the promise these [anticircumvention measures may hold for authors and artists, and in the long run, for their public as well”.61 Ginsburg, is not alone in holding such views. Joseph Hue, for example, noted that DVDs would not have survived commercially but for the DVD copyright and software being kept away from the market by DMCA’s anticircumvention provisions.62 In his testimony before the Intellectual Property Subcommittee of the Senate Judicial Committee Justin Hughes elaborated with concrete examples how S.1201 of DMCA undergirds much of the Internet economy as well as Internetbased non-commercial uses such as e-book lending, and supply of works in formats 59

Masnick and Beadon (2019, pp. 2, 4). Ginsburg (2007, pp. 24–25). Reinbothe and Silke von Lewinski hold a similar view. Reinbothe and Von Lewinski (2015), paragraph 7.11.45 at pp. 175–176. 61 Ginsburg (2007, pp. 24–26). 62 Liu (2016, p. 824). 60

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specially designed for the visually challenged. Subscription based streaming services are inconceivable without TPMs to restrict access to those who are subscribers, and TPMs to prevent downloading of the content streamed and communication of the content so downloaded.63 All in all, because of the online business models introduced by the content industries there are proportionately more legitimate users than those who are not. The continuing vitality of the copyright system, it was rightly said, is not due to “aggressive and uncritical enforcement against Internet users or the wielding of statutory damages to derive windfalls from file-sharers or technology companies” but due to promotion of “fairly priced, flexible, on-demand, user-friendly services and encouraging platform and device entrepreneurs to develop symbiotic technological advances, such as iTunes, YouTube (with Content ID), Facebook, Spotify, Dropbox, Netflix, Twitter, Hulu and Pinterest”.64 Suffice to say, highly controversial anticircumvention provisions now provide the bedrock of the new business models, and Pamela Samuelson, who had been in the forefront of opposition to S.1201, had conceded that consumers had “adjusted to TPMs more than might have seemed likely in 1994”.65

4.9 Study of S.1201 by U.S. Copyright Office (2017) Before moving on, it is pertinent to point out that a 2017 study of S.1201 by the Register of copyright concluded that the “overall structure and scope” of S.1201, “including its treatment of circumvention as a standalone violation independent of copyright infringement”, remained sound, that “the anti-trafficking provisions provide critical enforcement tools against digital piracy” and there was no need to alter the basic framework of S.1201. However, in cases where beneficiaries cannot themselves make use of an exemption, the report suggested allowing “users to seek assistance in making use of that exemption”. The report suggested a few modifications in order to make permanent exceptions more flexible “to keep pace with evolving technologies”. In regard to triennial rulemaking, the report suggested streamlining of the process for renewing exemptions to which there is no meaningful opposition.66

63

Senate Subcommittee Hearing (2020), Hughes Statement, pp. 14–15. Menell (2014, p. 266). 65 Samuelson and Hashimoto (2019, pp. 113–114, 116–119). 66 U.S. Copyright Office (2020, pp. iii–vii). 64

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Bibliography A. Articles and Books Barlow, J. P. (2000, January 10). The next economy of idea. Wired. Biddle, P., England, P., Peinado, M., & Willman, B., et al. (2003). The Darknet and the future of content distribution. In E. Becker (Ed.), Digital rights management technological, economic, legal and political aspects (pp. 344–366). Springer Verlag. Bridy, A. (2010). Graduated response and the turn to private ordering in online copyright enforcement. Oregon Law Review, 89, 81–132. Bridy, A. (2011). Is online copyright enforcement scalable? Vanderbilt Journal of Entertainment and Law Journal, 13(4), 695–736. Bridy, A. (2013). Graduated response American style: Six strikes measured against five norms. Fordham Intellectual Property Media and Entertainment Law Journal, 23(1), 1–67. Bridy, A. (2016a). Copyright’s digital deputies: DMCA-plus enforcement by internet intermediaries. In J.A. Rothchild (Ed.), Research handbook on electronic commerce law (pp. 185–208). Edward Elgar. Bridy, A. (2016b). Internet payment blockades. Florida Law Review, 67(5), 1523–1568. Farber, D. A. (2005). Conflicting visions and contested baselines: Intellectual property and free speech in the ‘digital millennium.’ Minnesota Law Review, 89, 1318–1360. Fischer, R. (2011, December 15). A Ninja in our sites. American Prospect. Fisher, I. I. I., & William, W. (2004). Promises to keep: Technology, law and the future of entertainment. Stanford University Press. Gervais, D. J. (2009). The tangled web of UGC: Making copyright sense of user-generated content. Vanderbilt Journal of Entertainment and Technology Law, 11(4), 841–870. Giblin, R. (2014). Evaluating graduated response. Columbia Journal of Law and the Arts, 37(2), 147–210. Ginsburg, J. C. (2007). The pros and cons of strengthening intellectual property protection: Technological protection measures and Section 1201 of the US Copyright Act. Columbia Public Law Research Paper No. 07-137. Ginsburg, J. C. (2008). Separating the Sony sheep from the Grokster goats: Reckoning the future business plans of copyright-dependent technology entrepreneurs. Arizona Law Review, 50, 577– 609. Ginsburg, J. C. (2009). Copyright control v compensation: The prospects for exclusive rights after Grokster and Kazaa. In A. Strowell (Ed.), Peer-to-peer file sharing and secondary liability in copyright law (pp. 110–123). Edward Elgar. Guibault, L., et al. (2007). Study on the implementation and effect in member states’ laws of directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society. University of Amsterdam. Hanway, S., & Lyons, L. (2003, September 30). Teens OK with letting music downloads play. Gallup News. Herman, B. D. (2012). A political history of DRM and related copyright debates, 1987–2012. Yale Journal of Law & Technology, 14(1), 162–225. Herman, B. D. (2013). The fight over digital copyright: The politics of copyright and technology. Cambridge University Press. Hinze, G. (2006). Brave new world, ten years later: Reviewing the impact of policy choices in the implementation of the WIPO internet treaties’ technological protection measure provisions. Case Western Reserve Law Review, 57(4), 779–821. Hugenholtz, B. P. (2010). Codes of conduct and copyright enforcement in cyberspace. In I. Stamatoudi (Ed.), Copyright enforcement and the internet (pp. 303–320). Kluwer Law International.

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Hunter, D., & Gregory Lastowka, F. (2004). Amateur-to-Amateur. William and Mary Law Review, 46, 951–1030. International Federation of the Phonographic Industry (IFPI). (2019). Music Listening, 2019. Issacson, W. (2011). Steve jobs. Simon and Schuster. Ku, R. S. R. (2002). The creative destruction of copyright: Napster and the new economics of digital technology. University of Chicago Law Review, 69(1), 263–324. Lessig, L. (2004). Free culture: How big media uses technology and law to lock down culture and control creativity. Penguin Press. Liu, J. (2016). Comment on Gwen Hinze. Case Western Reserve Law Review, 57(4), 823–828. Loren, L. P. (2003). Untangling the web of music copyrights. Case Western Reserve Law Review, 53, 673–721. Lovejoy, N. (2011). Note, procedural concerns with the HADOPI graduated response model. Harvard Journal of Law and Technology. Masnick, M., & Beadon, L. (2019). The sky is rising: A detailed look at the state of entertainment industry, 2019. Computers and Communication Industry Association. Menell, P. S. (2002–2003). Envisioning copyright law’s digital future. New York Law Scholl Law Review, 46, 63–199. Menell, P. S. (2014). This American copyright life: Reflections on re-equilibrating copyright for the internet age. Journal of the Copyright Society of the U.S.A., 61, 201–337. Menn, J. (2003). All the rave: The rise and fall of Shawn Fanning’s Napster. Crown Business. Moreno, R. F. (2012). The three strikes and you are out challenge. European Journal of Law and Technology, 3(1), 1–12. National Research Council. (2000). The digital dilemma: Intellectual property in the information age. The National Academies Press. Netanel, N. W. (2003). Impose a noncommercial use levy to allow free peer-to-peer file sharing. Harvard Journal of Law and Technology, 17, 1–84. Parloff, R. (2003, October 27). The real war over piracy from Betamax to Kazaa: A legal battle is raging over the ‘magna carta of the technology age’. Fortune. Reinbothe, J., & von Lewinski, S. (2015). The WIPO treaties on copyright: A commentary on the WCT, the WPPT, and the BTAP (2nd ed.). Oxford University Press. Renda, A. (2011). Law and economics in the RIA world. Intersentia. Rimmer, M. (2001). Napster: Infinite digital jukebox or pirate bazaar? Media International Australia Incorporating Culture and Policy, 98, 1–38. Samuelson, P., & Hashimoto, K. (2019). The enigma of digital property: A tribute to John Perry Barlow. In The past and future of internet: A symposium for John Perry Barlow (Boyle, J., Ed.). Duke Law and Technology Review, Special Symposium Issue, 18, 103–126. Scharf, N. (2011). Napster’s long shadow: Copyright and peer-to-peer technology. Journal of Intellectual Property Law and Practice, 6(11), 806–812. Schumpeter, J. A. (1976). Capitalism, Socialism and Democracy (5th ed.). George Allen and Unwin. Sell, S. K. (2013). Revenge of the ‘Nerds’: Collective action against intellectual property maximalism in the global information age. International Studies Review, 15, 67–85. Sisario, B. (2011, October 5). He pushed a reluctant industry toward digital music. New York Times. Thomas, Z. (2003). Digital technologies and emerging copyright scenario. Journal of Intellectual Property Rights, 8, 276–301. Waldfogel, J. (2018). Digital renaissance: What data and economics tell us about the future of popular culture. Princeton University Press. Warner, M. (2002, August 12). The new napsters. Fortune. Yim, T. L. (2014). Normative avoision: Revising the copyright alert system to circumvent normative backlash. Hastings Science and Technology Law Journal, 6(1), 1–30. Yu, P. K. (2010). The graduated response. Florida Law Review, 62, 1374–1430.

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B. Official Documents I. Cases: United States (a) A&M Records, Inc. v. Napster, 239 F.3d 1004 (9th Cir. 2001). (b) Metro-Goldwyn-Mayer Studios v. Grokster Ltd., Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd., 259 F.Supp.2d 1029 (CD Cal, 2003). Supreme Court List of the Amici Curiae briefs and web links of the briefs. (2022). U.S. Copyright Office, Supreme Court Rules in MGM v. Grokster. Available at https://www.copyright.gov/docs/mgm/. Last accessed on 26 Jan 2022. Judgement: MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913. (c) Napster v. A & M Records and Others Consortium of 18 Copyright Law Professors. (2000). Amended Brief Amici Curiae of Copyright Law Professors in Support of Reversal, United States Court of Appeal, Ninth Circuit, Napster v. A & M Records and Others. Available at http://www-personal.umich.edu/~jdlitman/briefs/Ami cus.pdf. Last accessed on 26 Feb 2022. Appellate Court Judgment. (2001). A&M Records, Inc. v. Napster, 239 F.3d 1004 (9th Cir. 2001). (d) Sony v. Universal City Studios, Inc., 464 U.S.417 (1984). II. Government Documents United States Senate Subcommittee Hearing. (2020, March 10) Statement of Justin Hughes. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on Copyright Law in Foreign Jurisdictions: How Are Other Countries Handling Digital Piracy. Senate Subcommittee Hearing. (2020, March 10). Statement of Pamela Samuelson, The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on Copyright Law in Foreign Jurisdictions: How Are Other Countries Handling Digital Piracy. United States Copyright Office. (2017, June). Section 1201 of Title 17. A Report of the Register of Copyright. United States Copyright Office. (2020, May). Section 512 of Title 17. A Report of the Register of Copyright.

Chapter 5

The Making of EUCD and Its Transposition into National Laws of Member States

Abstract This Chapter describes the politics and process associated with the making of European Community’s Directive (EUCD, Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society, 2001) and its transposition into a few national laws. EUCD had two objectives: (i) harmonising the limitations and exceptions in the copyright laws of Member States and (ii) providing a legal framework to transpose the Internet Treaties into national laws of Member States. EUCD had been described to be the most lobbied EC Directive ever, and its policy contest was described as ‘Mother of all battles’. The contest revolved round mainly the anticircumvention measures and harmonisation of limitations and exceptions. The Chapter also outlines how the need to reconcile divergent interests and viewpoints resulted in the provisions relating to limitations and exceptions, and anticircumvention being complex and liable to multiple interpretation. Consequently, transposition of EUCD by Member States was a slow process and resulted in a variety of regimes; the objective of reducing fragmentation in the copyright regimes of the Member States was therefore not fully achieved. By mid-2000s, the policy environment for copyright began to resemble that in the U.S., with the result that transposition was a contentious process in Member States which began the transposition process rather late.

5.1 Objective of Harmonisation The status of the EC is unique, being the only intergovernmental body entitled to be a Contracting Party of the WCT and the WPPT; likewise, EUCD, the legislation made by the EC to fulfil the obligations imposed by the WCT and the WPPT, is one of its kind. Unlike national copyright legislations, its provisions bind only Member States of EC and not any other person, natural or legal. Further, its objective is two-fold: (i) providing a legal framework for its Member States to align their laws with the WCT and the WPPT and (ii) carrying forward the harmonisation of the copyright and related rights laws of its Member States with a view to remove the divergences in national laws; such divergences in national laws impede free trade of © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_5

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goods and services, without which a Single Market has no meaning. Till the issue of EUCD in 2001, EC issued six directives covering copyright duration, computer programmes, rental and public lending rights, copyright and related issues relating to satellite broadcasting and cable transmission, term of protection and databases. It is important to bear in mind that Member States have enormous flexibility in transposing the provisions of a directive into their national laws, an example being the 1991 directive on computer programmes. Some Member States transposed word by word the provision relating to the technological measures in the directive. On the other extreme was France which took the view that the existing regulatory framework was adequate. Figuratively, the picture that the diversity of implementation by Member States presented was that of a rainbow.1 Given that the primary objective of EUCD was creation of a Single Market and building up European global competitiveness in digital technologies and digitalized content the first fourteen of the sixty-two recitals of EUCD relate to harmonisation for the sake of creating the Single European Market. It is only the fifteenth recital that first makes a reference the Internet Treaties. Similarly, two important evaluations of EUCD organised by the EC2 and much of the scholarly comment focus their attention on the harmonisation of national laws relating to copyright and related rights. EUCD was judged to have failed to effect harmonisation so much so that “the objective of reducing fragmentation in the copyright regimes of the Member States was not fully achieved”, “the EU today [2015] is still characterised by 28 different copyright systems”,3 and harmonisation is a myth.4

5.2 Politics of Enacting EUCD Rather unusually, even in the EC, the adoption of EUCD, which provided a framework for the implementation of WCT and WPPT by its Member States, was preceded by “unprecedented lobbying, bloodshed, vilification, media propaganda, the constant hounding of EC and government officials”.5 The contest revolved round mainly the anticircumvention measures and harmonisation of amendments. In the policy battle, rightsholders were arrayed against “a variegated group comprising intermediaries, tech companies, consumers and libraries and anticopyright organisations, opposed the adoption of various provision or pushed for broader and additional exception”.6

1

Dusollier (2003, p. 465). Guibault et al., (2007, p. 166). This evaluation was done in 2006 before all the Member States amended their copyright laws. The second evaluation was Review of the EU Copyright Framework (2015). 3 Review of the EU Copyright Framework (2015P, p. I-180). 4 Angelopoulos (2012). 5 Hugenholtz (2000, p. 501). 6 Shapiro (2011, pp. 27, 30). 2

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EU Commissioner Frits Bolkestein rued the acrimony and lobbying associated with the drafting of the EUCD. To quote him: The [European] Parliament has been subjected to unprecedented lobbying onslaught on this directive, and I regret that some of the parties concerned strived to obtain nothing less than total victory, using sometimes highly emotive arguments, rather than seeking a balanced compromise between the various legitimate interests involved. That is not the European way—to move forward, we all have to be prepared to accept compromise and I congratulate the Parliament for having done so.7

In contrast to the vertical harmonisation of copyright and related rights advanced by the directives issued prior to it, EUCD attempted sweeping horizontal harmonisation of Member States’ copyright and related rights laws. Neither the six directives issued before it nor any of directives (relating to copyright and related rights) issued after it, with the exception of the Digital Single Market Directive (2019), have such a broad scope as EUCD. It covered about two-thirds of the Member States’ copyright laws and re-defined and sought to harmonise “the most relevant categories of rights granted to copyright holders and took steps to make copyright exceptions as uniform as possible, in both digital and analogue environments”.8 The EUCD sought to harmonise the right of reproduction (Article 2), right of communication and making available (Article 3), the distribution right and its exhaustion (Article 4), exceptions and limitations (Article 5) and anticircumvention and rights management provisions (Articles 6 & 7). Thus, the scope of change sought to be brought out by EUCD is much broader than that of DMCA which did not touch either the right of reproduction or limitations and exceptions except in regard to those necessitated by S.1201. Article 2 of the EUCD defines the right of reproduction in the same way as Article 7 of the Draft WCT and Articles 7 and 14 of the Draft WPPT in that the right of reproduction is “an exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part”. Draft Article 2 conferred the right of reproduction on (i) authors in respect of the original and copies of their works, (ii) performers in respect of fixations of their performances, (iii) on phonogram producers in respect of their phonograms, (iv) producers of the first fixations of films in respect of the original and copies of their films and (v) broadcasting organisations in respect of fixations of their broadcasts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite. Draft Article 5(1) exempted from the right of reproduction “temporary acts of reproduction …which are an integral part of a technological process for the sole purpose of enabling use to be made of a work or other subject matter and having no independent economic significance”.9 As at the DipCon and during the enactment of DMCA in the U.S., online intermediaries, libraries and educational institutions feared that the definition of the reproduction right was sweeping, would encompass in principle all transient copies generated in the course of normal computing and digital transmission operations and would 7

Commissioner Bolkestein (2001). Review of the EU Copyright Framework (2015), paragraph 1.1 at p. I-56. 9 EC Proposal (1997 pp. 24–25, 28–29, 44–45). 8

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impose undue liabilities on them. It was argued that in effect, the proposed right of reproduction would create a novel end use right, conferring an exclusive right on a rightsholder to regulate end use his content. It was also argued that the proposed right of reproduction also overlapped with other rights such as the right of public communication and would make clearance of rights by users more cumbersome. Eventually, Article 2 was left unamended except for minor touching up of language in respect of an author’s reproduction right. Article 5(1) was amended so as to make it explicit that temporary reproductions which are transient or incidental and are an integral, and essential part of a technological process and whose sole purpose is to enable (i) transmission in a network between third parties by an intermediary or (ii) lawful use having no economic significance stood exempted from the reproduction right. Article 5(1) and the corresponding recital 33 underwent many changes during the legislative process.10

5.3 Harmonisation of Limitations and Exceptions The EUCD paid special attention to harmonisation of exceptions as the EC was of the opinion that without adequate harmonisation of exceptions to the right of reproduction and right of public communication, as well as of the conditions of their application, Member States might interpret the obligations imposed by Article 10 of the WCT and Article 16 of the WPPT (limitations and exceptions) differently, and that such divergent interpretation might create obstacles to trade within the EC, particularly of on-demand services containing protected material,11 the viability of new digital products and services such as social networks.12 The harmonisation of exceptions was a highly controversial issue, not surprising that in successive revisions of the Berne Convention attempts to introduce new rights encountered objections from many parties to the Convention as they were reluctant to abandon exemptions which their national legislations already imposed on the right under consideration. Choosing and delimiting the scope of the limitations and exceptions which would be acceptable to all Member States proved to be a Mission Impossible. The difficulty of building a consensus on the issue of harmonising limitations largely explains why it took about three half years for the EUCD to be adopted and thereafter, why it took over five years before all Member States enacted legislation for implementing the EUCD. During the making of Article 5, opinions were divided as to how Article 5 was to be constructed. Many suggested adherence to the European practice of drawing up an exhaustive list of binding limitations and exceptions which was to be transposed in the legislations of the Member States so that there is no variation within the EC. The European Commission Legal Advisory Board differed from that view and expressed its scepticism on the possibility of enacting an exhaustive list 10

Guibault et al. (2007), paragraphs 2.2.1 at pp. 22–25 and 2.2.3 pp. 30–38. EC Proposal (1997, p. 35). 12 Review of the EU Copyright Framework (2015, p. iv pp. 16, I-46, I-181. I-189). 11

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of copyright exceptions. France, Italy and Spain strongly batted for an exhaustive, binding list of exceptions as such a list would strengthen the Single Market while Scandinavian countries and the Netherlands opposed this approach and advocated a more flexible system modelled after the U.S. fair use system; in their view, such an approach would allow the legislation to more easily keep pace with technological advancements. Eventually, consensus built around an exhaustive list from which the Member States could choose the exceptions they wished to provide in their national legislation; however, they could not provide exceptions not in that list. The exhaustive list Article 5 included all the exemptions that the Member States wished to include, and the Member States were allowed to ‘cherry-pick’ the exemptions they wanted; however, “cherry-picking never leads to harmonisation”.13 Between the 1997 when the proposal for a directive was introduced and 2001 when EUCD was adopted, the number of admissible limitations went up from seven to twenty.14 And further, except for one mandatory exemption in respect of temporary reproduction (Article 5(1)), all other exemptions listed in Article 5 are optional. The mandator exception Article 5(1) has two parts; the first part allows online intermediaries to engage in temporary acts of reproduction which are an essential and integral part of the technological process intrinsic to transmission in digital networks, and the second allows end users to engage in temporary acts such as browsing and caching that have ‘no independent economic significance’. Articles 12–5 of the EC E-Commerce Directive (2000) detail the conditions of eligibility for safe harbour status to online intermediaries; the conditions are broadly similar to those set out in S.512 of DMCA. Article 5(2) lists five optional limitations to the right of reproduction, Article 5(3) sets out fifteen limitations to the right of reproduction and right of public communication, Article 5(4) allows Member States to provide for a limitation to the right of distribution similar to the limitation they provide to the right of reproduction and Article 5(5) subjects all exceptions to the Three-Step test. All in all, the wide latitude given to the Member States left “Europe with a patchwork of incompatible limitations and exceptions, causing legal uncertainty to the detriment of commercial providers of cross-border services such as online music stores, and of cultural institutions such as libraries, archives and public broadcasters offering content across European borders”.15 It would appear that the CJEU adopted a pro-harmonisation approach and “for an increasingly relevant number of exceptions” restricted “the room for manoeuvre that, under the text of the directive, the Member States could take advantage of”. At the same time, in several judgments, the Court had the opportunity “to clarify that Article 5(5) of the directive (i.e. the Three-Step test) should not be interpreted broadly as a provision justifying an extension of the scope of the different exceptions and limitations”.16

13

Guibault (2010). Guibault (2012, p. 67). 15 Hugenholtz and Okediji (2008, p. 27). 16 Review of the EU Copyright Framework (2015, pp. I-79–80). 14

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5.4 Anticircumvention Provision and Exceptions to that Provision (Article 6) As with Article 5, the making of Article 6 dealing with TPMs was embroiled in controversy and the cost of building a consensus high, so much so that Article 6 “was nearly the breaking point of the whole directive”.17 The adoption of Article 6 went through several controversial rounds of negotiations between the European Commission (the executive organ responsible for proposing directives), the Council (comprising the Ministers of the Member States) and the European Parliament (which shares with the Council the power to approve directives).The difficulty of arriving at a consensus was due to two reasons. First, the innate complexity of finding agreement on several issues such as what should be prohibited and what should be the interface between TPMs and exceptions, and secondly, the WCT and the WPPT passing on the buck of detailing the obligations on TPMs to the Contracting Parties. Article 6 went through many changes before the European legislators finally agreed on a consensual text.18 Draft Article 6 proposed only covering “preparatory activities such as the manufacture and distribution, as well as services, that facilitate or enable the circumvention of these devices” as it felt that “the real danger for IP will not be the single act of circumvention by individuals, but the preparatory acts carried out by commercial companies that could produce, sell, rent or advertise circumventing devices”.19 Draft Article 6 proposed prohibition of only preparatory acts and not the act of circumvention. However, the European Parliament considered that Draft Article 6 was “too vague and prone to interpretation” and insisted that a separate provision for acts of circumvention and another for the facilitation of acts of circumvention should be incorporated into the directive. The current text is therefore the result of a political compromise between the European Commission, the Council and the European Parliament. Article 6(1) deals with acts of circumvention, 6(2) with preparatory activities and 6(3) with a definition of ‘technological measures’ and definitions of technological measures and effectiveness of technological measures. Article 6(4) dealing with the exceptions was added at a late stage of the legislative process.20 Critics contend that the final text ended up being very convoluted, complex and imprecise.21 If the DipCon passed on the buck of detailing to Contracting Parties, the EC in turn passed on the buck to its Member States.22 The complexity of finding a compromise that would pass muster with legislators and strike balance between all stakeholders explains why only Denmark and Greece could meet the deadline of December 22, 2002 imposed by the EC for transposing the EUCD into national laws, further why, in July 2003, the EC had to file cases against nine Member States for 17

Dusollier (2003, p. 462). Guibault et al., (2007, p. 73–77) offers details of the process of enacting Article 6 of the Directive which deals with circumvention of TPMs. 19 EC Proposal (1997, p. 33). 20 Guibault et al., (2007, pp. 76–77). 21 Guibault et al., (2007, pp. 73–74). 22 Dusollier (2003, p. 462). 18

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failure to transpose the EUCD into national laws, and why the process of transposition dragged on till 1 August 2006 when France implemented the directive, paving the way open for the EC and its Member States to ratify the WCT and the WPPT. Till then, ‘the genie was stuck in the bottle’.23 Like S.1201 DMCA, the final text of Article 6 of EUCD prohibits both the act of circumvention as well as the acts preparatory to actual circumvention; however, the finer details vary. Article 6(1) prohibits the act of circumvention of effective technological measures; it differs from the corresponding provision in DMCA in two respects. First, it requires that persons engaged in circumvention do it with knowledge or reasonable grounds to know that they are pursuing circumvention of a protection measure. Secondly, most commentators hold that Art 6(1) read with Article 6(3) prohibits not only the circumvention of access controls but use controls also. However, not all agree; “the ambiguity of the provision as to the protection of particular types of technological measures has led to a variety of regimes at Member State level in the process of transposing the directive”.24 Some Member States, like Austria, Germany and Denmark, protect only copy controls and not access controls. Some other Member States seem to cover both access and copy controls. “The lack of harmonisation in this respect”, noted the 2006 Evaluation, “certainly does not contribute to the establishment of a coherent legal framework for the protection of TPMs within the European Union and gives rise to legal uncertainty”.25 Article 6(4) dealing with the exemptions from the act of circumvention was one of the most controversial provisions which eluded a consensus for a long time. One of the major controversies enveloping Article 6 was the fear that TPMs can be used by rightsholders to block genuinely lawful acts such as copying permitted by exception or copying of works where the term of copyright has expired. Article 6(4) seeks to address this concern. The Council and the European Parliament were more concerned about protection of rights than the European Commission. Thus, an amendment was introduced in the Parliament whereby the legal protection of TPMs prevailed over the exceptions listed in Article 5. The Council was worried that the revised Draft Article 6 proposed by the Commission provided for protection of only TPMs preventing or inhibiting the infringement of copyright as a result of which “the exceptions provided for in Article 5 prevailed over the legal protection of technological measures provided for in Article 6”.26 By virtue of the stand taken by the Council and the European Parliament, Article 6(4) as finally acted covered only eight exceptions even though the second and third paragraphs of Article 5 listed twenty exceptions. As Article 5 provides flexibility to the Member States to choose the exceptions they wish to provide for in their national legislation (except that provided to carriers by Article 5(1)), it is possible that less than eight exceptions may be covered by a national 23

Gasser and Girsberger (2004, pp. 7–8). For a comparative tabulation of the transposition of limitations and exceptions in select Member Stares (France, Germany, Ireland, Italy, Poland and the United Kingdom) Review of the EU Copyright Framework (2015, pp. I-203–222). 24 Gasser (2006, p. 59). 25 Guibault et al., (2007, p. 75). 26 Guibault et al., (2007, pp. 103–104).

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legislation. Further, Article 6(4) does not apply to ‘on-demand services’, that is to say, content ‘made available to the public on agreed contractual terms in such a way that members of the public may access them from a place and at a time individually chosen by them’. Of the eight exceptions, one exception relates to private copying; the other seven are public policy exceptions with a regime different from that for private copying. The public policy exceptions cover (i) photocopying provided right holders receive fair compensation, (ii) copy and archival needs of publicly accessible libraries, educational establishments or museums and archives, (iii) broadcaster’s own ephemeral recordings, (iv) non-commercial broadcasts by social institutions such as hospitals and jails provided right holders receive fair compensation, (v) use for the sole purpose of teaching and research, (vi) uses for the benefit of people with a disability where the uses are directly related to the disability, non-commercial in nature and to the extent required by the specific disability and (vii) use for the purposes of public security, administrative, parliamentary or judicial proceedings. Member States are obligated to take appropriate measures to ensure that rightsholders make available to the beneficiary of an exception the means of benefiting from that exception, provided that beneficiary has legal access to the protected work. The rightsholders are required to enter into agreement with the users entitled to avail exception lest the State should intervene. Article 6(4) does not specify how a Member State should fulfil its statutory obligation if a voluntary agreement is not reached; consequently, a variety of arrangements had fallen in place to fulfil the statutory obligation. The national legislation of Greece and Lithuania provided for mediation if the parties fail to reach a voluntary agreement. The U.K. law provided a special administration procedure where the beneficiary of exception could file a complaint to the Secretary of State who would order an inquiry and issue appropriate directions. Irish law provided for the beneficiary of exception approaching the High Court for relief.27 The 2006 Evaluation observed that Article 6(4) was extremely complex and prone to multiple interpretation with the result that while transposing Article 6(4) into national legislation “lawmakers in the 25 Member States have once again used their imagination to interpret the provision and come up with their own solutions, which they hope meets the requirements of article 6(4) of the directive”.28 In spite of such criticism, Article 6(4) had come in for considerable appreciation on three counts. First, EUCD had responded to the fact in a digital world wrapped by technological devices, and the function of exemptions system will be completely different from that in the analogue world by making the rightsholder responsible to ensure that a beneficiary of an exception has the means of benefiting from that exception. Secondly, the stipulation that the State should intervene only if the rightsholder and the person who wishes to avail an exception fail to reach an agreement is in sync with the views of those who advocated the view that it would be more appropriate “to leave it to rightsowners and users to work out the ways and means for the applicability of certain indispensable exceptions”, and that “the intervention of the legislatures or the 27 28

Gasser (2006, pp. 76–80). Guibault et al., (2007, p. 105).

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government is needed only where the interested parties prove to be unable to solve the problem”.29 Thirdly, Article 12 of EUCD required the European Commission to submit to the Council and the European Parliament a report on the impact of EUCD on the development of the digital market, every three years and to submit, if need be, proposals for amendments to EUCD, in particular to ensure the functioning of the Internal Market. It is apposite to mention that DMCA does not have a similar provision even though suggested by scholars like Pamela Samuelson.30 Based on such a review, the DSM Directive, 2019 provided mandatory exception to (i) the right of reproduction in respect of text and data mining by “research organisations” and “cultural heritage institutions”, and (ii) the right of reproduction and the right of communication to public and making available in respect of the use of works and other subject matter in digital and cross-border teaching activities; except for the changes introduced by the DSM Directive, the regime of limitations and exceptions put in place by EUCD remains intact.

5.5 Transposition of EUCD into National Laws of Member States Transposition of EUCD by Member States was a slow process and resulted in a variety of regimes. The policy environment within which the Member States had to transpose EUCD was vastly different from that in the U.S. when the DMCA was enacted. Even when the EUCD was issued in 2001, high-speed Internet connectivity and P2P file sharing were beginning to become quite common in many EC Member States. Along with the spread of new ways of accessing information and content, a new belief began to spread among Internet users, particularly the youth; that belief held that outmoded legal arrangements like copyright should not be allowed to come in the way of availing the new opportunities provided by Internet and digital technologies for making and exchanging information, knowledge and savouring music and films. The shift in the perspective about copyright “was initiated by an epistemic community of U.S. law academics (such as Pamela Samuelson and Lawrence Lessig) and transnational advocacy groups such as the EFF”.31 The winds of change wafting from across the Atlantic began to influence the thinking of a significant number of European academics who had traditionally believed in strong copyright and narrowly defined limitations and exceptions. The transposition of the anticircumvention provisions of EUCD into national legislations was uneven and “evolved into a fierce political battleground in several European countries such as Germany … and France”.32 Thus, in France, which was the last country in the EC which was to 29

WIPO Guide (2003), CT-11.22, p. 219. Reinbothe and von Lewinski (2015), paragraph 7.11.45, pp. 175–176) put forth a similar view. See also Bell (1998). 30 Samuelson (1999, pp. 557–562). 31 Breindl and Briatte (2013, p. 35). 32 Breindl and Briatte (2013, p. 30).

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transpose EUCD, activism of citizen groups was quite conspicuous. DADVSI,33 the national legislation to transpose EUCD, was drafted by a group of copyright lawyers and industry representatives. It began to be discussed within the government from November 2003, but it was introduced in the National Assembly only in December 2005, that too only after the French government received a warning from the EC. In addition to a provision prohibiting circumvention of TPMs, the Bill proposed criminalisation of the distribution of file sharing software and penalties on infringers of copyright in the digital medium. Because of opposition by a loose coalition of free software supporters and consumer right groups, the Bill generated considerable controversy when it was examined by the National Assembly between December 2005 and June 30, 2006. In order to placate the coalition of activists, measures that permitted circumvention for the sake of software interoperability were introduced, and thereafter, the Bill was approved. However, at the behest of the opposition, the Bill was once again referred to the French Constitutional Council. The delicate balance of interests that DADVSI struck was unravelled when the Council struck down the interoperability and penal provisions. Consequently, the Bill that became official law in August 2006 was “a suboptimal and implausible legal settlement that left all interests unsatisfied and that left the status quo virtually unaffected through its unclear and inoperable provisions”.34 DADVSI became an issue in the French Presidential elections, and after he assumed office in 2007, President Sarkozy decided to amend DADVSI so as to align it more closely with EUCD, and at the same time, curb unauthorised file sharing by introducing a ‘graduated response’ provision (see Sect. 4.7) to be administered by an arms’ length administrative body High Authority for the Dissemination of Creation and the Protection of Rights on the Internet (HADOPI). By 2008, the activists who protested against DADVSI had formed a new organisation, QdN, which spearheaded the opposition to HADOPI Bill. The Bill became a legislative minefield for the government, and in April 2009, the Bill was unexpectedly voted down by the National Assembly. Eventually, in May 2009, the Bill was approved after quite a bit of difficulty, and once again at the behest of the opposition, the Bill was referred to the French Constitutional Council. The Council struck down the graduated response provision on the ground that by shifting the burden of proof to the copyright infringers, the provision violated the principle that the guilty is presumed to be innocent till proved otherwise. The National Assembly eventually adopted a revised version of the HADOPI Bill which amended the graduated response provision, and the Council approved the amended Act.35 QdN went from strength to strength, formed an ad hoc alliance with various digital rights groups in Europe and abroad and was in continual contact with like-minded groups abroad such as the EFF. It played a lead role in opposing the incorporation of a graduated response provision in the Telecom Reforms Package adopted by the EU

33

The full form of ‘DADVSI’ is Loi sur le Droit d’Auteur et les Droits Voisins dans la Société de l’Information (Law on Authors’ Rights and Related Rights in the Information Society). 34 Breindl and Briatte (2013. p. 40) 35 Breindl and Briatte (2013, pp. 39-42).

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Parliament in November 2009. Given the popular outcry against the proposed graduated response provision, the European Parliament eventually adopted a compromise version leaving it open for Member States to implement the ‘graduated response’ or not. While graduated response legislations were already approved in the France, Ireland and United Kingdom, they were rejected in Denmark, Germany and Spain, yet another pointer to the fact that despite the efforts of the EC to harmonise copyright laws the laws of Member States continue to be quite divergent.

Bibliography A. Articles and Books Angelopoulos, C. (2012). The myth of European term harmonisation: 27 public domains for the 27 member states. International Review of Intellectual Property and Competition Law, 43(5), 567–594. Breindl, Y., & Briatte, F. (2013). Digital protest skills and online activism against copyright reform in France and the European Union. Policy and Internet, 5(1), 27–55. Commissioner Bolkestein Welcomes European Parliament Vote on Copyright Directive IP-01-210. (2001). Available at ec.europa.eu/commission/presscorner/detail/en/IP-01-210. Last accessed on 22 Feb 2022. Dusollier, S., et al. (2003). Tipping the scale in favor of the rights holders: The anti-circumvention provisions of the European Infosoc directive. In E. Becker (Ed.), Digital rights management: Technological, economic, legal and political aspects (pp. 462–478). Springer Verlag. Gasser, U. (2006). Legal frameworks and technological protection of digital content: Moving forward towards a best practice model. Fordham Intellectual Property, Media and Entertainment Law Journal, 17(1), 39–113. Gasser, U., & Girsberger, M. (2004). Transposition of the copyright directive: Legal protection of technological measures in EU-Member States—A genie stuck in a bottle? The Berkman Centre for Internet and Society at the Harvard Law School, Berkman Publication Series No. 2004-10. Guibault, L., et al. (2007). Study on the implementation and effect in member states’ laws of directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the Information Society. Institute for Information Law, University of Amsterdam. Available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2006358. Last accessed on 28 Sept 2022. Guibault, L. (2010). Why cherry-picking never leads to harmonisation: The case of the limitations on copyright. Journal of Intellectual Property, Information Technology and Electronic Commerce Law, 1(2), 55–66. Guibault, L. (2012). Evaluating directive 2001/29/EC in the light of the digital public domain. In M.D. De Rosnay, & J.C. De Martin (Eds.), Digital public domain: Foundations for an open culture (pp. 61–80). Open Book Publishers CIC Ltd. Hugenholtz, B. P. (2000). Why the copyright is unimportant, and possibly invalid. European Intellectual Property Review, 11, 501–502. Hugenholtz, B. P., & Okediji, R. L. (2008). Conceiving an international instrument on limitations and exceptions to copyright. Institute for Information Law. Reinbothe, J., & von Lewinski, S. (2015). The WIPO treaties on copyright: A commentary on the WCT, the WPPT, and the BTAP (2nd ed.). Oxford University Press. Samuelson, P. (1999). Intellectual property and the digital economy: Why the anti-circumvention measures need to be revised. Berkeley Technology Law Journal, 14, 519–564.

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Shapiro, T. (2011). Directive 2001/29/EC on copyright in the information society. In B. Lindner, & T. Shapiro (Eds.), Copyright in the information society: A guide to national implementation of the European directive. Edward Elgar Publishing.

B. Official Documents European Commission/European Union E.C. Proposal. (1997). European Commission. Proposal for a European Parliament and Council Directive on the Harmonization of Certain Aspects of Copyright and Related Rights in the Information Society dated 10 December 1997. COM (97) 628 final; 97/0359 (COD). EUCD. (2001). Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society. Review of the EU Copyright Framework. (2015). The implementation, application and effects of the ‘InfoSoc’ directive (2001/29/EC) and of its related instruments: European implementation assessment study. Available at https://www.europarl.europa.eu/RegData/etudes/STUD/2015/558 762/EPRS_STU(2015)558762_EN.pdf. Last accessed on 28 Sept 2022. United States United States Copyright Office. (2020, May). Section 512 of Title 17. A Report of the Register of Copyright. World Intellectual Property Organisation (WIPO) (1996). Final Text of WCT and WPPT. WCT. (1996). CRNR/DC/94 dated 23 Dec 1996. Available at https://www.wipo.int/edocs/mdocs/ diplconf/en/crnr_dc/crnr_dc_94.pdf WPPT. (1996). CRNR/DC/95 dated 23 Dec 1996. Available at https://www.wipo.int/edocs/mdocs/ diplconf/en/crnr_dc/crnr_dc_95.pdf WIPO Guide. (2003). Guide to Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms.

Chapter 6

The Making of Canadian Implementation Legislation

Abstract Canada enacted the implementation legislation only in 2012, sixteen years after the Internet Treaties were negotiated and adopted. The Chapter details the distinctive features of Canadian political and copyright landscape which explain this delay in enactment. Policymakers had to manage two conflicting considerations: (i) as a net importer of copyrighted goods Canada’s interests are not congruent with the U.S., and (ii) it would not be expedient to distance itself from the U.S. beyond a point, particularly after the formation of NAFTA. Further, the period from 2001 to 2011 was marked by exceptional political instability with four elections to the Canadian Parliament. At about the same time, as the U.S., the copyright policy environment changed in Canada, and social media-driven grassroot user rights movement acquired salience. It was only after the Conservative Party won a decisive victory in the 2011 elections that the government could steer the legislation through. The Conservative government deftly managed the policy process by moulding perceptions through extensive public consultations, enacting a law which balanced competing interests and gave rise to the perception, even among advocates of user rights, that the law was not the best but the best possible in the given circumstances with which one had to live with. The Chapter closes with an outline of the review of the 2012 law by two different committees of the Parliament.

6.1 Canadian Copyright Tradition Australia, Japan, the EC and the U.S. began their efforts to enact the implementation legislation soon after the DipCon, and the U.S. aligned its copyright law with WCT and WPPT in 1998, Japan in 1999, Australia in 2000 and the EC in 2001. However, legislative action began in Canada only in 2001, and it took eleven years and three failed attempts for the implementation act, the Canadian Copyright Modernisation Act, 2012 (2012 Act), to be enacted.1 The eleven-year long policymaking process is unusually long compared to other countries, but it is swift considering that it took thirty-eight years to enact a law in conformity to the Berne Convention to 1

The Copyright Modernisation Act, 2012 is also known as The Copyright (Amendment) Act, 2012. Details of the Act are at Copyright Amendment Act (2012).

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_6

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which Canada became a party in 1886.2 The unusually long period compared to other countries can be attributed to two conflicting considerations which push policymaking in opposite directions. The first consideration is that Canada had been and continues to be a net importer of copyrighted material; consequently, the interests of Canada are not congruent with the countries which are exporters of copyrighted material and who had a major say in the successive revisions of the Berne Convention and ensured that the scope of protection become wider and the levels of protection higher. The opposite consideration had been that it would not be expedient to distance itself beyond a point earlier from Great Britain the ‘home country’ and after the 1950s the United States.3 Consequently, aligning Canadian copyright law with new international copyright instruments had often been contentious, “bogged down by conflicting domestic and international demands” as a result of which the legislative process had been characterised by “slow progress, minimalist approach to conformity with international treaties, and carving out made-in-Canada approaches that attempt to respond to domestic Canadian demands while meeting the technical requirements of international treaties”.4 Secondly, the period 2004–2011 was marked by exceptional political instability with four elections to the Canadian Parliament (2004, 2006, 2008 and 2011) and three minority governments (Liberal 2004–2006, Conservative 2006–2008 and 2008–2011) bereft of the decisive ability to steer legislation in a highly contentious area. Once the Conservative Party won the 2011 election with a clear majority the government could clinch the legislation even if the provisions relating to TPMs (in the 2012 Act) were highly unpopular with user groups. As a result of the two conflicting considerations mentioned just above, Canadian copyright policy tended to swing back and forth between internationalism and scepticism of international copyright instruments. Scepticism about the usefulness of Berne Convention was the dominant sentiment during the period 1945-mid1980s with the result that Canada did not accede to the Brussels Revision and Paris Revision Acts. The late-1980s once again saw the swing of the pendulum towards internationalism. It was Prime Minister Brian Mulroney of Canada who took the initiative of expanding the Free Trade Agreement with the U.S.; his efforts culminated in the conclusion of the NAFTA. Canada acceded to the Paris Revision Act in 1989. Canada was a member of the Quad Group (Canada, EC, Japan and the U.S.) which led the successful move to have a wide scope of the Uruguay Round, and to embed IP in the global trade regime. It was Canada which took the lead in suggesting the formation of the WTO in view of the fact that “the post-Uruguay Round trade policy agenda will be complex and cannot be adequately managed by the existing GATT system”.5 In a conspicuous departure from the Canadian tradition, the Canadian copyright law was amended so as to be compliant with the TRIPs negotiations in 1994 itself, within a few months of the end of the Uruguay Round negotiations.

2

Bannerman (2010, p. 35). For a detailed historical perspective on Canadian copyright law see Bannerman (2011). 4 Bannerman (2010, p. 34). 5 Preeg (1995, p. 113). 3

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6.2 Cautious Approach to DipCon Canada approached the digital agenda with caution. The positions that Canada took in the Committees of Experts and during the DipCon were shaped by the push and pull of the conflicting considerations. Thus, during the last meeting of the Committees of Experts in May 1996, a Canadian expert told the Committees that for the time being he could not endorse any proposal relating to TPMs as studies were in progress in its country. It was necessary to ensure that anticircumvention provisions would not deny access to works in the public domain or fair dealing.6 The Canadian government’s negotiating mandate instructed the Canadian delegation to support provisions that would not result in major changes to domestic law or were sufficiently flexible in implementation; the delegation did not have the power to sign the treaties adopted by the DipCon as the proposed treaty language was not adequately debated in Canada7 At the DipCon, Ms. Bouvet of Canada acted as the spokesperson of the developed countries during the first three days of the DipCon when the vexatious question of distribution of offices was deliberated upon. In her opening statement in the Plenary, Ms. Bouvet said that Canada would participate actively in elaborating new international rules that would lead to greater legal security not only for owners of copyright but also for users and would contribute to the development of the global economy as well as cultural industries, entertainment and media business. However, the treaties which would be adopted should show a degree of flexibility.8 She told formal session of the Main Committee-I that Canada could not support Article 7 of the Draft WCT (right of reproduction) as ‘currently drafted’ even though the U.S. was a strong supporter of Article 7 as it did not give the necessary flexibility to national legislative authorities and the courts to determine the scope of the right of reproduction in the age of digital technology. It would be premature to include such a provision in another treaty, particularly since the Berne Convention provided the necessary flexibility to cover the reproduction of works in any manner or form.9 She expressed support to international exhaustion even though the U.S. favoured national exhaustion. While supporting the proposal to confer the moral rights of the right to attribution and integrity she moved an amendment that Contracting Parties might be permitted to limit the application of Article 5 of the Draft WPPT to performances which occurred after the coming into force of this Treaty in that Contracting Party. She strongly pleaded for the rights information systems being wholly voluntary; those systems should not impose unreasonable burdens or technical problems for intermediaries like broadcasters. All in all, even while taking positions which were in Canada’s interest, she went by the consensus which evolved during the informal consultations on TPMs, and limitations and exceptions as it was in sync with the flexibility she sought for in the responses to the new digital technologies. She did not 6

Fair use is called fair dealing in Canada. Geist (2009). Invoking the Access to Information Act, Geist obtained from the Canadian government the memorandum setting out the instructions to the Canadian delegation. 8 DipCon Records, Volume II, paragraph 412, p. 614. 9 DipCon Records, Volume II, paragraph 258, p. 669. 7

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sign the treaty in the signing ceremony held immediately after the DipCon ended. However, Canada did sign WCT and WPPT on December 22, 1997, nine days before the stipulated date of December 31, 1997. However, once it affixed its signature to the treaties, the old Canadian tradition of “slow progress, minimalist approach to conformity with international treaties, and carving out made-in-Canada approaches” surfaced again.

6.3 Legislative Process (2001–2005) It was only in June 2001 that the Canadian government released proposals for amending the Canadian copyright law and elicited comments.10 Among others, the proposals included a making available right, legal protection of TPMs, rights management system and liability of intermediaries for contributory infringement. The provisions regarding TPMs drew adverse comment from computer scientists, educational institutions, librarians and archivists. Educational institutions, librarians and archivists were worried that anticircumvention provisions would curtail fair dealing. Notwithstanding these comments the government decided to go ahead with its proposals. After the 2004 elections, the government came up with Bill C-60, in June 2005. While it did not expand fair dealing or offer significant exceptions for users, its anticircumvention provisions and the provision regarding liability of intermediaries for contributory infringement were significantly different from the corresponding provisions of DMCA. It prohibited only those acts of circumvention (of TPMs) whose purpose was copyright infringement; in other words, it did not make circumvention of a technological measure an infringement per se. It also prohibited offer of a specific service to circumvent, remove or make ineffective a TPM if the service provider ‘knows or ought to know’ that providing the service will result in copyright infringement. It also prohibited the sale, rental, trade or distribution of a work to which access was obtained through circumvention. Regarding intermediary liability for contributory infringement, Bill C-60 proposed a ‘notice and notice regime’ which is a diluted version of DMCA’s ‘notice and take down’ procedure (see Sect. 3.2.2). With some modification, this regime was incorporated in the 2012 Act. However, user groups were unhappy with the Bill as it did not significantly expand fair dealing and did not propose new exceptions. Bill C-60 lapsed with the ruling Liberal Party losing the 2005 elections.

10

The narrative on policy process draws on Haggart (2013) and Geist (2017a, 2017b).

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6.4 Shift in Policy Environment and Internet Activism The incoming Conservative government promised swift action to introduce the implementation legislation, but it was only about two years later, in December 2007, that the government came up with a comprehensive Bill, C-61; a major reason for the delay was the government giving priority to an anticamcording legislation. The runup to the enactment of the anticamcording legislation witnessed intense lobbying efforts by interest groups for and against the proposed legislation. By the time, Bill C-61 made its appearance the Canadian policy environment underwent a significant change. The Internet penetration, broadband connectivity and a P2P file sharing in Canada had come to be similar to that in the U.S., and consequently, the policy environment for copyright tended to be similar to that in the U.S. from the mid-2000s, and not that when the DMCA was enacted. Broadband Internet connectivity made it possible to build a users’ right movement “consisting of individuals who otherwise might never have met”, create and reinforce common identities.11 Michael Geist was the “central movement entrepreneur” who organised in September 2007 the FCFC Facebook page which galvanised the grassroot users’ right movement. Members joined the FCFC at an exponential rate, and in addition, “local Facebook chapters sprung up in communities across the country as the public sought out ways to influence government policy”. The policymaking process which culminated in the enactment of the 2012 Act saw the rise of a strong users’ rights grassroots movement which was described as among the first Facebook “uprisings” anywhere in the world. Facebook also helped to share information and lobby the government by swamping the ministers and Members of Parliament with petitions and letters.12 The grassroot users’ right movement in Canada would not have succeeded to the extent it did, without the support of academics and practising copyright experts like Geist, Howard Knopf and Software developer Russell McOrmond. The involvement of academics specialising in copyright law and the grassroot Canadian users’ movement were inspired by what happened in the U.S. Grassroot activism would not have been effective if it were not complemented by the conventional measures employed by policy entrepreneurs to persuade the government to pay heed to the activists. Geist had the uncanny facility of “turning a dry technical subject into front page issue”; he used his legitimacy, expertise and institutional base at the University of Ottawa to address digital copyright issues, to consult with government officials, to track the happenings on digital copyright issues within the government through access to information requests, to write extensively for his own blog and a weekly column in the Toronto Star and to edit two volumes on Canadian copyright13 to [synchronise with the introduction of Bills in 2005 and 2010].14 The first scholarly compilation edited by Geist, In the Public Interest: The Future of Canadian Copyright Law, enlisted the majority of Canadian scholars specialising in 11

Haggart (2013, p. 842). Geist (2017a, 2017b, p. 187). 13 Geist (2005, 2010). 14 Haggart (2013, pp. 847, 849). 12

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IP in the cause of ensuring that the implementation legislation would not give short shrift to users and public interest. That enlistment spawned a new generation of copyright specialists committed to engaging the real world of copyright policymaking. The users’ right movement got a boost from the Canadian Supreme Court whose judgements in Théberge (2002)15 and CCH (2004)16 cases gave legitimacy to users’ rights and gave a new meaning to ‘balance’ in copyright. The jurisprudential revolution17 started by these judgments culminated in the ‘pentalogy’ of judgments18 in 2012, which overturned the foundations of old copyright jurisprudence. To date, “the language of ‘users’ rights’ has found its greatest formal endorsement in the judgments of the Canadian Supreme Court”, and for proponents of users’ rights, “the recognition of user rights dramatically corrected Canada’s traditionally owner-centric regime as it was adjusted to the new digital century”.19 The signal achievement of the movement sparked by the FCFC founded by Geist was to place “user rights squarely on the Canadian political agenda, to the extent that the government saw it as necessary at least to pay lip service to them in pursuit of their final objective”.20 The grassroot user right movement swamped the government and Members of Parliament (MPs) with letters expressing their concerns and buttonholed MPs and Ministers during their visits to constituencies. The impact of blogs and Facebook posts was amplified by coverage of copyright issues in mainstream media. All in all, copyright became a hot-button topic and alarmed by the mounting criticism the government delayed introducing the copyright bill. The activism of FCFC was not without critics; in an article entitled ‘Facebook Fair of Copyright of Canada’ (a play on words of the FCFC), Barry Sookman criticised Geist for “the lack of objectivity and fairness of the information and arguments provided to the public through the FFCC”, leading to the unfortunate consequence of the public missing out a golden opportunity for an informed debate’ on Bill C-61. His long paper rebutted the criticisms levelled by Geist against the proposed Bill.21 Opposition could delay the introduction of the Bill but could not kill it, In June 2008, Bill C-61 was introduced in the Parliament. The Bill did offer concessions to the users’ right movement by providing for a few exceptions such as ‘a time shifting provision’ that legalised recording of television programmes, a private copying of music provision that allowed consumers to copy music onto their iPods, and a format shifting provision that permitted transferring content from analogue to digital formats’ subject to conditions such as users not retaining recorded programmes or creating backups of popular consumer products such as DVDs.22 However, the provisions relating to 15

Théberge v. Galerie d’art du Petit Champlain inc. (2002) SCC 34. CCH Canadian Ltd. v Law Society of Upper Canada (2004) SCC 13. 17 For a crisp account of the jurisprudential revolution see Craig (2017, pp. 20–27). 18 Geist (2013). 19 Craig (2017, pp. 5–6). 20 Haggart (2013, p. 853). 21 Sookman (2008, p. 199). Sookman stands out as a critic of Geist who rebutted the arguments of Geist from time to time. 22 Geist (2017a, p. 189, 2017b). 16

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circumvention were closer to those of the DMCA than the previous Bill C-60. The Bill prohibited not only the act of circumvention but also trafficking in circumvention. User groups widely criticised Bill C-61 and labelled it as a U.S. Bill; the Internet was leveraged to post thousands of comments about the implications of the Bill, and the Industry Ministry, which was steering the Bill, was inundated with protest letters from the activists of the grassroot users’ right movement. Bill C-61, like its predecessor C-60, lapsed as elections were announced in September 2008.

6.5 Deft Policy Management The new minority Conservative government brought in a new ministerial team to handle the implementation legislation. The manner in which Industry Minister Tony Clement and Heritage Minister James Moore steered the policymaking process in the final stages (2009–2022) is a superb example of deft policy management. The strategy followed by Clement and Moore proceeded from the premise that in steering policy development in a contentious area perception management is as important as dealing with substantive issues. That being so, it was important to hold widespread consultations so that everyone who had a view on the implementation legislation would come to believe that he got a fair hearing. It was imperative to dispel the widespread apprehension that like its predecessor, Bill C-61, the new Bill was “born in the U.S.” and instead foster the perception that the new Bill was a ‘Made-in-Canada Bill’ designed to promote Canadian interests. The National Copyright Consultations held in the summer of 2009 employed many avenues for eliciting public opinion: direct submissions (8000 submissions were received), an online discussion forum, roundtable discussions and townhall meetings. The consultations “generated considerable praise for their openness and broad participation”, and “lauded as the most successful public policy consultation in Canada in recent memory”. In June 2010, Clement and Moore tabled Bill C-32 in the Parliament, and a media campaign was launched characterising the Bill as “balanced copyright”. The Bill made admirable efforts to “find compromise positions on some of the most contentious copyright issues” and had “something for almost everyone”: “new rights for performers and photographers, a new exception for Canadian broadcasters, … legalisation of common consumer activities such as recording television shows and transferring songs from a CD to an iPod … a ‘YouTube’ User Generated Content remix exception that granted Canadians the right to create remixed work for non-commercial purposes under certain circumstances”.23 No less importantly, a ‘notice and notice system’ for ISP contributory liability pleased the user groups and modification of the statutory damage rules so as to enhance the risk of hefty liability for cases of non-commercial infringement pleased the rightsholders. The provisions in regard to circumvention were almost the same as S.1201 DMCA, and pleased the rightsholders as well as the U.S. However, these provisions came in for bitter criticism from user groups. Geist once again reiterated 23

Geist (2017a, p. 193).

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that the flexibility provided by Article 11 of WCT should be availed. He commended incorporation of the provisions of the New Zealand’s Copyright (New Technologies) Amendment Act, 2008 which expressly “retained” the right to circumvent a TPM for legal purposes identified in its copyright law’ and provided for “qualified circumventers” who had ‘the right to circumvent on behalf of users eligible to circumvent’. He also noted that the Indian Copyright Amendment Bill, 2010 had a similar provision.24 Before the Bill could be considered by the Parliament, the government lost its majority in the Parliament in April 2011, and fresh elections were ordered.

6.6 Salient Features of the Implementation Act (2012) In the elections held in May, the Conservatives obtained a clear majority on their own, and in September 2011, the government introduced Bill C-12 which was identical to Bill C-32, and in June 2012, it was enacted as the Copyright Modernisation Act. On the digital agenda, the 2012 Act walked a fine line between the conflicting demands of the user’s right movement on the one hand and of the content industries and the American government on the other. In spite of fervent pleas to avoid a Made-in-America anticircumvention provision, the provisions of the 2012 Act in regard to TPMs were close to those of DMCA. As a result of the provisions relating to circumvention of TPMs, fair dealing as well as new exceptions from copyright infringement like time shifting and format shifting would not be available if access control protecting the work is circumvented. “Despite the loss on digital locks”, Geist opined that “there were some important wins for Canadians who spoke out on copyright”.25 Fair dealing was extended to parody and satire, and fair dealing in respect of education was broadened. The acceptance of a few demands of the users’ right movement led Geist to describe the changes brought out by the 2012 Act as “among the most user-friendly in the world, emphasising user rights and featuring an expansion of fair dealing, a host of new consumer exceptions, innovative new technology focused exceptions, limitations on liability for non-commercial infringement, and notable safeguards for user privacy in Internet service provider liability rules”.26 On the whole, the 2012 Copyright Act was the proverbial curate’s egg, with every interest group finding good and bad parts in the Act—not the best but the best possible in the given circumstances with which one has to live with. As Geist put it, on the eve of the statutory review of the 2012 Act in 2019, “the Conservative government [which enacted the 2012 Act] got far righter than it got wrong”. Canada was a far different place than it was in 2012; the Canadian music market has leaped past Australia to rank 6th in the world, and music collective SOCAN was generating record 24

Geist cited the precedents of New Zealand and India in Geist (2010, pp. 235–236). Geist (2012). 26 Geist (2017a, p. 168, 2017b). For a detailed account of the exceptions for User Generated Content in the different Canadian Bills and the 2012 Act as well as of the landmark Canadian Supreme Court judgments which recognised user rights see Scassa (2013). 25

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earnings. Nearly half of English-speaking households in Canada subscribe to Netflix, theatre box office revenues had hit new highs. Software piracy was at an all-time low, the unique protections for non-commercial, User Generated Content such as music remixes or video mashups were much discussed elsewhere in the world. He had second thoughts on the five yearly statutory right which the 2012 Act provided for as a mechanism to ensure that the law remained current, in what is a fast-paced world. Geist expressed the view that the uncertainty associated “with the prospect of neverending reforms may ultimately do more harm than good”. He also counselled against a radical overhaul as it “would do more harm than good, as the full implications of the 2012 reforms and recent court rulings are still being sorted out”.27

6.7 Evaluation of the Making of the Canadian Implementation Legislation Evaluating the ‘Canadian experience’ Geist28 noted that while the Canadian users’ movement focused on bringing about ‘pro-user changes to copyright law’ unlike other protests, such as the American protest against Stop Online Piracy Act or New Zealand’s protest against the ‘three strikes and you’re out’ copyright legislation, which had focused on stopping legislation. The biggest shift within the Canadian copyright reform framework was the emergence of the broader public as a recognised stakeholder within the policy process. The Canadian experience had also brought out that academics, who are dismissed off as ivory tower inhabitants, could play an integral role in advancing the law within both the legislature and the courts. If ultimately, the anticircumvention provisions mirrored the U.S. DMCA approach it was because of the American pressure and the recognition that a more flexible approach would face opposition in most other ongoing trade negotiations. Canadian officials had “long dismissed the Special 301 process as a lobby document with little credibility”. The U.S. objected to the “notice and notice” system of ISP liability for contributory infringement; however, Canada retained the “notice and notice” system in the 2012 Act, and U.S.-Mexico-Canada Agreement, 2019 (NAFTA 2.0) which replaced NAFTA had accepted it. Geist also referred to the Canada and European Union (EU) Comprehensive Economic and Trade Agreement (CETA); none of the copyright reforms, such as copyright term extension, resale rights, and broadcaster rights demanded by EU during negotiations, were included in the final agreement. In his evaluation,29 Haggart, even while giving due credit to what FCFC accomplished, highlighted the fact that Facebook activism was “not a purely decentralised, leaderless phenomenon”. It would not have achieved what it did without ‘movement entrepreneurs’ like Geist who “were able to draw on a solid ‘real world’ institutional base: they had both the time and economic capability to keep the pressure on even 27

Geist (2017b). Geist (2017a, pp. 200–5, 2017b). 29 Haggart (2013, pp. 854–856). 28

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beyond the initial burst of support”. The disproportionate effect of FCFC uprising was “the result of a very unusual confluence of events”. It occurred during a period of government minority; once the Conservatives were returned with a majority situation (as after the 2011 elections), “the government—the Prime Minister—could choose to do largely as he wished”. The introduction of user rights that can be overridden by digital locks was largely a tactical, though not unimportant, concession to a potentially troublesome new interest group. All in all, the Canadian experience brings out the potential and limitations of social online movements and offers a reminder of the continued salience of political context in determining the effects of online protests: similar protests would have different effects in different settings.30

6.8 Review of the 2012 Implementation Act (2019) The Report of review by the Standing Committee on Industry, Science and Technology (2019),31 was hailed as a sensible report by Geist.32 The administration of copyright law in Canada is a joint responsibility of the Department of Industry Canada and the Department of Canadian Heritage. While the user groups were by and large happy with the Report of the Standing Committee on Industry, Science and Knowledge, they were upset by the Report of the Standing Committee on Canadian Heritage.33 The Report of the Standing Committee on Canadian Heritage was indicted as “the most one-sided Canadian copyright report issued in the past 15 years”.34 Apart from reconciling the conflicting recommendations of the two reports as well as the conflicting demands of interest groups, the Canadian Government has also to factor in the obligations arising from NAFTA 2.0 such as extending the term of copyright protection from the present “life plus 50 years” to “life plus 70 years” as in the U.S. and the EC. Term extension is likely to be a contentious issue as a proposal to extend the term of protection to “life plus seventy years” was made in 2003 but had to be dropped because of opposition. It is appurtenant to mention that Report of the Standing Committee on Industry, Science and Knowledge also considered and made recommendations on the latest modes of infringement. It noted that by 2018 “peer-to-peer piracy had declined”, but other forms of piracy such as stream ripping (copying a work off a legitimate streaming service like Spotify), unauthorised commercial streaming sites, and preloaded set-top boxes (devices that allow a user to easily access online streams of infringing content) had emerged. After considering various suggestions to curb new forms of infringement and keeping in view the desirability of the measures that would be introduced having no overreach and curtailing freedom of expression, the 30

Haggart (2013, p. 856). Canada 2012 Act Review (2019a). 32 Geist (2019). 33 Canada 2012 Act Review (2019b). 34 Geist Bulte Redux (2019). 31

Bibliography

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Committee expressed the view that “there is value in clarifying within the Act that rightsholders can seek injunctions to deny services to persons demonstrably and egregiously engaged in online piracy, provided there are appropriate procedural checks in place”; it preferred adjudication of courts rather than an administrative regime. The Committee also supported amending the Telecommunications Act to remove any procedural duplication or unnecessary hurdles.35

Bibliography A. Articles and Books Bannerman, S. (2010). Copyright: Characteristics of Canadian reform. In M. Geist (Ed.), From ‘radical extremism’ to ‘balanced copyright’: Canadian copyright and the digital agenda (pp. 17– 44). Irwin Law. Bannerman, S. (2011). Canadian copyright: History, change, and potential. Canadian Journal of Communication, 36, 31–49. Craig, C. (2017). Globalizing user rights-talk: On copyright limits and rhetorical risks. American University International Law Review, 33(1), 1–73. Geist Bulte Redux. Geist, M. (2019, May 15). The ‘Bulte Report’ redux: Canadian heritage committee releases embarrassingly one-sided remuneration models study. Geist, M. (Ed.). (2005). In the public interest: The future of Canadian copyright law. Irwin Law. Geist, M. (2009, December 23). Canada and the WIPO treaties: Flexibility was always key. Blog. Geist, M. (Ed.). (2010). From ‘radical extremism’ to ‘balanced copyright’: Canadian copyright and the digital agenda. Irwin Law. Geist, M. (2012, June 18). The battle over C-11 concludes: How thousands of Canadians changed the copyright debate. Blog. Geist, M. (Ed.). (2013). The copyright pentalogy: How the supreme court of Canada shook the foundations of Canadian copyright law. University of Ottawa Press. Geist, M. (2017a). The Canadian copyright story: How Canada improbably became the world leader on users’ rights in copyright law. In R. Okediji (Ed.), Copyright law in an age of limitations and exceptions (pp. 169–205). Cambridge University Press. Geist, M. (2017b, June 12). What’s next after the 2012 copyright overhaul? Policy Options. Geist, M. (2019, June 3). The Canadian government has released the surprisingly sensible results of its extensive, year-long review of copyright law. Blog. Haggart, B. (2013). Fair copyright for Canada: Lessons for online social movements from the first Canadian Facebook uprising. Canadian Journal of Political Science, 46(4), 841–861. Preeg, E. H. (1995). Traders in a brave new world: The Uruguay round and the future of the international trading system. University of Chicago Press. Scassa, T. (2013). Acknowledging copyright’s illegitimate offspring: User-generated content and Canadian copyright law. In M. Geist (Ed.), The copyright pentalogy: How the supreme court of Canada shook the foundations of Canadian Copyright Law (pp. 431–454). University of Ottawa Press. Sookman, B. (2008). Facebook fair for copyright of Canada: Replies to Professor Geist. Osgoode Hall Review of Law and Policy, 1(2), 199–241.

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Canada 2012 Act Review (2019a, pp. 92–98).

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B. Official Documents I. Cases: Canada CCH Canadian Ltd. v Law Society of Upper Canada. (2004). SCC 13. Théberge v. Galerie d’art du Petit Champlain inc. (2002). SCC 34. II. Government Documents Canada Copyright (Amendment) Act. (2012). Canada 2012 Act Review. (2019a). Shifting Paradigms: Report of the Standing Committee on Canadian Heritage. May 2019, 42nd Parliament, 1st Session. Canada 2012 Act Review. (2019b). Statutory Review of the Copyright Act: Report of the Standing Committee on Industry, Science and Technology. June 2019, 42nd Parliament, 1st Session. World Intellectual Property Organisation (WIPO) (1996). Final Text of WCT and WPPT. WCT. (1996). CRNR/DC/94 dated 23 December 1996. Available at https://www.wipo.int/edocs/ mdocs/diplconf/en/crnr_dc/crnr_dc_94.pdf WPPT. (1995). CRNR/DC/95 dated 23 December 1996. Available at https://www.wipo.int/edocs/ mdocs/diplconf/en/crnr_dc/crnr_dc_95.pdf DipCon Records. (1999). Records of the Diplomatic Conference on Certain Copyright and Neighboring Rights Questions, Geneva, 1996. Two Volumes, WIPO Publication No. 348E. Volume I has all the amendments proposed to the substantive provisions of Draft WCT and Draft WPPT, Agreed Statements, Final Act of the Diplomatic Conference, Resolution and Recommendation adopted by the Diplomatic Conference. Available at https://www.wipo.int/edocs/pubdocs/ en/wipo_pub_348_vol_i.pdf. Last accessed 26 Feb 2022.

Chapter 7

Making of the Indian Implementation Legislation

Abstract Even though India played a very active role in the WIPO Diplomatic Conference (1996), it transposed the Internet Treaties into its copyright law only in 2012 and acceded to the Internet Treaties only six years later. This Chapter elaborates the reasons for this extraordinary delay. Given that the Internet penetration was low even by 2012, there was no pressure on the Indian Government to enact an implementation law with strong anticircumvention provisions. In fact, the law’s provisions relating to digitalised content are a fair use proponents’ dream law, and they incorporate every suggestion that fair use proponents had made in the U.S. and elsewhere. Immunity for intermediaries by way of safe harbour was provided initially by the Information Technology (IT) Act, 2000. The inadequacy of that provision was brought out by litigation, and eventually immunity was provided through the implementation legislation. The implementation law was pace setting in that it had provisions for orphan works and for providing the print disabled access to works. The Chapter describes the saga of successful policy entrepreneurship by Javed Akhtar, a lyric writer, to overturn the long-standing practice of film producers acquiring all rights of lyric writers and composers through contracts once and for ever.

7.1 Why Delay in Enactment? The expedition and dispatch with which India ratified the Uruguay Round Final Act and fulfilled its obligations under the TRIPs agreement were missing altogether with the Internet Treaties. For a country not to accede to the Uruguay Round Final Act was suicidal in that it would have been excluded from the gains of international trade. That was the reason why countries which did not participate in the Uruguay Round negotiations like China joined the WTO at the earliest opportunity after fulfilling the conditions stipulated. In contrast, there was no such compulsion with the Internet Treaties. Further, figuratively, in public policy the squeaky wheel gets the grease; or to mix metaphor, Newton’s first law of motion applies to politics and policymaking also: things stay as they are, until a big enough force shoves them to move and change. In the absence of any demand from the Indian content industries to accede to the Internet Treaties and appropriately amend the copyright law government could © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_7

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take its own time to enact the implementation legislation. There was no demand for two reasons: the first reason was that the 1994 Amendment Act made extensive changes to the copyright law to cater to the needs of the computer software industry. It even introduced a right of making available a copyrighted work, as a form of communication to the public; the enactment of that right also ensured that courts were able to enforce copyright in the digital medium1 even though the Indian legislation to implement the Internet Treaties was enacted only in 2012, and India became a party to the Internet Treaties only in 2018. The second reason was that even by 2012, high-speed Internet penetration and digital transmission of content were low, and content industries other than computer software could afford to be complacent.

7.2 Legislative Process The 1999 amendments to the copyright law did not touch the provisions of the Internet Treaties at all. Following the precedent established by me to develop India’s negotiating stance at the DipCon,2 a thirty-member core group was constituted under the chairmanship of the Education Secretary, Government of India, in 2000. The core group had representatives of different ministries concerned, institutions such as Sahitya Akademy (National Academy of Literature), Sangeet Natak Akademy (National Academy of Music and Dance), National School of Drama, Film and Television Institute of India, Indian Institute of Technology, Delhi, and National Law School University of India, Bangalore, performers Asha Bhosle and Shubha Mugdal, IPR expert N. S. Gopalakrishnan and organisations such as the IPRS, Phonographic Performance Limited, Film Federation of India, Federation of Indian Publishers, Federation of Publishers’ and Booksellers’ Association in India, Authors Guild of India, NASSCOM and the Indian Newspaper Society. The core group was mandated to look into the practical problems faced by the content industries in the implementation of the copyright law and suggest amendments keeping in mind the Internet Treaties also. The inputs from the industry were largely based on practical problems. A drafting committee was constituted to draft proposals for the amendment of the copyright law based on the inputs from different stakeholders; the amendments proposed by the drafting committee were posted on the Web in 2005 for comments from the public.3 The digital agenda provisions of the 2005 proposal (reproduction, communication to public, limitations and exceptions, anticircumvention provisions and intermediary liability) remained substantially same in the 2012 amendment except the changes in language. After the National Democratic Alliance government gave way to the United Progressive Alliance government in 2004, there were new demands from the film industry (term extension), lyric writers and music composers. Based on the consultations in the core group, a Draft Bill was prepared and widely 1

Sagar (2015, pp. 345, 347), Analysis of Amendments to Indian Copyright Act (1994). Ayyar (2021, p. 3). 3 Proposals to Amend Indian Copyright Act (2005); also see Chowdhury (2007). 2

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circulated in May 2005, and extensive consultations held. About four years later, the Cabinet approved the new Copyright Amendment Bill on 24 December 2009 and the Bill so approved was introduced in the Rajya Sabha on 19 April 2010 as the Copyright (Amendment) Bill, 2010.4 As used to be the practice those days, within a few days of the introduction, the Bill was referred to the Parliamentary Standing Committee of MHRD for study and making recommendations. After deliberating over the Report of the Standing Committee, the government made a few changes in the Bill, and the Bill was approved in 2012.

7.3 Provisions Relating to Digital Agenda: Fair Use Proponents’ Dream Law The Indian Copyright (Amendment) Act, 2012 (hereafter referred to as the 2012 Act), which seeks to make the Indian copyright law WCT and WPPT-compliant, is a fair use proponents’ dream law as it incorporates every suggestion that they had made during the making of DMCA. Thus, the Indian amendment (i) prohibited only the act of circumventing effective technological measures and not the preparatory acts, (ii) made it explicit that nothing in the provision relating to TPMs prevented doing anything that does not constitute an infringement of copyright and related rights and (iii) envisaged provision of circumventing services in order to facilitate access to a protected work in order to commit an act permitted by copyright law.5 The provisions of TPM are more user-friendly than those of the New Zealand’s Copyright (New Technologies) Amendment Act, 2008. The New Zealand Act also made it explicit that circumvention of TPMs for provided for exercise of a permitted act is not an offence. It also provided for the services of a qualified exercise of circumvention on behalf of a legitimate user of work protected by TPM. However, unlike the Indian 2012 Act, it prohibits preparatory acts. The decision to exclude preparatory acts in the 2012 Act was deliberate; the 2012 Act consciously did not define the expressions ‘effective’ as well as ‘technological measures’ given “the complexities faced in defining these terms in the laws of developed countries” and left the import of those terms to evolve through judicial interpretation.6 And further, the 2012 Act specifically excluded from the copyright infringement a fair dealing with any work, not being a computer programme, for the purposes of (i) private and personal use, including research, (ii) criticism or review, whether of that work or of any other work, and (iii) the reporting of current events, including the reporting of a lecture delivered in public. And further, the Act made it clear that the storing of any work in any electronic medium for the aforementioned purposes, including the incidental storage of any computer programme which is not itself an infringing copy for the said purposes, shall not constitute infringement of copyright. 4

The Copyright (Amendment) Bill, 2010. Thomas (2012), Ashok (2012), Bhat (2013), Sivakumar and Lukose (2013). 6 Rajya Sabha Standing Committee Report (2010, paragraph 20.7). 5

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The 2012 Act made circumvention of an effective technological measure applied for the purpose of protecting copyright, with the intention of infringing such rights, shall be punishable with imprisonment which may extend to two years and shall also be liable to fine. The Act also specifically outlined acts which would not attract criminal liability; these are (i) doing anything for a purpose that is not prohibited by the Act, (ii) doing anything necessary to conduct encryption research using a lawfully obtained encrypted copy, (iii) conducting any lawful investigation, (iv) doing anything necessary for the purpose of testing the security of a computer system or a computer network with the authorisation of its owner or operator, (v) doing anything necessary to circumvent technological measures intended for identification or surveillance of a user and (vi) taking measures necessary in the interest of national security. ‘Criminalisation’ of circumvention of technological measures without providing any civil liability came in for sharp criticism. It would appear that criminal liability was preferred to a civil liability because being a non-cognisable offence, the scope for misuse was considered to be less than with civil liability. Whatever, the provisions of the Indian 2012 Act regarding TPMs won praise from a comparative study of the Indian Copyright Amendment Bill and the Canadian Bill C-32. India made “use of the ‘wiggle room’ inherent in the WIPO Internet Treaties and… [creating] an avenue for consensus building at the international level towards a more unreserved recognition of the interest of users”, and “the Canadian legislature can take away an important lesson from its Indian counterpart”.7 The Consumer International ranked the Indian Copyright Act as the first in terms of consumer friendliness.8 However, it is important to bear in mind that Mile’s Law (where you stand depends upon where you sit) applies equally to the stand countries take on IPR protection; thus, so long as the U.S. was a net importer of books, it was the biggest pirate in the world, and once it emerged as the leading exporter of movies, recorded music and other copyrighted material, it turned into the biggest victim of copyright ‘pirates’ and became a global vigilante taking on ‘pirates’ anywhere in the world. Even in 2012, India was yet to face major problems of circumvention due to low level of penetration of digital technology; it is that fact that permitted India to adopt a righteous stand. Immunity for intermediaries by way of safe harbour was provided in Indian copyright law only in 2012 after the provisions of the Internet Treaties were transposed into Indian Copyright Act. Till then, immunity of sorts was provided by S.79 of the Information Technology (IT) Act, 2000.9 As originally enacted, the safe harbour protection under S.79 was very limited, extending only to protection from liability under the IT Act, and further only if the offence or contravention was committed without the knowledge of the intermediary or if the intermediary had exercised due diligence. The IT Act was amended in 2008 following the high-profile ‘Bazee case’ wherein Avnish Bajaj, CEO of Bazee.com (a subsidiary of eBay), was arrested after 7

Vaish (2011, p. 122). Consumers International IP Watchlist Report 2010, cited in Vaish (2011, p. 122, footnote 91). 9 For evolution of the Indian law on safe harbour, see Gupta (2007), Advani (2013), Arun (2014), Thelle et al. (2014), Nadkarni et al. (2020). 8

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Bazee.com carried the listing of the sale of a mobile phone video clip containing pornographic content involving teenagers. The Delhi High Court rejected a petition for annulment of the criminal prosecution of Bajaj; it was argued on behalf of Bajaj that the hosting platform did not host the actual clip and had no control over the third party that posted the content. The Delhi High Court took the view that the website did not exercise due diligence because it did not install filters to screen objectionable material and it did not have any policy in place to prevent the listing, display or sale of such content.10 The decision of the Delhi High Court aroused considerable apprehension in India and abroad about the slippery ground on which intermediaries stood in India. The amendments carried out to the IT Act in 2008 brought the intermediary liability “more in line with similar legislation in other jurisdictions, such as the EU Ecommerce Directive”.11 The definition of ‘intermediary’ was quite comprehensive. With respect to any particular electronic record, an intermediary was defined to mean “any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record”; the term ‘intermediary’ includes “telecom service providers, network service providers, internet service providers, web-hosting service providers, search engines, online payment sites, online-auction sites, online-market places and cyber cafes”. S.79 of the amended IT Act provides certain exceptions for intermediaries; thus, an intermediary shall not be liable for any third-party information, data or communication link hosted by it if the intermediary fulfils three conditions. The first condition is that the function of the intermediary is limited to providing access to a communication system over which information made available by third parties is transmitted or temporarily stored. The second condition is that the intermediary does not (i) initiate the transmission, (ii) select the receiver of the transmission and (iii) select or modify the information contained in the transmission. The third condition is that the intermediary observes due diligence while discharging his duties under this Act and also observes such other guidelines as the Central Government may prescribe in this behalf. The exemption provided by S.79 does not apply if (i) the intermediary has conspired or abetted or aided or induced, whether by threats or promise or otherwise, in the commission of the unlawful act, and (ii) upon receiving actual knowledge, or on being notified by the appropriate government or its agency that any information, data or communication link residing in or connected to a computer resource controlled by the intermediary is being used to commit the unlawful act, the intermediary fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner. The scope of the exemption, however, was modified because of the Supreme Court’s judgement in the Shreya Singhal case; the Court ‘read down’ the provision to mean that intermediaries were required to take down content only when a court has ordered them to do so.12 In February 2021, the conditions subject to which S.79 of 10

Avnish Bajaj v. NCT of Delhi (2005), 3 Comp LJ 364 (Del). Thelle et al. (2014, p. 18). 12 Shreya Singhal v Union of India AIR 2015 SC 1523. For a detailed critique of the amendments to S.79 of the Information Technology and the Supreme Court judgement in the Shreya Singh case, see Prashant Reddy (2019). 11

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the Information Technology Act provides safe harbour status to intermediaries were extensively modified through the issue of the Information Technology (Guidelines for Intermediaries and Digital Media Ethics Code) Rules, 2021 (See Sect. 11.7.3). These do not have a bearing on liability relating to infringement of copyright and related rights. The 2012 amendment of the Copyright Act introduced specific provisions (Sections 52 (1)(b) and 52(1)(c)) to deal with the liability of intermediaries. Subject to the conditions stipulated, “transient or incidental storage of work for electronic transmission/providing electronic links/access” was declared to be not constituting copyright infringement. This was subject to the transmitter/communicator of such work not having grounds to believe that the work being transmitted was an infringing copy. Furthermore, if the transmitter of the work received any intimation/knowledge of infringement from the owner of copyright of the work being transmitted, then the transmitter should stop the transmission/access/communication of such work to public. If the copyright owner did not produce a restraining order from a competent court before the expiry of 21 days from the date of such intimation, the work could then be reinstated/continued to be transmitted/communicated to public. These provisions are required to be read in conjunction with Rule 75 of the Copyright Rules, 2013, which lay down the details that ought to be included in a copyright infringement intimation filed with an intermediary. These include providing an undertaking of filing a copyright infringement suit against the person responsible for uploading the infringing copy and providing the intermediary with a copy of an order passed by a competent court in this regard. The intermediary, if satisfied with the case made out in the complaint, is obliged to take down such infringing content within 36 hours of receiving the complaint. The Copyright Rules, 2013, allowed the intermediary to exercise its discretion in removing access/transmission of a work on the basis of a complaint received from the copyright owner. Compared to S.512 of DMCA or Articles 12–15 of EU’s E-Commerce Directive, the ‘notice and take down’ regime of the 2012 Act and the related rules is more restrictive in that the rightsholder is expected to secure a restraining order from a competent court within 21 days of intimation to the intermediary; if he fails to do so without which the intermediary is at liberty to reinstate/continue to transmit/communicate to public the relevant work. The 2012 Act also transposed into Indian copyright law (i) the provisions of the Internet Treaties regarding rights management information, (ii) the provisions of the WPPT relating to the economic and moral rights of performers and (iii) amended the definition of communication to the public so as to cover performances. Since the enactment of the 2012 Act, there had been far-reaching change in the Indian digital landscape. Thus, the title of the FICCI-KPMG Report of the Indian media and entertainment industry in 2012 was ‘Digital Dawn-The Metamorphosis Begins’.13 Since then, the metamorphosis had come a long way, the Indian music market being a good example. In the last few years, the growth of the Indian music market is driven by digital music platforms, and digital content consumption, including online music, is the largest contributor to the overall growth and revenues 13

KPMG (2012).

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of the music industry; the listeners’ music preferences “are no more dictated by what is played on the TV and radio and are no more restricted to Bollywood14 anymore”, and there has been “a surge in demand for non-Bollywood genre of music including regional, spiritual, Indian rap, International etc.”15 Back in 2012, officials of MHRD could confidently assert in the Parliamentary Standing Committee that India was yet to face major problems of circumvention due to low level of penetration of digital technology; they can now no longer claim so. As of December 2019, urban India’s Internet penetration was 106% as compared to rural India’s 30%, and Internet penetration even in rural India grew at about 26% in the twelve-month period ending December 2019; the Indian music market of 2021 is a world far different from that of 2012. The million-dollar question is whether the anticircumvention provisions designed for a country with a low Internet penetration are relevant in today’s music and film markets. The same question can be posed in respect of the safe harbour provisions for intermediaries. KPMG’s India Media and Entertainment Report, 2020, observed that “certain user engagement applications had unlicensed music available on their platforms”, and such platforms had been claiming “shelter under the ‘safe harbour provisions’ …in order to protect themselves from liabilities”.16 In October 2020, the Registrar of Copyright began a process of consultations with copyright industries and academics to elicit their views on the question whether the copyright law needed any changes in view of the fact that “the COVID-19 pandemic has changed our way of living and working”, and that “the copyright industries are performing and evolving in the light of changes brought about by use of Internet, digitalization and an increasingly globalized market for digital content”.17 The consultation is timely; it is to be seen whether the copyright law would be amended, and if so to what extent the amendment would address the problem of circumvention arising from deeper penetration of high-speed Internet and the steep increase in the consumption of digitalised content in absolute and relative terms.

7.4 Orphan Works and Print Disabled Before moving on, it should be mentioned that the 2012 Act also addressed the problem of orphan works (that is to say works which are protected but whose copyright holder cannot be traced with the result that access to such works is effectively barred) as well as the special needs of the print disabled. India was ahead of both EU and the U.S. in addressing the orphan work problem; S.31A introduced by the 2012 Act lays down the procedure for securing a compulsory licence for the use of

14

Hindi films which are almost wholly produced in Bombay which is now called Mumbai. KPMG (2019, pp. 132–133). 16 KPMG (2020, p. 172). 17 Deep (2020). It would appear that the government is having second thoughts on revising the Copyright Act. 15

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an orphan work.18 As the copyright holder of orphan works cannot be traced, anyone using an orphan work runs the risk that the copyright owner may turn up and bring an infringement suit for substantial damages. Those who are proponents of public domain in the U.S. argue that the problem can be resolved if formalities are reinstated, and unreasonably longer terms of protection rolled back so that many more works move from private copyrighted property to public domain from where works can be used without having to seek anyone’s permission. The EU and some of its Member States like France, Germany and Hungary, and countries like Canada, India, Japan, the Republic of Korea addressed the orphan works problem either through a statutory exception or through a licensing scheme.19 It is appurtenant to mention that in the U.S., there is no law covering all types of orphan works even though the Copyright Office conducted a study of orphan works in 2006,20 and since 2006, various bills were introduced in the U.S. Congress to address the orphan works. The Music Modernization Act, 2018, established a framework for only orphan work sound recording.21 The orphan works problem had been described “the starkest failure of the copyright framework to adapt”,22 leading to all round frustration.23 The 2012 Act also introduced an exception under S.52 (1) (zb) for the benefit of persons with print disabilities, at a time when the Marrakesh Treaty (2013) was still being negotiated, and it was not certain that the Marrakesh Treaty would go through.

7.5 Policy Entrepreneurship of Javed Akhtar: Bonanza for Lyric Composers and Music Composers The Copyright Amendment Bill was, figuratively, a X-mas gift to authors of lyrics and music composers whose works are included in a sound recording or a cinematographic work, and that gift figuratively “led to a virtual civil war within the music and film industries”24 for the gift overturned the business practice prevailing for decades ever since commercial production of sound recordings and films began in India. No less transformative was the proposal to declare the director of a cinematographic work as the first joint owner of copyright (along with the producer) in a cinematographic work. The civil war exclusively dominated the policy process and politics of the 2010 Bill for, as mentioned above, even by 2012, India was yet to face major

18

S.31A came into effect on 21 June 2012 while the EU Directive on Orphan Works (2012) was issued only on 25 October 2012 and the U.S. has as yet no law covering all types of orphan works. 19 U.S. Copyright Office (2015, pp. 18–32 and Appendix E). 20 U.S. Copyright Office (2006); also see Hansen et al. (2013). 21 Hickey (2018). 22 Hargreaves Study (2011, paragraph 3.51, p. 38). 23 Ginsburg (2008a, p. 1). 24 ‘Final Act? (2011).

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problems of circumvention due to low level of penetration of digital technology,25 and that being so, policy conflicts over the digital agenda which dominated the transposition of the Internet Treaties into the legislations of the U.S., the EU and some of its Member States and Canada were conspicuous by their absence in India. The changes in the copyright law relating to sound recordings and cinematographic works brought about by the 2012 Act overturned the film industry’s production relations prevailing for decades ever since commercial production of sound recordings and films began in India. Those changes are a splendid example of the role policy entrepreneurs can play in decisively shaping policy change. It would be fair to say that but for the policy entrepreneurship of Javed Akhtar, noted lyricist, these changes would not have come about, at least so soon.26 His policy activism can be traced to the proximate event of his losing rather badly a copyright infringement suit he filed against Magic Mantra Vision, a Bollywood film producer, for assigning to Saregama, a recording company, rights he purportedly had not assigned in his contract with the film producer. When confronted with seemingly irrefutable evidence, Akhtar withdrew the suit and had to pay the fine inflicted by the court for causing hardship to the defendant. Then 2008, the year in which he lost the suit, was an opportune moment to lobby the government for a new Copyright Amendment Bill was being prepared. As if to prove the contingent nature of history, Kapil Sibal was appointed Minister of MHRD in May 2009 and Akhtar was nominated to the Rajya Sabha in November 2009. Kapil Sibal was an unusual Minister who “brought to bear on his job the distinctive traits instilled by a good American graduate legal education: solid professionalism, showmanship, an indomitable spirit of can-do, and hyper-aggressive combativeness” and a determination to bring about far-reaching reforms in the education system. Soon after he assumed charge, he announced a bold 100-Day Action Plan that sought to transform the education system in 2009 the way the economy was transformed in 1991.27 Akhtar could not have had a more receptive Minister than Sibal. Akhtar fully made use of his privileged position as a Member of the Parliament to lobby everyone who mattered in changing the copyright law and enlisted the support of fellow authors (lyric writers and music composers) whose works are indispensable for the production of sound recordings and film music.28 Thus, music legends such as Ravi Shankar, Shivkumar Sharma, Hariprasad Chaurasia, Jasraj, Shubha Mudgal, Jagjit Singh and Ustad Amjad Ali Khan wrote to the Prime Minister and important ministers and political leaders, seeking protection of their rights against ‘predatory music companies’ by making them non-assignable.29

25

Rajya Sabha Standing Committee Report (2010, paragraph 20.7), Part XX ‘Clause 36: Section 65 A: Protection of Technological Measures’. 26 For a detailed and insightful account of the policy entrepreneurship of Javed Akhtar, see Prashant Reddy (2012); Chandrashekaran and Prashant Reddy (2017, pp. 184–215). 27 Ayyar (2017, p. 437). Copyright was in the remit of the Department of Education, a constituent of MHRD. 28 Joshi (2011, p. 23). 29 Joshi (2011, pp. 22–23).

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Back in 2010 when the Copyright (Amendment) Bill was introduced in the Rajya Sabha, the Indian music industry had two distinct features. First, film music (both Hindi and other Indian language film music) continued to be the mainstay of the music industry, contributing approximately 70% to the industry’s revenues. Secondly, unlike in Western countries, there had been no music publishing companies. Commercial exploitation of any music content requires clearance of two types of rights— publishing rights (the rights of the authors of the lyrics and music composers) and master rights (sound recording rights). In the international music industry, record labels do not generally own publishing rights to music content; they only produce, and market recorded music. The music publishing companies “act as a conduit to efficiently connect licensees (artists, record labels, distributors, music services) with licensors (music composers and songwriters)”. Their role “ranges from making the artists’ composition available nationally and internationally, administering the recorded catalogues on behalf of the owners, and managing the licenses” to maintaining cue, sheets and Metadata which are very important to claim royalties from film or TV producers”.30 In India, music companies combine the functions of music publishing and recording labels in respect of non-film music. As far as film music is concerned, the producer of a film hires the director, scriptwriter, lyrics writer, music director and technical staff. Through his contracts with them, the producer acquires all the rights—rights of the lyric writer, music composer and performers for a lump sum. The marketing of the sound recordings is usually entrusted to a music company by a film producer who assigned all his rights in the sounding recordings to that music company through a contract and payment of a lump sum fees. There is substantial market concentration in the music market, and a few firms like T-Series, Sony Music, Zee Music, Saregama, Tips and Times Music have enormous market power. As was customary in countries with a ‘Copyright’ system like the United Kingdom (before its copyright law was harmonised with the EC Rental Rights Directive, 2012) and the U.S., S.17 of the Indian Copyright Act, 1958, vested the first ownership of copyright in the producer of the film or sound recording. The provision in the Copyright Act was reinforced by a much questioned judgement of the Supreme Court in the Indian Performing Rights Society case31 wherein the Court laid down that no copyright subsisted in the lyric or music composed for a film unless there was a contract to the contrary, and that the producer of the film was the owner of all rights not only in the cinematographic work but also lyrics and musical compositions incorporated in the film. Consequently, unless an author or performer was a celebrity his bargaining power vis a vis the film producer was rather low. Similarly, excepting for big and well-established film producers, the bargaining power of a film producer vis a vis that of a music company was rather low. These production relations began to be questioned with the expansion and diversification of the music market. Thus, ‘consumption’ of music at public places such as clubs, restaurants came to be an important source of revenue; in 2011, sale of public performance rights witnessed a 30

KPMG (2012, pp. 125–126). Indian Performing Rights Society vs. Eastern India Motion Pictures Association (AIR 1977 SC 1443).

31

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strong growth of nearly 20%, on a year-to-year basis; similarly, there was increased traction in live performances coupled with an increase in audience base and price of tickets.32 With the advent of new technologies, new modes of exploitation of sound recordings and films and new modes of broadcasting had emerged. Well-known lyricists and music composers were keen to tap these new sources of revenue and began to insist that in the their contracts with film producers, they would assign only synchronisation right to film producers, that is to say, the right to use the lyric and music along with the film, but retained all remaining rights such as the right of public performance in live events, playing of the recorded music in restaurants and the right of reproduction in ringtones for mobile phones. Similarly, well-known authors and performers of non-film music began to insist that they would assign only the right of fixation to the music companies retaining their other rights. Further, the new modes of exploitation generated windfall incomes to producers of old sound recordings and old films as they entered into contracts with authors and performers and produced the works at a time when the new modes of exploitation were not even imaginable. Similarly, broadcasting organisations had a windfall income in case of old sound recordings and old films as the rights they acquired for broadcasting were through old contracts entered into at a time when new modes of broadcasting were not foreseen. Lyric writers and music composers began to demand renegotiation of old contracts and a share in the windfall income; however, their demands went nowhere because of their contracts through which they parted with all their rights for a lump sum payment of money. To compound their resentment against the copyright system lyric writers and music composers were unhappy with the IPRS, a collective copyright management society founded in 1969 by a group of film producers and musicians with the objective of collectively enforcing their copyrights; over time, music companies became dominant in IPRS in view of the practice in the film industry for producers to assign their rights in film songs to music companies, and lyric writers and music composers began to feel that their interests were being given short shrift by the IPRS management which was dominated by music companies. As a result of the lobbying by Akhtar, the 2010 Copyright Amendment Bill introduced three special provisions in respect of lyric writers and music composers in S.18 of the Copyright Act dealing with assignment of copyright. The first of these special provisions constricts the legal ability of an author to assign his rights in respect of any medium or mode of exploitation of the work which does not exist or is not in commercial use at the time when the assignment is made, unless the assignment specifically referred to such medium or mode of exploitation of the work. The way it is drafted, the provision applies to all authors and not limited to lyric writers and music composers. The second was that an author of a literary or musical work incorporated in a film shall not waive or assign his right to receive royalties for the utilisation of his work in any form other than exhibition to the public of the film in a cinema hall, except to his legal heirs or to a collection society for collection and distribution; any contract to the contrary would be void. The third was a similar provision in respect of a sound recording not becoming part of a film. The second 32

KPMG (2012, p. 119).

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and third provisions specified that lyric writers and music composers would receive royalty on an equal basis with the assignee of copyright (e.g., film producer in respect of a film and a music company in respect of a sound recording which is not part of a film). To put matters beyond doubt, S.17 was amended so as to make it clear that the entitlement of the producer to be the first owner of the copyright in a film would in no way affect the rights of authors in the works incorporated in a film to receive royalty in terms of S.18; further, the entitlement of authors to receive royalty in terms of S.18 would not be affected even if the relationship of the authors and the producer of a film is that of employees and employer. In other words, a statutory remuneration (royalty) right was conferred on lyric writers and music composers. One of the objectives of the 2010 Bill was to ensure that copyright societies were administered by the authors instead of copyright owners, and accordingly, amendments were proposed to Sections 33, 34 and 35 of the Copyright Act. In effect, the administration of IPRs was proposed to be wrested from music companies and handed over to lyric writers and music composers. Except this amendment, all other proposals were approved by the Parliamentary Standing Committee. In fact, so effective was Akhtar’s lobbying that the Committee touched up the language of the provisions it approved in a way that suited the interests of lyric writers and music composers better than the Bill. The Bill also proposed to declare a cinematographic work as a joint work and treat the principal director a co-author of that work along with the producer; this proposal was not acceptable to the Parliamentary Standing Committee. Turning to the deliberation of the Parliamentary Standing Committee where the conflicting interest groups put forth their points of view, the proposal to treat the principal director as author was strongly opposed by associations of film producers such as the Film and Television Producers Guild of India, the Indian Motion Picture Producers Association and the South Indian Film Chamber of Commerce. The proposal was also opposed by associations of ‘users’ like the Indian Reprographic Rights Organisation and the Indian Broadcasting Foundation. The ‘users’ were worried that the amendment would necessitate negotiation of assignment/licensing contracts with both the producer and principal director of a movie, thereby making procurement of the rights to use a cumbersome and costly affair. The principal director may choose to assign his rights to a person different from the one chosen by the producers. The proposal to declare the principal director did not pass muster with the Parliamentary Standing Committee; one of the reasons was that none of the international treaties such as the Rome Convention and the Internet Treaties stipulate that the principal director should be treated as author. The Committee waxed eloquent about the producer being “the kingpin who invests substantive money, raises finance through institution, utilizes persons/expertise and brings out a product i.e., film… takes such initiative and responsibility for making the work and chooses the director on certain offer”. A director, no doubt, plays a major role in the making of a film, but it is “in co-ordination with the producer only”, and “in the film industry today, directors are getting huge money as fee under a mutual contract drawn with the producer without any pressure whatsoever, leaving no cause for marginalization”.33 33

Rajya Sabha Standing Committee Report (2010, paragraphs 3.1–3.11).

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The amendments to S.18 relating to the assignment of copyright by authors was also a highly contentious issue with associations of producers of film and sound recordings and broadcasting organisations being arrayed against lyricists, authors, music composers and artists working both inside and outside the Indian film.34 Film producers argued, inter alia, that in a world where technology was rapidly changing, it was unfair to the producers to have such limited assignment/licence rights. A particular medium of use/mode of exploitation might last for a short period, and every time a new technology and medium of use/mode of exploitation appears, the producer would have to renegotiate the contract even before it is clear how the technology would evolve and impact on the exploitation of a film or sound recording. Far from strengthening the bargaining power of author and enhancing the returns to authors, the new provision would prevent authors from monetising their rights as restrictions on assignment would adversely affect the author’s commercial bargaining power with the producers. However, the Committee chose to go by the views of authors. In doing so,35 the Committee noted that the bundle of copyrights encompassed by film copyright comprised (i) the synchronisation right (the right arising from the synchronisation of a song or music with a film, video, television programme and so on), (ii) the performing rights (right to perform music in public specially in broadcasting (TV/radio), restaurants, airlines, auditoriums or public functions) and (iii) the mechanical reproduction right (entitling the payment of royalty to a song writer whenever a copy of one of his songs is made). The film producer was entitled only to the synchronisation right. Performing right and mechanical reproduction right were rights independent of the synchronisation right, and they rightfully belong to the authors of the lyrics and musical compositions. Yet, by virtue of the judgement of the Supreme Court in Indian Performing Rights Society, film producers and music companies were wrongly appropriating to themselves the independent performing and mechanical reproduction rights of authors of literary and musical works in cinematograph works. No doubt, that judgement held that film producer was the first owner of the copyright, and that authors and music composers do not have any separate right. However, Justice Krishna Iyer made an obiter in the same judgement that “the authors and music composers who are left in the cold in the penumbral area of policy should be given justice by recognizing their rights when their works are used commercially separately from cinematograph film and the legislature should do something to help them”, and that observation had been lost sight of. It took more than thirty years for the government to act on the obiter of Justice Krishna Iyer; hence, the proposal was long overdue. The Committee’s conclusions in regard to treating the principal director as co-author of a film and conferring a royalty right on authors of lyrics and musical compositions are inconsistent. The grounds on which proposal to treat the principal director of a film as a co-author were rejected apply, more or less, in respect of the proposal to vest the lyric writers and music composers with a non-waivable statutory remuneration right. No international treaty calls for such as right being vested in authors of lyrics and music compositions. The argument of 34 35

Rajya Sabha Standing Committee Report (2010, paragraph 9.2). Rajya Sabha Standing Committee Report (2010, paragraphs 9.12–9.20).

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Aamir Khan, a noted producer-cum-actor is not without merit. He argued in the panel set up by MHRD to discuss the Bill that (i) a film is a collective contribution, a song is not separate from a film and is created from situations in a film that come from the script of the film, (ii) a song is often popular because of the way it is picturised; thus, if the film Kagaz Ke Phool would not have been made, nobody would have heard its famous songs and (iii) the producer should be allowed to first recover his investment, and thereafter, the profits could be shared with the writer, director, music directors, lyricists and others connected with the film.36 The proposal to ensure that copyright societies were administered by the authors instead of copyright owners was strongly opposed in the Committee by everyone except Akhtar. The Committee rejected the proposal on the ground that the complete handover of copyright societies to the authors alone would not be fair and balanced. There was no denying the fact that authors need protection of their rights. However, the way to achieve this protection is not by excluding the owners of rights; so, excluding would be a remedy worse than the malaise. A mechanism needs to be evolved where under both authors and copyright owners are allowed to form and administer the copyright societies with all the members having equal rights and powers. The Committee therefore recommended that the proposed amendments in Sections 33, 34 and 35 may not be carried out. At the same time, the Committee emphasised that composition of the copyright societies should be balanced, with equal rights for all categories of members. The Committee felt that the existing situation in IPRs could easily be handled by invoking the powers under S. 33(4) whereunder the Central Government could cancel the registration of a copyright society if it was satisfied that it was being managed in a manner detrimental to the interests of its members. The Committee also made the very valid point that the functioning collective right administration societies should be streamlined if the full benefits of the amendments were to accrue to the authors.37 The implicit inspiration38 for the amendments excepting that regarding to copyright societies was the EC Rental and Lending Rights Directive, 1992,39 which is rooted not in the ‘Copyright’ system to which the Indian copyright law belongs but the authors’ right system. That directive laid down that the principal director of a cinematographic or audio-visual work shall be considered as its author or one of its authors.40 At the same time, it vests in the performing artists the economic rights of the rights of fixation, the right of reproduction of fixations of the performance and the rights of distribution, rental and lending. The directive also granted to authors and performers an equitable right of remuneration if in case they assign their rental right in respect of a sound recording to the producer of the sound recording or a film song to the film producer; the right to equitable remuneration cannot be waived. It is important to bear in mind that a mandatory equitable right to remuneration (which 36

Aamir Khan (2020). Rajya Sabha Standing Committee Report (2010, paragraphs 16.11–16.13). 38 Prashant Reddy (2012, p. 515), Chandrashekaran and Prashant Reddy (2017, p. 197). 39 EC Rental and Lending Directive (1992). 40 Article 2(1) of the EC Term of Protection Directive (1993) is a similar provision. 37

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cannot be waived) applies only to rental right and no other right. To elaborate a little, after the EC Directive was transposed into the U.K. copyright law in 1994, a film is treated as a work of joint authorship (that is to say, a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors), and the producer and principal director are declared to be joint authors. Before that transposition, the author of a film, as in other countries with a ‘Copyright’ system, was “the person by whom the arrangements necessary for the making of the film were undertaken”, that is to say, the producer. During the process of transposing the directive, representatives of screenwriters in the United Kingdom lobbied for going beyond the directive and recognising authorial rights in the form of a more general right to equitable remuneration. On the other hand, film producers strongly opposed the authorial rights provisions of the directive as they feared that giving a copyright interest to directors or other artistic personnel would lead to a siphoning off of the revenues before net profits are reached and discourage investment in the European film industry. Eventually, the United Kingdom and Ireland implemented only the minimum level of authorial rights required under the directive, that is the right of remuneration for rental of a film. Remuneration is otherwise left for the parties to negotiate and decide, and courts have no power to re-evaluate the agreed remuneration. Further, a statutory presumption of assignment of copyright to the film producer applies only to the rental right. The assignment of all other rights has to be negotiated.41 Suffice to say, the 2010 Bill went beyond even the EC Directive in proposing to confer on lyric writers and music composers a statutory across- the-board remuneration right which cannot be waived. To locate such a right in copyright laws of the world, one has to look to the copyright laws of some countries with an author’s right system. It is no doubt true that the Indian copyright law incorporated some of the features of the authors’ right system such as doing away of formalities as a condition for acquiring copyright, longer and longer duration of copyright moral rights and resale right for art (droit de suite). However, such incorporation was only after those features were incorporated in the Berne Convention. Prior to the Copyright (Amendment) Act, 2012, Indian copyright law never directly incorporated any feature of the authors’ right system without that feature being incorporated in the Berne Convention. Against this backdrop, the resentment of film producers and music companied with the proposed amendments is understandable. Apurv Nagpal, CEO of Saregama, was reported to have asked, ‘How can the law become Big Brother?’ and went on to say that the government had no business involving itself in contracts between two independent parties. In an interview, producer Mukesh Bhatt was reported to demanded to have asked the government to answer his two questions: “don’t I have the fundamental right to make a contract and decide on the percentage I want to give?” and “How can you take away my right from me?”.42 That Akhtar could pull off a coup in the face of strong opposition from film producers and music companies as well as the conceptual underpinnings of Indian 41 42

Kamina (2002, pp. 182–183, 199. Also see Reinbothe and von Lewinski (1993, p. 18). Bhatia (2011).

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copyright law brings out the effectiveness of his lobbying. In spite of strong opposition from film producers and music companies in the Parliamentary Standing Committee, he could realise all his objectives excepting the demand that only authors manage copyright societies. The effectiveness of his lobbying also comes out from the fact that Parliamentary Standing Committee rejected the proposal of the government to declare a cinematographic work as a work of joint authorship and declare the principal director as one of the two co-authors of a cinematographic work, the other being the producer. Unequal bargaining power is not unique to the film industry; it exists in the contractual relationship between a writer and a book publisher, and yet the privileges extended to the authors of works incorporated in a film or sound recording were not extended to all authors. Suffice to say, the title of the article, ‘Akhtar Rescripts Indian Copyright’, by Sumati Chandrasekharan and Prashant Reddy is very apt. Even so, the role of the hero in history is likely to be exaggerated; it is fair to surmise that Akhtar would not have succeeded if India were like United Kingdom. The fact remains that even after over thirty years of India beginning to open up the economy, the vocabulary of political discourse is profoundly anti-Capital and State intervention not an exception. Given the prevailing political culture, the result was perhaps predestined when an issue of copyright was framed as one of ‘small guys’ versus predatory music companies and wealthy film producers. The way amendments to S.18 is a good example of the paradoxical axiom of Nobel laureate Thomas Schelling that “the power to constrain an adversary may depend on the power to bind oneself; that, in bargaining, weakness is often strength, freedom may be freedom to capitulate, and to burn bridges behind one may suffice to undo an opponent”.43 A party to negotiation who tries to push his weak counterpart with little flexibility to the wall may fail to secure any agreement.44 Not having a right a transfer all their rights in one go for a lump sum amount is a source of strength for lyrics writers and music composers. Did these amendments make any difference to the practices of the film and music industries? That is an interesting question to explore, for otherwise the saga of the amendments brought out by the 2012 Act in respect of copyright in cinematographic works and sound recordings would be no more than ‘a tale told by an idiot, full of sound and fury’. To my knowledge, as yet there is no study based on empirical observations of (i) how the film and music industries responded to the amendments, (ii) whether the practices of the two industries did change, and if so, what were the changes and (iii) the impact of the changes on the fortunes of the film and music recording companies and the economic wellbeing of authors. Writing in 2017, Sumathi Chandrasekharan and Prasanth Reddy observed that “more than four years after the amendments to the Copyright Act, there have been few changes in the manner in which the music industry functions”, and that “the key roadblock for the authors is that they still lack an effective copyright society which will protect their rights”.45 Writing again in 2017, Cherie Hu noted that the amendments do not 43

Schelling (1956, p. 282). For examples of the use of Schelling’s axiom in negotiations with the World Bank, see Ayyar (2016, pp. 349–350, 359). 45 Chandrashekaran and Prashant Reddy (2017, p. 208). 44

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seem to have impacted dominant industry practices; Hindi film composers themselves embrace monopolistic practices, treating their business as a zero-sum game. She quoted Pritam, a prolific Hindi film music, as saying he “won’t be in a happy space” if he ever had to share soundtrack credits with other composers.46 There is some contrary anecdotal evidence. In March 2017, the legendary music composer of Tamil Cinema Ilaiyaraaja served a legal notice on South Indian cinema singer S. P. Balasubrahmanyam (SPB) forbidding SPB from performing his music compositions in live concerts during the last leg of SPB’s grand world tour without his authorisation. Eventually, Illaiyaraaja and SPB, who otherwise were long-standing associates, settled the dispute by SPB paying a token amount. This was not the first time that Ilaiyaraaja was involved in a copyright claim battle. In 2015, the Madras High Court gave an injunction against four music companies from monetising the composer’s works as Ilaiyaraaja claimed that his contracts with the companies were no more valid as the period covered by contracts was five years only.47 Whether small lyric writers and music composers would follow the lead of legends like Ilaiyaraaja or whether they would not dare to take on the industry for fear of losing future opportunities is a million-dollar question.

Bibliography A. Articles and Books Aamir Khan. (2020, February 21). Songs are part of the script, not separate from the film. Interview with Aamir Khan. Times of India. Advani, P. R. (2013). Intermediary liability in India. Economic and Political Weekly, 48(50), 120– 128. Analysis of Amendments to Indian Copyright Act (1994). Available at https://naarm.org.in/Virtua lLearning/vlc/IPR/Acts2004/copyright/Analysis_of_copyright_amendments.pdf. Last Accessed on September 28, 2022. Arun, C. (2014). Gatekeeper liability and article 19(1)(A) of the constitution of India. NUJS Law Review, 73, 73–87. Ashok, A. (2012). Technology protection measures and the Indian copyright (Amendment) act, 2012: A comment. Journal of Intellectual Property Rights, 17, 521–531. Ayyar. V. R. V. (2016). The holy grail: India’s quest for universal elementary education. Oxford University Press Ayyar, V. R. V. (2017). History of education policymaking in India, 1947–2016. Oxford University Press. Ayyar, R. V. V. (2021). Present at creation: The making of WIPO internet treaties, 1996. Can be accessed at https://rvvayyar.com/ Bhat, I. H. (2013). Technological protection measures under copyright law. International Journal of Emerging Trends and Technology in Computer Science, 2(2), 319–326. Bhatia, R. (2011, March 18). The quiet royalties heist. Open.

46 47

Hu (2017). ‘What the Spat between Ilaiyaraaja and SPB is Really About?’ (2017).

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Chandrashekaran, S., & Prashant Reddy, T. (2017). Create, copy, disrupt: India’s Intellectual property dilemmas (pp. 184–215). Oxford University Press. Chowdhury, A. R. (2007). Future of copyright in India. In British and Irish Law, Education and Technology Associates, Annual Conference, 16–17 April 2007. Available at https://www.bileta. org.uk/wp-content/uploads/The-future-of-copyright-in-India.pdf. Last Accessed on September 29, 2022. Deep, A. (2020, October 27). Government starts private consultation to amend copyright act. Mediamania. Final Act? (2011). Sound Box, 1(7). Ginsburg J. C. (2008a). Recent developments in US copyright law: Part I—‘orphan’ works. Columbia Public Law Research Paper No. 08–183. Gupta, A. (2007). Liability of intermediaries in India—From troubled waters to safe harbours. Computer and Telecommunications Law Review, 13, 60–65. Hansen, D. R., Hashimoto, K., Hinze, G., Samuelson, P., & Urban, J. M. (2013). Solving the orphan works problem for the United States. Columbia Journal of Law and the Arts, 37(1), 1–55. Hu, Cherie. (2017, September 23). How India, the global music industry’s sleeping giant, is finally waking up. Forbes. Joshi, A. (2011). Yeh Kaam to Hona Hai!. Interview with Javed Akhtar. Sound Box, 1(8), 20–24. Kamina, P. (2002). Film copyright in the European Union. Cambridge University Press. KPMG. (2012). Digital dawn: The metamorphosis begins, India’s media and entertainment report. KPMG. 2019. India’s digital future: Mass of Niches, India’s media and entertainment report. KPMG. (2020). A year off script: Time for resilience, India’s media and entertainment report. Nadkarni, Nishad, Sourav Dev and Udita Kanwar (23 April 2020). The conundrum of intermediary liability in the last decade. Mondaq. Available at https://www.mondaq.com/india/trademark/921 920/the-conundrum-of-intermediary-liability-in-the-last-decade. Prashant Reddy, T. (2012). The background score to the copyright (Amendment) act, 2012. NUJS Law Review, 5, 469–527. Prashant Reddy, T. (2019). Back to the drawing board: What should be the new direction of the intermediary liability law? NLU-D Journal of Legal Studies, 1, 38–60. Reinbothe, J., & von Lewinski, S. (1993). The EC directive on rental and lending rights and on piracy. Sweet and Maxwell. Sagar, J. (2015). Copyright: An Indian perspective. In J. Watal & A. Taubman (Eds.), The making of the TRIPS agreement: Personal insights from the Uruguay round (pp. 341–350). WTO. Schelling, T. C. (1956). An essay on bargaining. American Economic Review, 46(3), 281–306. Sivakumar, S., & Lukose, L. P. (2013). Copyright amendment act, 2012. Indian Law Institute, 55(2), 149–174. Thelle, M. H., Wilk, J.-M., Basalisco, B., & Nielsen, K. E. (2014). Closing the gap–Indian online intermediaries and a liability system not yet fit for purpose. Copenhagen Economics, prepared on behalf of the Global Network Initiativer. Available at https://www.copenhageneconomics.com/dyn/resources/Publication/publicationPDF/1/ 251/0/Closing%20the%20Gap%20-%20Copenhagen%20Economics_March%202014.pdf. Last Accessed on September 28, 2022. Thomas, Z. (2012). Overview of changes to Indian copyright law. Journal of Intellectual Property, 17, 324–334. Vaish, V. (2011). Copyright in its global context: Canada’s approach to bill C-32: India’s lesson in ‘What Not to Do’. NALSAR Student Law Review, 109–127. ‘What the Spat between Ilaiyaraaja and SPB is Really About?’ The Hindu, March 26, 2017.

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B. Official Documents I. Cases: India Avnish Bajaj v. NCT of Delhi (2005), 3 Comp LJ 364 (Del). Indian Performing Rights Society vs. Eastern India Motion Pictures Association (AIR 1977 SC 1443). Shreya Singhal v Union of India AIR 2015 SC 1523.

II. Government Documents India 2005 Proposals to Amend Indian Copyright Act, 2005. Used to be available at https://copyright. gov.in/View%20Comments.pdf 2010 The Copyright (Amendment) Bill, 2010. 2010 Rajya Sabha Standing Committee Report: Rajya Sabha. (2012). Department—Related Parliamentary Standing Committee on Human Resource Development. Two Hundred Twenty-Seventh Report on the Copyright (Amendment) Bill, 2010. 2012 The Copyright (Amendment) Act, 2012.

European Commission/European Union EC Rental and Lending Directive. (1992). Council Directive 92/100/EEC of 19 November 1992 on Rental Right and Lending Right and on Certain Rights Related to Copyright in the Field of Intellectual Property. EC Term of Protection Directive. (1993). Council Directive 93/98/EEC of 29 October 1993 Harmonizing the Term of Protection of Copyright and Certain Related Rights. EU Directive on Orphan Works. (2012). Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on Certain Permitted Uses of Orphan Works.

United Kingdom 2011 Hargreaves Study. (2011). Hargreaves, Ian. Digital Opportunity: A Review of Intellectual Property and Growth. A Study Commissioned by the British Government, 2011.

United States 2006 U.S. Copyright Office. (2006). Report on orphan works, January 2006. 2015 U.S. Copyright Office. (2015). Orphan works and mass digitization, June 2015.

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World Intellectual Property Organisation (WIPO) 1996 Final Text of WCT and WPPT WCT: CRNR/DC/94 dated December 23, 1996. Available at https://www.wipo.int/edocs/mdocs/ diplconf/en/crnr_dc/crnr_dc_94.pdf WPPT: CRNR/DC/95 dated December 23, 1996. Available at https://www.wipo.int/edocs/mdocs/ diplconf/en/crnr_dc/crnr_dc_95.pdf

Chapter 8

The Romance of the Public Domain

Abstract This Chapter describes how in late 1990s, a narrative centred around public domain began to be constructed as a response to the perceived ‘overreach’ of copyright laws and how public domain came to be “the cause célèbre among progressive intellectual property and cyberlaw scholars”. The new narrative sought to highlight the value of public domain by contrasting the artificial constructs of originality and authorship embedded in the copyright doctrine with the actual process of creation of works. The rise of postmodern notions of authorship, appropriation art and environmental movement reinforced the conceptual challenge to copyright doctrine. Public domain was a knowledge/cultural common which had been continually shrinking to the detriment of public interest due to expansion in the scope of copyright and the continual increase in the duration of protection. The Chapter outlines the judicial challenge to the Sonny Bono Copyright Term Extension Act (CTEA) which gratuitously extended the term of protection by twenty years and describes how that challenge though unsuccessful impacted on public opinion. The Chapter describes the spread of the public domain creed to the European heartland of the droit d-auteur system; it ends with a critique of the romanticisation of the public domain.

8.1 Copyright Overreach In late 1990s, a narrative centred around public domain began to be constructed as a response to the perceived ‘overreach’ of copyright laws such as the DMCA and the Sonny Bono Copyright Term Extension Act,1 both of which were enacted in 1998, an annus horribilis for those who believed that at the behest of the content industries, Congress was recklessly expanding copyright. Public domain came to be 1

The Act was named for Musician Sonny Bono who was its original sponsor who died in a skiing accident that year. The Act is popularly known as the Sonny Bono Act, or derisively the Mickey Mouse Protection Act as the Walt Disney Company lobbied for the copyright extension and the Sonny Bono Act delayed the entry into the public domain of the earliest Mickey Mouse movies by twenty years.

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_8

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“idealized… as a Lost Eden”,2 and a crusade of sorts launched to restore the Lost Garden. Historically, “public domain had been rather neglected in the intellectual property regime and discourse”,3 as none of the content in public domain had any relevance for copyright. It was the “the ‘negative’ of whatever may be protected… the sum total of what is left over after protected works are accounted for and therefore not really capable of serving as a public policy or legal principle with a life of its own”.4 The public domain acquires value only when it is conceptualised in a positive way rather than as a negation of something.5 That was what David Lange attempted to do in his 1981 article. However, the import of Lange’s article was ahead of its time and consequently the article “sunk without a trace”.6

8.2 Creativity in Actuality and in Copyright Doctrine The linkage between public domain and the actual process of creating works was brilliantly and vividly brought out in her 1990 article by Jessica Litman; she claimed that “the very act of authorship in any medium is more akin to translation and recombination than it is to creating Aphrodite from the foam of the sea” (italics in original). She pointed out that “composers recombine sounds they have heard before; playwrights base their characters on bits and pieces drawn from real human beings and other playwrights’ characters”. This act of drawing upon the work of any other and creating another work “is not parasitism”; it is the “essence of authorship”, and “in the absence of a vigorous public domain, much of it would be illegal”.7 Literary and artistic history provides any number of examples in support of the process of literary and artistic creation put forth by Litman. Thus, Eliot famously said that “immature poets imitate; mature poets steal; bad poets deface what they take, and good poets make it into something better, or at least something different. The good poet welds his theft into a whole of feeling which is unique, utterly different from that from which it was torn”8 ; Picasso is reported to have said that “good artists copy, great artists steal”.9 In music, Johann Sebastian Bach based his Concerto for Four Harpsichords on Antonio Vivaldi’s Concerto for Four Violins in B Minor; Wolfgang Mozart adapted Joseph Haydn’s work for his Jupiter Symphony, and Ludwig van Beethoven borrowed 2

Bannerman (2009a, p. 169). Dusollier (2015, pp. 105–106). 4 Packard (2002, p. 17). 5 Lange (1981). 6 Bollier (2009, p. 56). 7 Litman (1990, pp. 966–967). 8 Eliot (1932, p. 153); cited in Nimmer (2004, at p. 56, footnote 319). This footnote gives many other examples of authors borrowing from earlier writings. 9 Widely quoted but its authenticity is in doubt. Steve Job, the legendary inventor of Apple fame, is quoted as having said, ‘Picasso had a saying—“good artists copy, great artists steal”—and we have always been shameless about stealing great ideas’. Walter Issacson, Steve Jobs, p. 137. 3

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from French composers Francois-Joseph Gossec and Etienne Mehul. And in films, the Westside Story interpreted Romeo and Juliet, Disney created film versions of tales like Pocahontas, Cinderella and Snow White and the Seven Dwarves.10 Suffice to say, instead of viewing public domain in negative terms, it should be understood as a “device that permits the rest of the system to work by leaving the raw material of authorship available for authors to use”.11 It logically follows that expanding the reach and duration of copyright would impoverish public domain, and thereby undermine creativity. As the scope of copyright and related rights expanded, many works turned out to be collaborative productions, examples being the performance by a symphony orchestra, an opera, a theatre group, a cinematographic work, computer software produced by the open source methods and so on. In all these cases, identifying a single creator would be iniquitous. Even works of a single author might in reality result from collaboration, a classic example being Wasteland by Eliot. Many critics hold the view that it was Ezra Pound’s editing of the manuscript of Eliot’s The Waste Land that contributed to the poem’s becoming a masterpiece of modern poetry. Suffice to say, there is a yawning gap between what authors actually do and how the copyright law perceives them pursuing their craft, and the new narrative of copyright that was being constructed demanded that the copyright law should factor in the actual process of literary and artistic creation lest an artificial construct of authorship and originality should impede creativity, and public domain treated as “a leftover not really capable of serving as a public policy or legal principle with a life of its own”.12 The rise of postmodernism and postmodern appropriation art reinforced the challenge to the praxis of copyright law. To put it simply, postmodernism “rebels against traditional norms of originality, ownership and expression”13 ; it also rebels against the idea that the author is the indispensable source of work and its meaning and holds that ‘author is dead’ and that it is the reader who vests a text with meaning and not the author.14 Postmodern appropriation art puts in practice the rebellion against traditional norms of originality, ownership and expression; appropriation is “the taking over, into a work of art, of a real object or even an existing work of art”15 ; appropriation artists take the copyrighted work of another and place it in a new context with a view to make some social commentary, an example being silk-screening by the famous artist Andy Warhol of copyrighted photographs. Appropriation art had anticipated by over two decades the remix culture that gained prominence and wide popularity among users of Internet after the advent of World Wide Web 2.0 around 2005. Appropriation art faced two problems with copyright law: (i) it was not considered to be original enough to be eligible for copyright protection and (ii) appropriating the work of another and creating a derivative work without the

10

Packard (2002, pp. 25–26). Litman (1990, p. 968). 12 Packard (2002, p. 17). 13 Petruzzelli (1995, p. 115). 14 For an account of postmodern concept of authorship, see Dusollier (2003a, pp. 291–296). 15 Wilson and Lack (2008, pp. 20–21). 11

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permission of the copyright holder resulted in many suits for infringement of copyright. To illustrate, in Rogers v. Koon art photographer Art Rogers sued Jeffy Koons who commissioned a studio in Italy to make four sculptures titled String of Puppies which were almost exact replicas of a photograph of six German Shepherd puppies by Rogers titled Puppies; the defence based on fair use was rejected.16 Based on an analysis of this case, the “the first case to confront the tension that exists between contemporary art and copyright law”,17 Steven Shonack argued that the judgement in the case “presents a serious obstacle to all practitioners of postmodernism”.18 Peter Jaszi went one step ahead and hinted that as copyright theory and doctrine “grew up in conversation with” the dominant modernist worldview, “the legal understanding of copyright should change” with the displacement of the modernist worldview by the postmodern worldview. However, his proposition was not accepted by many copyright experts as “there has been some resistance to claims of cultural influence in the copyright field—at least in the United States”19 ; it was precisely this resistance which Madhavi Sunder assailed in her elaborately reasoned plea for not viewing IP only through the narrow prism of economics and advocated applying social and cultural theories to build up a broader normative purpose for IP.20 However, it is human to have different opinions; Lora Petruzzelli elaborately analysed the conflict between postmodern art and copyright and came to the conclusion that “if the Copyright Act were extended to the outer limits of post-modem art, it could lead to everything being protected art, as in the case of the copyrightability of ideas. Alternatively, it could lead to nothing being protected, as in the case of allowing appropriation artists to steal the work of others [and claiming that in arts what is yours is mine] so long as there is some artistic purpose”.21 Notwithstanding scepticism of copyright experts about postmodern art, willy-nilly postmodern cultural attitude seeped into American copyright jurisprudence by way of transformative use. The concept of transformative use was pioneered by Judge Pierre Leval. Leval started with the premise that “all intellectual creative activity is in part derivative”, and that there is no such thing as a wholly original thought or invention, a premise that is central to the public domain movement. In Leval’s conception of transformative use, fair use is a part of the overall design of copyright policy and not “a bizarre, occasionally tolerated departure from the grand conception of the copyright monopoly”.22 In a strict sense, public domain consists only of ideas as well works not or no longer protected by copyright.23 On the border of the public domain are several categories of content that are not public domain in the sense that they are protected 16

Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992). Gayford (1992). 18 Shonack (1994, pp. 328–329). 19 Jaszi (2009, p. 109). 20 Sunder (2006, p. 332). 21 Petruzzelli (1995, p. 145). 22 Leval (1990, pp. 1109, 1111). 23 Samuelson (2003, pp. 148–153). In this article, Samuelson listed thirteen conceptions of public domain she noticed in the literature on public domain. She offered reasons why public domains have 17

8.3 Public Domain: Cultural Commons

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by copyright but are for all practical purposes part of public domain. Some examples are (i) content that is technically protected by copyright law but is widely available to the public such as content posted on publicly accessible websites available to all comers without fee or apparent restrictions on use, (ii) open source software and publications, (iii) a penumbra of privileged uses under fair use, experimental use and other copyright rules that permit unlicensed uses and sharing of information to take place.

8.3 Public Domain: Cultural Commons24 The terms ‘public domain’ and commons are often used together as if there are synonyms; however, there is a fine distinction between the two terms. Public domain is used exclusively in connection with intellectual property; in contrast, there are a variety of commons such as natural resources, genetic resources, cultural resources some of whom like natural resources may have nothing to do with intellectual property. The defining characteristic of a commons is that it is jointly owned but not privately, and that it can be accessed and used by all members of a society which owns the commons. In practice, there is little difference between public domain and cultural commons regarding access and use. Cultural commons differ from natural resource commons in that they are not subject to the famous proposition of the ‘Tragedy of Commons’. The tragedy occurs because what is everybody’s property is nobody’s property, and everyone attempts to maximise his return in the short run rather than attempt to conserve the commons. It is this possibility which underlies the much-cited statement of Jack Valenti of MPPA that “A public domain work is an orphan. No one is responsible for its life. But everyone exploits its use, until that time certain when it becomes soiled and haggard, barren of its previous virtues. Who, then, will invest the funds to renovate and nourish its future life when no one owns it?”25 However, while the tragedy of commons might or might not be true in case of natural resource commons,26 it is not applicable to cultural commons; unlike the proliferated and suggested some commonalities among them as a means of facilitating discourse about them. 24 In literature, the terms ‘information commons’, ‘knowledge commons’ and ‘cultural commons’ are synonyms used interchangeably. Like synonyms, their precise connotation differs. Cultural commons include literature, music, arts, design, film, video, television, radio, information, software and sites of heritage. Knowledge commons refers to information, data, and content that is collectively owned and managed by a community of users. 25 Valenti (1995, p. 42). 26 In her work on commons, Nobel Laureate in Economics Elinor Ostrom established with the help of many examples such as the management of pasture by locals in Africa and irrigation systems management in villages of Western Nepal that the tragedy of commons may be avoided even without propertisation if there are effective institutional arrangements and incentive structures. In the absence of effective communitarian institutional arrangements, the tragedy of commons cannot be avoided. For an overview of the impact of Ostrom’s work (on commons) on general property law and intellectual property, see Rose (2011).

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former which are depletable and rivalrous (many people wish to use a resource to the exclusion of others), cultural resources are non-depletable, non-rivalrous resources. In fact, as would be elaborated below in the context of open source software, online commons even “tend to grow in value as more people participate, provided there is sufficient governance and common technical standards to enable sharing”.27 Viewed from the perspective of how works are actually created, public domain is a rich mine of source material drawn upon by writers and artists to create new works; it is a ‘knowledge commons’ whose enclosure is as ‘iniquitous’ as the enclosure of commons in 18th-century England.28 In a way, the history of copyright is a chronicle of how copyright continually expanded at the expense of public domain29 ; in other words, common property which could be used without seeking anyone’s permission has been progressively turned into private property. Public domain had been continually shrinking due to expansion in the scope of the copyright act, increase in the number of rights in the bundle of copyright, dispensing with formalities like registration of a work and the continual increase in the duration of protection.

8.4 Eldred Challenge to Sonny Bono Act Gives Tremendous Boost to Public Domain In the U.S., public domain would have remained an academic curiosity but for the tremendous boost it received from the Sonny Bono Act which extended the term of protection by another twenty years thereby making the total term of protection author’s life plus seventy years, and the judicial challenge to that Act by Eric Eldred.30 The Sonny Bono Act triggered a revolt of the American academia against a purported thoughtless act of the government and Congress. In the Supreme Court, while only one copyright professor, Edward Samuels, filed an amicus curiae brief31 in favour of the Sonny Bono Act, fifty-three professors of intellectual property, five constitutional law professors and Professor Malla Pollack filed amicus curiae briefs on behalf of Eldred. While these legal scholars questioned the constitutionality of the Act, seventeen economists including Nobel Laureates George A. Akerlof, Kenneth J. Arrow, James M. Buchanan, Ronald H. Coase and Milton Friedman filed an amicus curia brief opposing CTEA on the ground that the extension made no economic sense. They based their reasoning on the ground copyright should not be expanded beyond 27

Bollier (2009, p. 130). See the seminal article of Boyle (2003). This article is in the special issue Law and Contemporary Problems, Volume 66 (Numbers 1 and 2, 2003), which is a compilation of the articles presented at the path-breaking conference on public domain organised at the Duke University in November 2001. See also Boyle (2008). 29 See Lessig (2004, pp. 133–9). 30 For a blow-by-blow account of the Eldred case, see Bollier (2009, pp. 64–83). 31 ‘Legal Documents: Eldred v. Ashcroft’ has a list of the amicus curiae briefs, other legal documents and their web links. 28

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the minimum duration necessary to provide authors with an incentive to create and make their works available to the public because while copyright acts as an incentive, it is also a monopoly conferred on the author or his legal assignee who could prevent others from copying and distributing a work on which they held a monopoly, that like all monopolies copyright would make works costlier than what have been the case without a monopoly. Most of the authors of the works created in 1920s and 1930s would not be alive, and the term extension by twenty years would not act as an incentive but only help the descendants of dead authors to garner monopoly rents.Historians also joined the fray. Even the very few copyright scholars like Arthur Miller and Jane Ginsburg who expressed the view that the Act was not unconstitutional32 thought, it was unwise to extend the term of protection as the Act did. The title of Ginsburg’s article is “How Copyright got a Bad Name for Itself” speaks for itself.33 Public domain entered even popular discourse on copyright in the U.S. because of the extremely media savvy, charismatic public intellectual and highbrow activist Lawrence Lessig who was the attorney for Eldred in Eldred v. Ashcroft. Even though he lost the case, he succeeded in metamorphosing copyright from an arcane subject into a topic which can be covered by newspapers and magazines read by lay readers. Public domain had come to be “the cause célèbre among progressive intellectual property and cyberlaw scholars”,34 and the issues connected with public domain came to be studied in many universities, particularly in Center for the Study of the Public Domain at Duke University, Stanford Center for Internet and Society, the Berkman Center at Harvard University and the American University.

8.5 Spread of the Public Domain Creed to the Heartland of Droit D’auteur The public domain movement spread even to West European countries with an authors’ right system of copyright. In 2007, ‘Communia’, a European thematic network for digital public domain, was established; the Public Domain Manifesto that Communia drew up was translated into twenty European Languages35 and crisply expounded the world view of the public domain movement. The public domain was not a worthless residual but the place where the building blocks of culture are quarried. The Public Domain Manifesto laid down five general principles in regard to content in public domain: (i) the public domain is the rule, copyright protection is the exception, (ii) copyright protection should last only as long as necessary to achieve a reasonable compromise between protecting and rewarding the author for his intellectual labour and safeguarding the public interest in the dissemination of culture and knowledge, (iii) what is in the public domain must remain in the public domain, 32

Ginsburg et al. (2000, pp. 686–704). Ginsburg (2002, p. 66). 34 Chander and Sunder (2004, pp. 1333–4). 35 Public Domain Manifesto is included in Dulong de Rosnay and De Martin (2012), pp. xix–xxv. 33

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(iv) the lawful user of a digital copy of a public domain work should be free to (re-)use, copy and modify such work and (v) contracts or technical protection measures that restrict access to and re-use of public domain works must not be enforced. The Manifesto made nine general recommendations: (i) the term of copyright protection should be reduced, (ii) any change to the scope of copyright protection (including any new definition of protectable subject matter or expansion of exclusive rights) needs to take into account the effects on the public domain, (iii) when material is deemed to fall in the structural public domain36 in its country of origin, the material should be recognised as part of the structural public domain in all other countries of the world, (iv) any false or misleading attempt to misappropriate public domain material must be legally punished, (v) no other IPR must be used to reconstitute exclusivity over public domain material, (vi) there must be a practical and effective path to make available orphan works (see Sect. 7.4) and published works that are no longer commercially available (such as out-of-print works) for re-use by society, (vii) cultural heritage institutions should take upon themselves a special role in the effective labelling and preserving of public domain works, (viii) there must be no legal obstacles that prevent the voluntary sharing of works or the dedication of works to the public domain and (ix) personal non-commercial uses of protected works must generally be made possible, for which alternative modes of remuneration for the author must be explored. The Communia network helped to spread a new sensibility about copyright among European academics by establishing the European Association for Public Domain and forging strong links with American academics as well as NGOs like EFF and QdN. As a result of its advocacy, a large number of academics joined the protests against Articles 11 and 13 of the DSM Directive (2019). Notwithstanding the vociferous protests, Articles 11 and 13 remained largely intact in the directive finally approved in 2019. Further, as of now, none of the general recommendations of the Public Domain Manifesto was acted upon by the EU bringing out the gap between majority academic discourse on the one hand and policymaking and judicial system on the other.

8.6 Critique of Public Domain Anupam Chunder and Madhavi Sunder offer an insightful critique of the public domain movement. IP and cyberlaw scholars who extol public domain as a common resource base whose preservation is essential for sustaining innovation and creativity tend to ignore the distributional implications of commons. It is facile to think that just because “a resource is open to all by force of law, it will indeed be equally exploited by all”. However, in practice, “differing circumstances—including knowledge, wealth, power, access, and ability—render some better able than others to 36

Structural public domain comprises (i) content which is not copyrightable at all and (ii) whose term of protection had expired.

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exploit a commons”.37 Further, there had been long-standing demands from communities in the developing world dating back to the 1960s38 that folklore, traditional knowledge and genetic resources should be brought within the purview of intellectual property in order to put an end to unfair appropriation of their heritage by firms and individuals of the developed countries; a similar demand is also being made by many indigenous communities in countries like the U.S. It is appurtenant to mention that during the DipCon, New Zealand expressed the view that the draft treaties being considered by the DipCon did not completely address the interests of all participants and mentioned as examples the protection of folklore and broadcasters’ rights39 ; many African delegates shared the concern expressed by New Zealand in respect of folklore. New Zealand and African countries were assuaged by the decision of WIPO to organise a forum on folklore in Phuket in association with UNESCO in April 1997, and thereby hasten the process for organising an international instrument for the protection of folklore. Even though nearly a quarter of a century had passed after the DipCon, an international instrument on folklore is yet to be concluded.40 Be that as it may, Chunder and Sunder put forth the view that, ironically, advocates of the public domain had demolished the trope of romantic author only to put in its place a trope of public domain. Romantic discourses of public domain pose the danger of thwarting the legitimate demands of communities in developing countries as well as indigenous communities in the U.S. and other Western countries. All in all, “the current habit of critiquing each and every new claim for property rights as an encroachment on the public domain” carries some risks of (i) legitimising “the current distribution of intellectual property rights”, (ii) masking “how current constructions of the public domain disadvantage and subordinate indigenous and other disempowered groups globally” and (iii) impairing “efforts by disempowered groups to claim themselves as subjects of property…rather than as mere objects, or someone else’s property”.41

37

Chander and Sunder (2004, p. 1332). In the runup to the Stockholm Conference, the Brazzaville Conference of African Countries (1963) and the East Asia Seminar on Copyright (1967) demanded international protection of folklore. In the Stockholm Conference itself, India and quite a few developing countries demanded the protection of folklore, and a Working Group was set up in response to these demands. WIPO (1971), Volume II, paragraphs 136.7, p. 806, 477.3 at p. 838 and paragraphs 965.1–963, p. 876. 39 DipCon Records, Volume II, paragraphs 401, p. 612. 40 From early 2000s, The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) has been undertaking text-based negotiations to finalise an agreement on an international legal instrument for the protection of traditional knowledge, traditional cultural expressions and genetic resources. For those discouraged by decades-long discussions at WIPO Justin Hughes urges patience and reminds Amartya Sen’s admonition that ‘we have good reason to be sceptical of the possibility of ‘discussionless justice’. Hughes and Sen notwithstanding, one is not sure whether justice is ever secured by unending discussions. Hughes (2012, p. 1266). 41 Chander and Sunder (2004, p. 1335). 38

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Bibliography A. Articles and Books Bannerman, S. (2009). The Ins and outs of public domain. Global Media Domain-Canadian Edition, 2(1), 167–173. Boyle, J. (2003). The second enclosure movement and the construction of public domain. Law and Contemporary Problems, Special Issue on Public Domain, 66(1 and 2), 33–74. Boyle, J. (2008). Public domain: Enclosing the commons of the mind. Yale University Press. Bollier, D. (2009). Viral spiral: How the commoners built a digital republic on their own. New Press. Chander, A., & Sunder, M. (2004). The romance of the public domain. California Law Review, 92, 1331–1373. Dulong de Rosnay, M., & De Martin, J. C., (Ed.). (2012). Digital public domain: Foundations for an open culture. Open Book Publishers CIC Ltd. Dusollier, S. (2003a). Open source and copy left: Authorship reconsidered? Columbia Journal of Law and Arts, 26, 281–296. Dusollier, S. (2015). Inclusivity in intellectual property. In G. Dinwoodie (Ed.), 2015. Intellectual property and general legal principles: Is IP a Lex Specialis? (pp. 101–18). Edward Elgar. Eliot, T. S. (1932). Essays on Elizabethan Drama. Harcourt, Brace and Company. Gayford, M. (1992, July 26). The arts: What’s yours is mine. Sunday Telegraph (London). Ginsburg, J. C. (2002). Essay—How copyright got a bad name for itself. Columbia Journal of Law and the Arts, 26(1), 61–77. Ginsburg, J. C., Gordon, W. J., Miller, A. R., & Patry, W. F. (2000). The copyright term extension act: How long is long? Cardozo Art and Entertainment Law Journal, 18(3), 651–708. Hughes, J. (2012). Traditional knowledge, cultural expression, and the Siren’s call of property. San Diego Law Review, 49, 1215–1266. Issacson, W. (2011). Steve jobs. Simon and Schuster. Lange, D. L. (1981). Recognizing the public domain. Law and Contemporary Problems, 44(4), 147–178. Lessig, L. (2004). Free culture: How big media uses technology and law to lock down culture and control creativity. Penguin Press. Leval, P. N. (1990). Toward a fair use standard. Harvard Law Review, 103, 1105–1136. Litman, J. (1990). The public domain. Emory Law Journal, 39, 965–1023. Nimmer, D. (2004). The moral imperative against academic plagiarism (without a moral right against reverse passing off). DePaul Law Review, 54, 1–76. Packard, A. (2002). Copyright term extensions, the public domain and intertextuality intertwined. Journal of Intellectual Property Law, 10(1), 1–32. Petruzzelli, L. (1995). Copyright problems in post-modern art. DePaul Journal Art, Technology and Intellectual Property Law., 5, 115–145. Rose, C. M. (2011). Ostrom and the lawyers: The impact of ‘governing the commons’ on the American Legal Academy. International Journal of the Commons, 5(1), 28–49. Samuelson, P. (2003). Mapping the digital public domain: Threats and opportunities. Law and Contemporary Problems, 66, 147–171. Shonack, S. (1994). Postmodern piracy: How copyright law constrains contemporary art. Loyola of Los Angeles Entertainment Law Review, 14, 281–328. Sunder, M. (2006). IP3. Stanford Law Review, 59(2), 257–332. Valenti, J. (1995). A plea for keeping alive the U.S. Film industry’s competitive energy. Testimony on behalf of the motion picture association of America to extend the term of copyright protection in Copyright Term Extension Act of 1995: Hearing on S. 483 Before the Senate Committee on the Judiciary, 104th Cong. (1995), September 20, 1995, p. 42. Wilson, S., & Lack, J. (2008). The Tate guide to modern art terms. Tate Publishing.

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I. Cases: United States Eldred v. Ashcroft Loyola Law Review, 36(1), 2002 contains the articles presented at the symposium ‘Eldred v. Ashcroft: Intellectual Property, Congressional Power, and the Constitution’ organised by Loyola Marymount University after judgment of the appellate court was delivered. Legal Documents: Eldred v. Ashcroft: List of the Amicus Curiae briefs, other legal documents and their web links. Available at https://cyber.harvard.edu/openlaw/eldredvashcroft/legal.html. Last Accessed on February 26, 2022. Judgement: Eldred v. Ashcroft.123 S.Ct. 769 (2003). a) Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992).

II. Government Documents World Intellectual Property Organisation (WIPO) 1971 Records of the Intellectual Property Conference of Stockholm. June 11-July 14, 1967. DipCon Records. (1999). Records of the diplomatic conference on certain copyright and neighboring rights questions, Geneva, 1996. Two Volumes, WIPO Publication No. 348E. Volume I has all the amendments proposed to the substantive provisions of Draft WCT and Draft WPPT. Agreed Statements, Final Act of the Diplomatic Conference, Resolution and Recommendation adopted by the Diplomatic Conference. Available at https://www.wipo.int/edocs/pubdocs/ en/wipo_pub_348_vol_i.pdf. Last Accessed February 26, 2022.

Chapter 9

Social Production and Distribution of Content

Abstract This Chapter details one of the two novel ways of creating content made possible by the spread of World Wide Web 2.0 and other digital technologies, namely social production (also called distributed production or peer production) whose defining characteristic is creation of works through collaborative efforts by a multitude of individuals interacting and communicating with one another through Internet, often not demanding any remuneration or copyright for their contribution. The most well-known examples of social production are free and open source software and Wikipedia. Much of the social production such as Wikipedia expands the public domain. Social production poses a conceptual challenge to the copyright doctrine in countries like the U.S. and India where copyright is taken to be an economic incentive to produce works. The Chapter brings out the distinction between free and open source software and describes how proprietary software firms began to embrace the open source method. The Chapter outlines and critiques Benkler’s theory of social production. The Chapter also describes attempts to expand public domain by expanding access through loosening copyright restrictions, good examples being Creative Commons and open access publication of books and journals. The Chapter also adverts to the criticism that the strategy adopted by Creative Commons is incompatible with its avowed objective.

9.1 Introductory Digital environment had made possible two novel ways of producing content, the first through collaborative efforts by a multitude of individuals interacting and communicating with one another through Internet, often not demanding any remuneration or copyright for their contribution. Such production is called social production (also called distributed production or peer production), the most well-known examples being free and open source software, and Wikipedia. Much of the social production (e.g., Wikipedia) expands the public domain. The second is User Generated Content (UGC) which is creation outside professional routine and practices by computer users who could be amateurs or professionals. In addition to novel ways of producing content, attempts to expand public domain focused also on © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_9

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expanding access through loosening copyright restrictions, good examples being Creative Commons and open access publication of journals.

9.2 Open Source Software Ever since computer programmes emerged as a marketable commodity in the 1970s, it was standard business practice to make available only the object code of a programme while effecting the sale of that programme. Source code and other humanreadable documentation continued to be treated as trade secrets even after computer programmes came to be protected under copyright law. The refusal of the software industry to part with the source code gave birth to the free software movement which revolutionised the development and distribution of computer programmes; the founder of that movement was Richard Stallman. In contrast to proprietary computer programmes, free software not only provided the source code along with a programme but also allowed others four freedoms: the freedom to run the programme for any purpose, the freedom to study how the programme works and adapt it to one’s needs, the freedom to redistribute copies of the programme to others and the freedom to improve the programme and release the improvements to the public. Stallman also authored GNU1 General Public License (GPL), a widely used free software license; it is a ‘copyleft license’ whose central idea is that “we give everyone permission to run the programme, copy the programme, modify the programme and distribute modified versions—but not permission to add restrictions of their own”. As GPL is a license its terms are legally enforceable; any violation would be an infringement of copyright and could be stopped by securing an injunction. Copyleft “uses copyright law but flips it over to serve the opposite of its usual purpose: instead of a means of privatising software, it becomes a means of keeping software free”.2 Thus, Stillman’s uncanny insight lay in recognising that the copyright in source code which is used by proprietary software business to restrict access to the source code can as well be used to maintain free access to downstream users and developers. The GPL license of a free software automatically latches itself to the derivative of that software, to derivative of that, and so on; a GPL license therefore has a viral effect and sometimes is called viral license.3 Lessig very aptly observed that while Stallman “was the Moses of the free software movement… as with Moses, it was another leader, Linus Torvalds, who finally carried the movement into the promised land”.4 Torvalds carried the movement into 1

GNU is a recursive acronym meaning “GNU isn’t Unix”; Unix was a popular operating system which was in the public domain till 1984 when AT&T, its owner, decided to make it proprietary software. 2 Gay (2002, pp. 22–23). 3 Bollier (2009, p. 28). For elaboration of the concept of viral license and other cognate concepts such as viral contracts, viral marketing and viral advertising see Radin (2000, pp. 1132–133). 4 Lessig (2001, p. 270).

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the promised land by rejecting the anticorporate, antiproprietary software ideology of Stallman. As Torvalds put it, “open source is about letting everybody play. Why should business, which fuels so much of society’s technological advancement, be excluded-provided that they play by the rules?”.5 The development of Linux kernel by Torvalds blazed the trail for social production. High-speed Internet made possible the latest version of a software to be communicated, almost in real time, to myriads of software buffs, and in return the buffs could communicate their comments and improvements to the person coordinating the development of the software as well as other software buffs. The negligible cost of communicating and processing information and low transaction costs makes coordination and integration cost-effective in a way that they were not before, enabling large-scale collaborations without too much of supervision and control, in other words without a hierarchical, large organisation.6 The development of Linux belied the conventional economic belief that “free software couldn’t possibly exist, because no one would have any incentive to make really sophisticated programmes requiring substantial investment of effort only to give them away”.7 The defining characteristics of that development of the Linux core were (i) openness, (ii) voluntary participation by thousands of hackers spread all over the world, (iii) continual peer review and (iv) informal coordination of the contributions of thousands of participants. It was the advent of Internet which facilitated the communication and collaboration between participants spread across the globe; the participants were ‘hackers’, a relatively homogenous community which shared an ethos of collaboration, or to use a general expression, were peers.8 As and when a new version was developed and issued over Internet, it was subjected to peer review, and the continual development through an iterative process continually refined the software. Yet the quality of the final product was not decided by the ‘wisdom of the crowd’ but by the unforgiving computer hardware which would refuse to be directed by an inappropriate software. Further, systems were put in place for (i) evaluating the contributions of the collaborators and determining which need to be incorporated in the next version of Linux, and (ii) spotting among the contributions new ways of attacking problems or new areas of work. And further, the whole process was overseen by Torvalds the ‘benevolent dictator’,9 and yet, his authority was ‘persuasive, not legal or technical’, and derived from “the mutual recognition by most players in this game that it is to everybody’s advantage to have someone overlay a peer review system with some leadership”.10 Suffice to say, it would be a bit of exaggeration to

5

Torvalds and Diamond (2001, p. 164); also see Curtis (2009). For elaboration see Benkler (2006, pp. 99–106). 7 Moglen (1999, Footnote 22). 8 It is appurtenant to mention even though the word ‘hacker’ later acquired a pejorative sense it was the community of hackers (computer buffs) who struggled with hard technical problems, and built the Internet, the operating systems Unix and Linux, and the World Wide Web. For an elaborate account of hackers, see Levy (2010). 9 Hamm (2014). 10 Benkler (2006, p. 105). 6

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claim that the networked communication that Internet allows decentralised collaboration of a large number of unrelated individuals to cooperate and create collective, synergistic projects without any intervention whatsoever from formal institutions or a managerial structure, or in other words, the “power of organisation” can manifest itself “without organisation”.11 One of the hackers who was much impressed by the new method of software development pioneered by Torvalds was Eric Raymond who, along with Bruce Perens, went on to establish the Open Source Initiative in 1998. As a software development methodology, Open Source Initiative assimilated important features of free software. However, it does not share Free Software Foundation’s hostility towards proprietary software and businesses developing and marketing such software. Further, open source licenses are less restrictive, or less freedom enhancing (in the sense used by free software proponents), than free software licenses. Thus, Microsoft is “free to use the Apache server (licensed under an open source license) and incorporate it into a proprietary product”; however, Microsoft is not free to take Linux and incorporate it into its proprietary Windows software as Linux operating system is licensed under the GPL and any code that derives from Linux must itself be licensed under GPL.12 In contrast to Free Software Foundation, open source has “a more liberal strategy in defining the key elements that must be met for a license to qualify as an open source”; consequently, over 100 different open source licenses are estimated to be available today.13 The difference between free software and open source was crisply brought out by Stallman when he observed that free software was a social movement while open source was a software development methodology.14 Over time, the passions aroused by the schism between free software and open software abated to a great extent, and it became quite common to refer both of them together as free and open source software (FOSS) or free/ libre /open source software (FLOSS).15 It is also significant that both free software and open source software focus not on the rights of creators, but the rights of users of software- what they can do with the software and its source code; further, they spell out the duties of software creators rather than their rights. FOSS were built belying the scepticism in the 1990s about the commercial viability of an open source sector of the software industry.16 In addition to Linux, which runs much of the Internet backbone and servers, important and successful examples of open source software include the Apache web server, the MySQL and myPHP database systems (MySQL is the world’s most popular open

11

Shirky (2008). Lessig (2001, p. 60). Also see Nosko et al. (2004). 13 Elkin-Koren (2012, pp. 322–323). Also see Schellekens lists the ten elements of the definition of Open Source but also provides elaborate rationale for each element. See Schellekens (2006, pp. 303–309). 14 Kelty (2008, p. 113). 15 Libre is the French word for liberty; using that word after free makes it clear that free is ‘free as in freedom and not free beer’. 16 Samuelson and Hashimoto, in Boyle (2019, pp. 122–123). 12

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database), the sendmail mail router, the BIND domain name server, the Perl programming language and the Firefox web browser.17 Open source software had come to dominate certain segments like the operating systems for mobile phones and web servers. Commercial use began when Dell and IBM, followed by Hewlett-Packard, started offering Linux support to escape Microsoft’s monopoly in the desktop operating system market.18 If one takes note of the fact that most of the source code of Google Chrome, the most popular desktop and notebook web browsers, came from Google’s Chromium open source project, open source software dominates the segment of desktop web browsers also. The ultimate accolade came with the Damascene conversion of Microsoft which for decades viewed open source as a scourge on its business, and a kind of cancer on intellectual property. In 2015, Microsoft decided to adopt open source in its core business. It is significant that many companies had opted for a modified open source software development process which benefit from the efforts of the broader open source community; however, not all the participants in the development process are volunteers as many are paid for their work.19 Many governments across the world have been extensively using FOSS.20 Thus, one of the objectives of India’s National Information Technology Policy (2012) was “to adopt open standards and promote open source and open technologies”. In pursuance of the objective government announced an open source policy (2014) which declared that the government would “endeavour to adopt open source software in all e-Governance systems implemented by various government organisations, as a preferred option in comparison to closed source software”. Open source software gave an impetus to the public domain movement and influenced theorising about social production as well as novel ways of creating content such as Wikipedia, an encyclopaedia created and continually updated through collaboration of lakhs of editors.21 It also influenced movements for expansion of access to books such as the Creative Commons, and movements to enhance access to scholarly journals, archives and, repositories of journals and educational resources such as open access (OA) publication and open educational resources (OER) being good examples.

17

Hunter and Quiggin (2008, p. 218). For the advantages of releasing software as open source software see Alexy (2009, paragraph 2.2.5 at pp. 35–37). Also see Guély (2018). 19 Maxwell (2006, p. 141). Maxwell offers a relatively detailed account as to why business firms go for open source software. 20 For a detailed account of why FOSS found favour with governments see Fitzgerald and Suzor (2005, pp. 421–431). 21 For a good bibliography of studies on Wikipedia see Okoli et al. (2012). Also see Schiff (2006); Zittrain (2008, pp. 131, 137), Lovink and Tkacz (2011). For critiques of the quality of Wikipedia entries see Suroweicki (2004), Duguid (2006), Chon (2012). Also see Greenstein and Zhu (2016). 18

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9.3 Theory of Social Production Yochai Benkler’s magnum opus, The Wealth of Networks, generalised the experiences of novel Internet-based modes of production and distribution like free and open software, Wikipedia, Open Directory Project and massive multiplayer online games to outline a grand vision of a new economy and society which would displace the current market economy and society. Benkler’s book had been described as a manifesto for the Internet,22 and like quite a few classic manifestos it describes an ongoing epic battle between the status quo and the emerging new order of things. At the beginning of the twenty-first century, the book declared, “we are in the midst of a battle over the institutional ecology of the digital environment”; the battle has several fronts: telecommunications, copyright, international trade, registration of domain names and so on. These battles are very crucial, and would determine how we come to know what is happening in the world, and more importantly the degree and form of autonomy we have to participate in cultures and communities, and to shape the world we live in.23 The title of Benkler’s book, The Wealth of Networks, recalls to mind Adam Smith’s The Wealth of Nations, the gospel of free markets. After the Fall of the Soviet Union, the idea of market economy seemed to have triumphed all over the world; conceptually Benkler’s book “undermined the ubiquitous triumph of the market”; in Benkler’s vision, social production would transform markets and the economy.24 “Commonsbased Peer Production”, or simply peer production, a term used interchangeably with “Social Production”, is without doubt “the most significant organisational innovation that has emerged from Internet-mediated social practice”. Peer production is peers (people forming a community) working together voluntarily without a formally imposed organisation or hierarchy to produce a shared resource—a commons—open to everyone free of charge. Organisationally, “it combines three core characteristics: (a) decentralisation of conception and execution of problems and solutions, (b) harnessing diverse motivations, and (c) separation of governance and management from property and contract”.25 Peer production is facilitated by ‘modularity’, a property of a project that describes the extent to which it can be broken down into smaller components, or modules, that can be independently produced before they are assembled into a whole. If modules are independent, individual contributors can choose what and when to contribute independently of each other. The more ‘fine grained’ modules the more the number of people who can participate in a project, ‘granularity’ being to the size of the modules, in terms of the time and effort that an individual must invest in producing them. The low costs of communication in a networked environment make it possible to have new forms of coordination and collaboration outside of the organisational structures of firms and the State. Back in the 1970s, it was voguish to talk about the postindustrial economy in which services displace manufacturing as the lead sector; production of information, knowledge and culture had 22

Brink (2007, p. 12). Benkler (2006, p. 2). 24 Willinsky in Aigrain et al. (2008, p. 165). 25 Benkler (2016, p. 91). 23

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been a very important segment of the postindustrial economy. Such production had hitherto been built around a physical production model, examples being production of films by Hollywood, recorded music and the broadcast networks. Once movies, songs or other cultural products are produced and fixed in some means of storage and transmission, the economics of production and distribution of physical goods takes over; consequently, the making of cultural goods, their fixation, storage, reproduction and transmission required heavy investment. In contrast to such centralised production and distribution, social production which is enabled by a networked environment makes possible a distributed production with the involvement of a multitude of voluntary contributors; as a well-staffed hierarchical organisation to organise and manage the production is not needed the costs of social production would be significantly lower than that of the centralised model of production and distribution of cultural products. The core benefit of peer production systems is “their capacity to elicit self-directed action from diverse sources of human talent, experience, tacit knowledge, opportunity and availability, productive interactions, etc., and to bring these to bear on a wide and diversely defined set of projects using a diverse set of materials and knowledge resources”.26 A central tenet of Adam Smith’s classic is that division of labour holds the key to efficiency. In the centralised model, the division of labour is “the result of a top-down, managerial intent, as a production masterplan that sets everyone in a well-defined role”; in contrast, with social production “division of labour is an emergent phenomenon stemming from interactions between individuals”.27 All in all, the networked information economy is thus as efficient and cost-effective, if not more, than the industrial information economy. In addition to being efficient and cost-effective, social markets can produce wealth without markets28 and firms. If permitted to flourish, non-market and radically decentralised new patterns of production will emerge at the core rather than the periphery of the most advanced economies. The qualifier ‘if permitted to flourish’ is due to the fact that interventions by the State in both the U.S. and Europe “have been in the form of either captured legislation catering to incumbents, or, at best, well-intentioned but wrongheaded efforts to optimise the institutional ecology for outdated modes of information and cultural production”.29 Networked information economy has also the merit of enhancing autonomy and freedom. The emergence of the networked information economy can increase individual autonomy by (i) increasing the range and diversity of things that individuals can do for and by themselves, and (ii) qualitatively increases the range and diversity of information available to individuals. It also enhances the “freedom to do more for oneself, by oneself, and with others”.30 Turning to the question of the role copyright and contracts in peer production they are of little relevance to “to the core organisational question of who does what, when, with what resources and which collaborators, and where task construction 26

Benkler (2016, p. 110). Aigrain et al. (2008, p. 163). 28 Strahilevitz (2007). 29 Benkler (2006, p. 22). 30 Benkler (2006, pp. 133–134). 27

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generally is collaborative”31 . Benkler’s more recent work32 uses the success of peer production projects to question the basic premise underlying the market, namely that self-interested rationality drives economic behaviour; in so doing he lends support to behavioural economists and many psychologists, anthropologists and sociologists who hold the view that economic theory and human behaviour are not centred round homo economicus. Suffice to say, human motivation is complex, and it would be as incorrect to dismiss off self-interested behaviour. Without doubt, peer production had emerged as an effective organisational model in diverse domains such as software, encyclopaedias and video journalism. In some niche areas, it has even significant share of production; however, exceptions apart it has not displaced profit-driven production. In fact, profit-driven production of information, knowledge and cultural products by firms continue to flourish, and such production contributes very significantly to ‘digital renaissance’ (See Sect. 4.8). Further, after The Wealth of Networks was published, there had been several articles and quite a few books which highlighted the fact that proprietary firms had shown the ability to appropriate the strategies of social production; firms like Linden Labs, eBay, Google, TripAdvisor, Myspace, Netflix and YouTube “earn substantial profits off of the social production of their user base”,33 so much so that businesses are claimed to be using “the masses of Internet gift–givers as a global pool of cut–rate labour”.34 In his The Wealth of Networks, Benkler himself cited the examples of Linden Labs, IBM and Google as examples of social production.35 In a 2016 article, Benkler again referred to for-profit as well as non-profit organisations organising “their core production on a peer production model”; they “thrived in the networked environment, often overcoming competition from more traditional, market- and firm-based models” though “there have been no formal measurements of the relative contribution of peer production to the Internet economy, or efforts to measure performance of firms that have adopted these strategies”.36 Suffice to say, while that peer production is an important mode of production in a few niche areas, the dominance, on the whole, of profit-driven production and the market economy continue as before.

31

Benkler (2016, p. 92). Benkler (2011, pp. 68–75). 33 Strahilevitz (2007, p. 1475). Also see Tapscott and Williams (2008). 34 Carr (2008, p. 142). 35 Benkler (2006, pp. 46–47, 74–76). 36 Benkler (2016, p. 98). 32

9.4 Creative Commons

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9.4 Creative Commons As a consequence of the adverse Eldred judgement (See Sect. 8.4), academic proponents of public domain had to confront the question as to how to advance the cause of public domain as in the medium term neither the Congress nor the Supreme Court could be relied upon to lend support to the cause of public domain. Academics like Lessig moved from the arena of contemplation to the arena of action and build up telling examples of the creating content available for others to legally build upon and share; the Creative Commons of which Lessig, Eldred and Hal Abelson were the prime movers, and the Free Art license37 introduced by French artists and lawyers are such examples. Creative Commons is an outstanding example of academics attempting to advance the ideas and beliefs they espouse through concrete action in the real world. Lessig’s trilogy, Code and Other Laws of Cyberspace, The Future of Ideas, and Free Culture set the ideological foundation of Creative Commons. The mission of Creative Commons is “to develop a rich repository of high-quality works in a variety of media and to promote an ethos of sharing, public education, and creative interactivity”.38 Creative Commons follows the open source software model rather than free software model; writing about the philosophical underpinnings of Creative Commons which he pioneered, Lawrence Lessig denounced extreme positions of no control or total control in respect of copyright in the digital environment. In the beginning of the Internet, “the architecture of the Internet disabled any ability to control the distribution of copyrighted works”; that extreme “begot another: the terror of the copyright industry, which in 1995, in response to the Internet launched a campaign to change the technical and legal infrastructure that defined the Internet, to change the Internet from an architecture of no control into an architecture of total control” (italics added). Instead of opting for either of the two extreme positions, Creative Commons provides a ‘some rights reserved’ regime. Lessig wanted to anchor Creative Commons in “a layer of reasonable copyright law” wherein some rights are controlled but not all.39 Lessig and many proponents of the public domain did not share the belief of Yochai Benkler that the threat to public domain was from capitalism; the threat arose from “imbalance in policymaking”. Imbalance in policymaking arises from the fact that “policies are thrown off-kilter by the fact that governments have fallen too much into the pocket of the copyright industries”, and further, “governments and people are too much gripped by mental models and property theories that are blind to commons and the public domain”. From this perspective, production designed to expand the cultural commons is “not seen as an alternative to capitalism”; Commons are “an essential component of a well-functioning intellectual property system—and a crucial element of the democratic market system”.40 The wide range of Creative Commons licenses, “from minimalist authorisation to simply sample a musical composition to a broad waiver of all rights”, 37

For details of the Free Arts license see License Art Libre. Elkin-Koren (2005, p. 388). 39 Lessig (2004a, pp. 10–11). 40 Bannerman (2009, pp. 170–171). 38

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was designed to cater to a wide diversity of works and their creators.41 Creative Common licenses may be applied to any type of work, including educational resources, music, photographs, databases, government and public sector information and many other types of material, the only exceptions being software and software documentation. The licensing platform of Creative Commons aims at lowering the transaction costs of both licensing by the creator and acquiring a license for reuse by facilitating the creator of work to directly choose the degree of control he wishes to exercise and based on the choice generate the appropriate license. Similarly, a user can directly procure from the licensing platform all the necessary information on the terms and conditions of license relating to the work he wants to use. Even though the project originated in the U.S., Creative Commons has a presence in eighty countries.42 The 2020 Virtual Creative Commons Global Summit was attended by about 1300 delegates from about 60 countries. While Creative Commons had achieved remarkable success in achieving its objectives copyright scholars like Niva Elkin-Koren, Séverine Dusollier, Berry and Moss,43 and Moko Hill44 had questioned the compatibility of the strategy adopted by Creative Commons with its avowed objective. Most of the critics were particular that ideological purity should be maintained in the conceptualisation and strategy of Creative Commons. Two overarching, ideological questions were raised in the critiques. First, can anything but a frontal attack dismantle the copyright system? Secondly, can there be commons without commonalty, or in other words, are the variety of licenses and the freedom given to creators to choose a license detrimental to the objective of building commons? Ellen-Koren highlighted the fact that strategy does not aim at “creating a public domain, at least not in the strict legal sense of a regime that is free of any exclusive proprietary rights”; it is “entirely dependent upon a proprietary regime and drives its legal force from its existence”. The normative framework assumes that “if intellectual property rights remain the same, but rights are being exercised differently by their owners, free culture would emerge”. Such a strategy might build a rainbow coalition of diverse groups to support Creative Commons; however, building a supporting coalition is at the cost of ideological clarity which would “interfere with the goal of offering a workable and sustainable alternative to copyright”. Further, “the proliferation of contractual terms could increase uncertainty among end users and create new barriers to access”.45 Dusollier highlighted the fact that in order to achieve its objective of promoting, the sharing and spread of creative content Creative Commons relies on license, a private contract between the licensor and the licensee, or in more legalistic terms, it relies on private ordering whereby the legal power to determine the boundaries of public access to information and content is exercised through private contracts instead of copyright law made by the State. Dusollier quotes Niva Elkin-Koren to bring out the incongruity between the objective 41

Elkin-Koren (2005, p. 390). Also see Goss (2007). Lessig (2011). 43 Berry and Moss (2000, p. 28). 44 Moko Hill (2005). 45 Elkin-Koren (2006, pp. 325–326). 42

9.5 Open Access Scholarly Journals, Archives and Repositories of Journals

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of promoting a free culture of sharing and private ordering.46 Relying on copyright and private contracts, which are Master’s tools, would not dismantle the Master’s House.47 In a nutshell, the reply of Lessig to the critics was that there was no viable alternative to the strategy chosen. He told Bollier that “If I believed that there was a different discourse that had political purchase in someplace other than tiny corners of law faculty commons rooms, I’d be willing to undertake it”.48 Bollier’s summation of the arguments and counterarguments is apt. It was not enough, as Stallman had essentially done, “to put forward a demanding, utopian ideal of the commons, and hope that it will attract a corps of true believers willing to toil away in the face of general indifference or hostility”. It was better to build a “’coalition of the reasonable’ so that a more accessible, practical vision can gain widespread social acceptance and political traction in a relatively short period of time”; that was exactly what Lessig did.49

9.5 Open Access Scholarly Journals, Archives and Repositories of Journals The reason why this category is treated separately from Creative Commons is that the open access movement and the Creative Commons movement started independently and had different objectives. Firstly, the predominant focus of the open access movement is on cost-free access, be it a journal, archives or repositories of journals. Secondly, while Creative Commons licenses cover both digital and print publications most definitions of open access publication limit the open access publication to digital publication. Thirdly, in 2009, Creative Commons released its No Rights Reserved (CC0) license targeted at scientists, educators, artists, and other creators who wish to opt out of copyright and database protection. Yet, open access publications are not licensed exclusively under Creative Commons. There are “other open licenses”, and “authors and publishers can always write their own”.50 Broadly speaking, there are two species of open access publications: (i) gratis which remove price barriers only, and (ii) libre which remove price barriers as well as some of the ‘permission barriers’, in other words, access to a work could be obtained free and the work so accessed could be used for certain category of uses without the permission of the rightsowner. With gratis category of publications, only such uses which are covered by limitations and exceptions are permissible. 46

Elkin-Koren had extensively studied private ordering and its implications. See, for example, Elkin-Koren (1998), Elkin-Koren (2005). 47 Dusollier (2006, pp. 282–283). The title of Dusollier’s article, is based on the observation of Audre Lorde, a black feminist writer and activist, who wrote that ‘the master’s tools will never dismantle the master’s house’. Lorde’s quotation is a metaphor for Dusollier’s analysis of the relationship between the goals of Creative Commons and the tools it uses. 48 Bollier (2009, p. 193). 49 Bollier (2009, p. 191). 50 Suber (2012, pp. 68–69). Also see Willinsky (2006, p. 211).

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Before the 1990s, most electronic scholarly publishing was confined to bibliographic databases or devices that helped locate the print issues of full-text articles on library shelves. Full-fledged electronic publishing of scholarly journals became possible once the standards for World Wide Web were released. The impetus for open access publication of journals first arose from sciences, and even now, most of the open source publication takes place in science, technology, and medicine (STM). Part of the reason for open source publication doing being better with STM fields is due to the fact that journal articles tend to be primary literature in STM, and there is a rush to report the results of investigation and thereby claim priority for the finding. This is not so with humanities where articles constitute secondary literature.51 Social sciences and law fall in between STM and humanities in the importance attached to articles vis-à-vis books.52 It had been customary for scientists to share their articles with theirs peers, and in the print publishing era, making copies and sharing them with peers was costly and cumbersome; with the advent of email, electronic publication and websites sharing digitalised version of the articles was relatively easier and costless. Open source publishing of journals further facilitated the sharing of articles and thereby increased the reach of a scholar’s publication. There was yet another reason for the strong impetus to publish scientific journals through the open source mode. Beginning from the 1950s, “the increase in the number of scientists …, and the parallel increase in specialised output from these scientists have contributed to the proliferation of journals and the need for finding and filtering indexes”.53 A steady escalation in journal prices “four times faster than inflation for nearly two decades” inflicted a crushing financial burden on libraries of universities and research institutions, and that burden fuelled the drive towards open access methods for distributing, and accessing, scholarly papers.54 Even though financial burden on libraries of procuring social science and law journals had not increased as much as that of scientific journals open access resources like the Social Science Research Network (SSRN) had become very important. Preprint servers, that is to say, online archives, or repositories containing works or data associated with various scholarly papers that are not yet peer reviewed or accepted by traditional academic journals, have also come to be important in most disciplines. Reputed publishers of journals like Elsevier had switched to a dual mode of publication: the conventional mode where access is through subscription and open access online publication where the cost of publication is sought to be recovered from the scholar whose article is published or his institution. Before moving on, it should be mentioned that government agencies funding research around the world had been insisting that publications related to the research funded by them should be open access, and many of them fund 51

Eve (2014, p. x). Open Access Publishing (2006) for a detailed account of open source publication and its impact on legal scholarship see a special issue of Lewis and Clark Law Review (Volume 10, Number 4, Winter 2006). That special issue presents the eight articles presented at a symposium entitled ‘Open Access Publishing and the Future of Legal Scholarship’ organised by the Review on March 26, 2006. 53 Lamb (2004, p. 144). 54 Suber (2004). 52

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the cost of publication also. And further, while the U.S. was the pioneer open access publication has now become truly global. Thus, in August 2021, the Directory of Open Access Journals covers 16,691 journals and 6,389,628 article spread over 126 countries.India had long been one of the countries at the forefront of the knowledge commons and open access publication movements.55 All in all, open source publication of articles had made significant strides and make a significant contribution to the making of intellectual commons.56 Open access movement had inspired similar to movements in a number of areas such as the open science movement,57 open educational resources (OER) movement which seeks to manage educational resources as a commons so as to make learning more affordable and exciting.58

Bibliography Articles and Books Aigrain, P., Chan, L., Guédon, J.-C., Willinsky, J., & Benkler, Y. (2008). Symposium: The wealth of nations. Policy Futures in Education, 6(2), 152–175. Alexy, O. (2009). Free revealing: How companies can profit from being open. Springer Gabler. Bannerman, S. (2009). The INS and outs of public domain. Global Media Domain-Canadian Edition, 2(1), 167–173. Benkler, Y. (2006). The wealth of networks: How social production transforms markets and freedoms. Yale University Press. Benkler, Y. (2011). The unselfish gene. Harvard Business Review, 89, 68–75. Benkler, Y. (2016). Peer production and cooperation. In Bauer, J. M., & Latzer, M. (Eds.), Handbook on the economics of the internet (pp. 91–119). Edward Elgar Publishing. Berry, D. M., & Moss, G. (2000). On the ‘creative commons’: A critique of the commons without commonalty. In D. M. Berry & G. Moss (Eds.), Libre: Meditations on free culture (pp. 28–34). Pygmalion Books. Bollier, D. (2009). Viral spiral: How the commoners built a digital republic on their own. New Press. Brink, J. (2007). ‘Book review—Yochai Benkler, the wealth of networks: How social production transforms markets and freedom. German Law Journal, 7(2), 1–14. Carr, N. (2008). The big switch: Rewiring the world, from Edison to google. W.W. Norton. Chon, M. (2012). The collective romantic author. Vanderbilt Journal of Entertainment and Technology Law, 14(4), 829–849. Curtis, K. (2009). After the software wars. Keithcu Press. Duguid, P. (2006). Limits of self-organization: Peer production and ‘laws of quality’. First Monday, 11(10). Dusollier, S. (2006). The master’s tools V. The master’s house: Creative commons V. copyright. Columbia Journal of Law and the Arts, 29(3), 271–93.

55

See Hess (2014, p. 17), Gohain and Yadav (2016), Sahu et al. (2017). Suber (2007, pp. 171–208). 57 National Academies (2018), Mirowski (2018). 58 For some details see Bollier (2009, pp. 257–267), Chan in Aigrain et al. (2008, pp. 152–175). 56

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Elkin-Koren, N. (1998). Copyrights in cyberspace—Rights without laws. Chicago-Kent Law Review, 73(4), 1155–1201. Elkin-Koren, N. (2005). What contracts cannot do: The limits of private ordering in facilitating a creative commons. Fordham Law Review, 74, 375–422. Elkin-Koren, N. (2006). Creative commons: A skeptical view of a worthy pursuit. In P. Bernt Hugenholtz & L. Guibault (Eds.), The future of public domain (pp. 325–46). Kluwer Law International. Elkin-Koren, N. (2012). Governing access to users-generated-content: The changing nature of private ordering in digital networks. In E. Brousseau, M. Marzouki, & C. Méadel (Eds.), Governance, regulations and powers on the internet (pp. 318–43). Cambridge University Press. Eve, Martin Paul (2014). Open access and humanities: Contexts, controversies and the future. Cambridge University Press. Fitzgerald, B., & Suzor, N. (2005). Legal issues for the use of free and open source software in government. Melbourne University Law Review, 29, 412–447. Goss, A. K. (2007). Codifying a commons: Copyright, copyleft, and the creative commons project. Chicago-Kent Law Review, 82(2), 963–996. Greenstein, S., & Zhu, F. (2016). Open content, linus’ law, and neutral point of view. Information Systems Research, Articles in Advance, 1–18. Gay, J. (Ed.). (2002). Free software, free society: Selected essays of Richard M. Stallman. Free Software Foundation. Guély, P.-N. (2018, September 3). open-source software: from the periphery of tech to the mainstream of finance. Forbes. Gohain, R. R. & Yadav, A. K. (2016). Present scenario of open access publishing in India. In Conference Proceedings on the Occasion of the Centenary of the SNDT University, Mumbai: SNDT University. Hamm, S. (2014, August 18). Linus Torvalds’ benevolent dictatorship. Businessworld. Hess, C. (2014). The unfolding of knowledge commons. St. Antony’s International Review, 8(1), 13–24. Hunter, D., & Quiggin, J. (2008). Money ruins everything. Hastings Communications and Entertainment Law Journal, 30, 203–255. Kelty, C. M. (2008). Two bits: The cultural significance of free software. Duke University Press. Lamb, C. (2004). Open access publishing models: Threat or opportunity to scholarly and academic publishers. Learned Publishing, 17(2), 143–150. Lessig, L. (1999). Code and other laws of cyberspace. Basic Books. Revised in 2006 and issued as Code, Version 2.0. Lessig, L. (2001). The future of ideas: The fate of commons in an interconnected world. Random House. Lessig, L. (2004a). Free culture: How big media uses technology and law to lock down culture and control creativity. Penguin Press. Lessig, L. (2004b). The creative commons. Montana Law Review, 65(1), 1–13. Lessig, L. (2011, February). Interview with Lawrence Lessig. WIPO Magazine. Levy, S. (2010). Hackers: Heroes of the computer revolution. O’Reilly. Lovink, G., & Tkacz, N. (2011). Critical point of view: A Wikipedia reader. Institute of Network Cultures. Maxwell, E. (2006). Open standards, open source, and open innovation: Harnessing the benefits of openness. Innovations: Technology, Governance, Globalization, 1(3), 119–176. Mirowski, P. (2018). The future(s) of open science. Social Studies of Science, 48(2), 171–203. Moglen, E. (1999). Anarchism triumphant: Free software and the death of copyright. First Mind, 4(9). Moko Hill, B. (2005, July 29). Towards a standard of freedom: Creative commons and the free software movement. Advogato. National Academies of Sciences, Engineering, and Medicine. (2018). Open science by design: Realizing a vision for 21st century research. The National Academies Press.

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Nosko, C., Garcia-Swartz, D. D., & Layne-Farrar, A. (2004). Open source and proprietary software: The search for a profitable middle-ground. SSRN Electronic Journal. Okoli, C., Mehdi, M., Mesgari, M., Nielsen, F. Å., & Lanamäki, A. (2012). The people’s Encyclopedia under the gaze of the sages: A systematic review of scholarly research on Wikipedia. Available at https://doi.org/10.2139/ssrn.2021326. Last Accessed on February 26, 2022. Open Access Publishing. (2006). Lewis and Clark Law Review, 10(4), 733–924. Radin, M. J. (2000). Humans, computers, and binding commitment. Indiana Law Journal, 75(4), 1125–1162. Sahu, J., Mohanty, B., & Sahoo, L. P. (2017). Indian contribution to open access scholarly publishing in DOAJ. Library Philosophy and Practice (e-Journal), 1567. Available at https://core.ac.uk/dow nload/pdf/188120975.pdf. Last Accessed on February 26, 2022. Samuelson, P., & Hashimoto, K. (2019). The enigma of digital property: A tribute to John Perry Barlow. In J. Boyle (Ed.), The past and future of internet: A symposium for John Perry Barlow, Duke Law and Technology Review, Special Symposium Issue, 18, 103–126. Schellekens, M. H. M. (2006). Free and open source software: An answer to commodification. In P. Bernt Hugenholtz & L. Guibault (Eds.), The future of public domain (pp. 303–23). Kluwer Law International. Schiff, S. (2006, July 31). Know it all: Can Wikipedia conquer expertise? The New Yorker. Shirky, C. (2008). Here comes everybody: The power of organizing without organization. Allen Lane. Strahilevitz, L. (2007). Wealth without markets? (Reviewing Yochai Benkler, the wealth of networks: How social production transforms markets and freedom (2006)). Yale Law Journal, 116, 1472–1516. Suber, P. (2004). Who should control access to research literature? SPARC Open Access Newsletter, 79. Suber, P. (2007). Creating an intellectual commons through open access. In Hess, C., & Ostrom, E. (Eds.), Understanding knowledge as commons: From theory to practice (pp. 171–208). The MIT Press. Suber, P. (2012). Open access. The MIT Press. Suroweicki, J. (2004). The wisdom of crowds. Anchor Books. Tapscott, D., & Williams, A. D. (2008). Wikinomics: How mass collaboration changes everything. Portfolio, Penguin Group. Torvalds, L., & Diamond, D. (2001). Just for fun: The story of an accidental revolutionary. Harper Business. Willinsky, J. (2006). The access principle: The case for open access to research and scholarship. MIT Press. Zittrain, J. L. (2008). The future of the internet—And how to stop it. Yale University Press.

Chapter 10

User Generated Content and Users’ Rights

Abstract This Chapter begins with diverse views about who the ‘user’ in UGC is and what is the content covered by UGC. It goes on to describe the massive challenges UGC posed to copyright law and enforcement. It also describes how UserDerived Content comes in many forms, and extensively uses mixing and matching of content, and how such content has come to be part of a content promoting strategy by individuals and entities driven by profit motive, and how in several cultural fields like recorded music, a ‘hybrid economy’ comprising co-existence and complementarity of commercial and non-commercial culture had fallen in place. It then goes on to describe how in the U.S. (i) UGC could be brought within the purview of fair use, particularly through the development of new concepts like transformative use and (ii) pervasive creation and distribution of UGC gave a fillip to alternative conception of copyright like users’ rights. The Chapter ends with a description of the efforts in the European academia to depart from the tradition of a few narrowly defined limitations, adopt the American system of relatively open-ended fair use and interpret the ThreeStep test so as not to unduly limit the scope of limitations and exemptions. Such efforts, however, had no bearing on real world making of copyright policy.

10.1 What Is User Generated Content? User Generated Content (UGC), it was aptly said, is a ‘constellation of different types of content’ which so seriously challenges any attempt at definitional rigor that it could be described as a ‘conceptual cloud’1 ; like a cloudscape its shape is ever changing, and what UGC is, what does it comprise, and how it should be treated in copyright law are very subjective. The ‘User’ in UGC is taken by many to be an amateur; myriads of run-of-the-mill individuals creating content and sharing with the world had been described in popular media as a world-historical event. Dan Hunter

1

Gervais (2009, pp. 842, 843).

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_10

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and Gregory Lastowka2 compared the emergence of the consumer-creator (sometimes called prosumer3 ) with the sacking of Rome by Visigoths in 410 A.D.; the Western Roman Empire did not survive that sacking long, and so would the copyright empire. Time Magazine chose ‘You’ as person of the year 2006 “for seizing the reins of the global media, for founding and framing the new digital democracy, for working for nothing and beating the pros at their own game”.4 Equating the ‘U’ in the term UGC with an amateur creator ignores the vast diversity of UGC in terms of (i) content, (ii) creators of content, and (iii) UGC’s “historical and structural interfaces with other media systems’ interface”.5 UGC as content varies from amateurish stuff shared with family and friends to many forms of UGC, such as political blogs and fansubbing which exhibit “high levels of tacit or extra-institutional coordination, rationalisation, and professional scrutiny—all qualities which are not usually associated with amateur media”.6 There are many who hold that the term ‘user’ refers to any user of a personal computer with high-speed Internet connectivity and that UGC includes content created by professionals as well as amateurs.7 Many professionals had begun to take advantage of the ease of creating and communicating works in a networked environment and to bypass traditional gatekeepers like recording companies. The policy implications of the diversity of UGC are better explored from “a historicised reading of UGC as a recurring dynamic within media industries, rather than as a manifestation of consumer agency specific to digital cultures”.8 An OECD study characterises UGC as “creation outside professional routine and practises”9 and published in some context such as publicly accessible website or on a page of a social networking site accessible only to a select group of people. Whether the ‘user’ is an amateur or a professional is of little concern to the OECD characterisation. Analogous to differences of opinion about the term ‘user’ there are different opinions about what is the content covered by UGC. In the broadest sense, UGC has two distinct but overlapping forms. The first comprises creative content (individual textual, audio, image, video and multimedia productions) authored and distributed by individuals or small informal groups. They are distributed online through sharing platforms such as blogs, podcasting repositories, Flickr, Twitter, YouTube and citizen journalism sites. The second comprises small tools, software modifications or applications that are written by individuals to operate within or augment specific previously existing datasets or hardware or software platforms (e.g., iPhone applications 2

Hunter and Lastowka (2004, pp. 953–954). A prosumer is a person who consumes and produces a product; the term ‘prosumer’ was coined by Alfred Toffler. Toffler (1981, pp. 267–269). Among others, Tapscott and Williams (2008) wrote about the rise of prosumers in the digital age of mass collaborative production. Consumers who both consume creative works and simultaneously add creative content to those same works are known in some industries as ‘conducers’. See Reuveni (2007, p. 1802). 4 Grossman (2006). 5 Lobato et al (2011, p. 900). 6 Ibid. 7 Hetcher (2007, pp. 863, 870–871). 8 Lobato et al (2011, pp. 899–900). 9 OECD (2007, p. 8). 3

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or ‘apps’, utilities that manipulate publicly available data sets, game or virtual world modifications).10

10.2 Copyright and UGC: Reconceptualisation of Copyright Turning to the copyright issues of UGC; every minute about five hundred hours of content is uploaded on YouTube alone; much of the content so uploaded used to be copyrighted content without the authorisation of the rightsholders. Copyright law and enforcement are not designed for such massive creation and so frequent infringement of reproduction, adaptation, and communication rights. Further, the “shift from a one-to-many entertainment and information infrastructure to a manyto-many infrastructure has deep consequences on many levels”. There is a basic incongruence between the social norms underpinning UGC and copyright.11 That incongruence arises from a number of factors such as (i) copyright system being a system designed for mass consumptive use and not mass reuse, (ii) normative battles with the rights of end-users, including privacy and consumer protection, and (iii) lack of understanding of network effects and the use of Internet to create virtual groups of friends with similar interests “who, acting gregariously (and, thus, naturally) want to ‘share’ the pictures, shows, books or music they like, but that in most cases they have not authored”.12 Following Gervais,13 UGC can be classified into three categories: (i) User-Copied Content, (ii) User-Authored Original Content and (iii) User-Derived Content. The last two categories constitute User-Created content while the first involves no creation at all; the user just copies and uploads the work of another as it is. User-Copied Content is a straightforward case of infringement unless covered by fair use. The fact remains that a noticeable share of content uploaded by users on sharing platforms is copyrighted content without the permission of the rightsowners. There are four major copyright issues relating to User-Created content (original and derived works): (i) copyrightability, (ii) issues relating to creation, (iii) the legal relationship between the user and sharing platforms and (iv) secondary liability of sharing platforms for the infringing content uploaded and communicated to others by their clients (this issue is dealt with in the next Chapter). User-Authored Original Content does not involve copyright infringement. However, copyright infringement 10

Trosow et al. (2010, p. 4), McNally et al. (2012). Trosow et al. as well as McNally et al. consider collaboratively produced and distributed content such as open source software and Wikipedia to be UGC. However, such content is produced not by a single or handful of ‘users’ but a large multitude of ‘users’, and the underlying production process is vastly different. Therefore, it is legitimate to differentiate the content created by social production from UGC. 11 Scassa (2013). 12 Gervais (2010, p. 471). 13 Gervais (2009, pp. 858–859).

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is a major issue with User-Derived Content. There had been quite a bit of comment on the copyrightability of User-Derived Content. A distinction had rightly been drawn between ‘creation’ and ‘creativity’. “Creation relates to any digital content made by a user ‘ranging from an apparently trivial update on Facebook to an artistic video clip’”; on the other hand, creative is “a differentiating term that has a qualitative connotation” suggesting that “the content created is unique, useful (at least at the margins), and organised”.14 If not every UGC is creative the question arises as to what the dividing line between copyrightable and non-copyrightable UGC is. To be copyrightable, a UGC has to be original and fixed in a tangible medium of expression; much of UGC, however, passes both the criteria of copyrightability as the originality required is only a modicum and “as long as this digital expression exists for a period of more than transitory duration, the requirement for fixation will be satisfied”.15 Copyrightability of the work created is not an issue with the UGC created by amateurs as the creation takes place without any expectation of remuneration; hence the economic incentive that copyright offers is not of relevance when such creation takes place. However, copyright protection is essential for several business models which had emerged, and which enable creators to generate revenues from their UGCs, for example YouTube Partners Programme of YouTube, offer by Flickr to some of its users to sell their works to Getty Images.16 User-Derived Content comes in many forms, and extensively uses mixing and matching of content. Examples of UGC are cut and paste text, embed a video clip, use a song as a soundtrack for a homemade video, edit a photo by using photoshop, or remix digital music, mashing new vocal tracks with a video clip or combining the rhythm track of one song with the vocal tracks of another. The shift to a remix or mashup culture17 had been hailed as a major cultural transformation from a read only (R/O) culture to a read and write (RW) culture,18 and from a monopoly of Big Business over creation and distribution of cultural to the democratisation of culture.19 In other words, “digital technology has unleashed a wave of user creativity” and is 14

Palfrey and Gasser (2008, pp. 113–114). Hetcher (2007, p. 886). 16 For an overview of the emerging value chains and business models involving UGC see OECD (2007, pp. 21–27), E. C. (2009, pp. 115–142). For commercialisation of UGC see Elkin-Koren (2010, pp. 123–126), Soliman (2012, pp. 288–289). 17 Remix and mashup are synonymous terms. Mashup is a creative work, usually in a form of a song, created by blending two or more pre-recorded songs, usually by superimposing the vocal track of one song seamlessly over the instrumental track of another, increasing the tempo and pitch while adding or reducing gaps to make it flow. 18 ‘Read-only culture’ refers to the traditional mass-media culture in which media is created by the few and is consumed more or less passively by the many. In Read and Write culture, ordinary persons do not confine themselves to just reading (consuming) culture; they also add ‘to the culture they read by creating and re-creating the culture around them’. Lessig (2008, pp. 28–29). 19 The term ‘democratisation’ came to voguish with those hailing UGC and demanding reinvention of copyright law as well as those who decry UGC. A polemical work spoke of the Internet democratising Big Media, Big Business, Big Government, and the dictatorship of expertise being replaced by noble amateurs. Keen (2007, p. 35). 15

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“a form of ‘semiotic democracy’ and a part of a new ‘participatory culture’”.20 A semiotic democracy “would empower individuals to add to the rich and expansive cultural fabric of a true public domain, where everyone participates equally in the ongoing process of cultural production”.21 Remix had become so popular that “major rap stars like Jay-Z and Eminem have released instrumental tracks of their records in the hope and expectation that remix auteurs will recycle the tracks”: they often use “Creative Commons licences and public-domain sound clips to build a legal body of remix work”.22 All in all, UGC has come to be part of a content promoting strategy by individuals and entities driven by profit motive, and in several cultural fields like recorded music, a ‘hybrid economy’ comprising co-existence and complementarity of commercial and non-commercial culture had fallen in place.

10.3 Users’ Rights 10.3.1 United States: From Fair Use to Users’ Rights The creator of a User-Derived Content from a pre-existing content without the authorisation of the rightsholder is liable for infringement of reproduction and adaptation rights unless he can successfully invoke fair use/dealing. Given its inbuilt flexibility the American fair use praxis enables new kinds of uses to be considered as they arise. That being so, Use-Derived Content could be brought within the purview of fair use; however, after the coming into force of the TRIPs agreement and the Internet Treaties, copyright owners had begun to insist that the fourth of the four criteria to determine whether a use is fair use, namely the effect of the use upon the potential market for, or value of, the work, should be subject to the Triple-Step test. Given the high volume of User-Derived Content, rightsowners could plausibly claim that such content affects the markets for their works. Of course, there is the counterargument that such derived content in no way, affects the market for the original work. The concept of transformative use had come in handy to accommodate User-Derivative Work within the scope of fair use. The idea of transformative use pioneered by Pierre Leval (See Sect. 8.2),23 was given judicial imprimatur by the Supreme Court in the Campbell case24 ; if an artist uses an earlier work to add “something new, with a further purpose or different character, altering the first with new expression, meaning, or message” (italics added) it is transformative use, and such use falls

20

Wong (2009, p. 1077). Katyal (2006, p. 490). 22 Bollier (2009, pp. 15–16). For a more elaborate treatment of the interaction between commercial music and remix see Demers (2006). 23 Leval (1990). 24 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). 21

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within the purview of fair use.25 Recent judgements “evidence a drift from ‘transformative work’ to ‘transformative purpose’; in the latter instance, copying of an entire work, without creating a new work, may be excused if the court perceives a sufficient public benefit in the appropriation”.26 Even the embargo on commercial use being brought within the purview of fair use seems to have been relaxed. Thus, “constituting a commercial database containing complete copies of copyrighted works may be fair use if the database does not exploit the works for their expressive value.”27 Google had claimed that its scanning and retention of millions of copyrighted books is a transformative fair use because without storing full-text copies in its database it cannot respond to user queries seeking bibliographic information or small extracts from the books in Google’s repository, and its claim was upheld by the U.S. District Court for the Southern District of New York.28 The conflation of the first (the purpose and character of the use) and fourth criteria (the effect of the use upon the potential market for, or value of, the work) used by American courts for determining fair use gave rise to concept of ‘transformative market’, which is a market outside the traditional market for the exploitation of a work; in other words, exploitation of a work in the transformative market would not affect the legitimate interests of the right holder. Exploitation in the transformative market is an exploitation outside the copyright owner’s zone of exclusivity; “the counterpoint to a ‘transformative market’ (favouring fair use) is ‘a traditional license market’, that is, a ‘traditional, reasonable, or likely to be developed market’ (disfavouring fair use)”.29 It is appurtenant to mention that transformative use is not a right as such but a fair use defence which could be invoked in an infringement suit. The reconceptualisation of copyright, as mentioned above, displaced the author from the centre of copyright; a logical corollary is the reconceptualisation of limitations and exceptions (fair use in the U.S.) not as a defence in an infringement suit but a right, an entitlement, of the user. As Boyle put it limitations and exceptions are not just “narrow and grudging defense against an otherwise valid case for copyright infringement”.30 In U.S. copyright law, fair uses are considered to be uses that were never within the copyright holder’s power to prohibit. Such a conception should be replaced by a conception that when “society hands out the right to the copyright holder, it carves out certain areas of use and refuses to hand over control of them”.31 Once so conceived, it is just but one short leap from fair use to users’ rights which exist independently of author’s rights, a proposition long propagated by Ray Patterson who “spent much of his scholarly life explaining that copyright was

25

Ibid. Ginsburg (2014, p. 21). 27 Ibid. 28 Authors Guild Inc. v. Google Inc., 954 F Supp 2d 282, 291 (SDNY 2013). Cited in Ginsburg (2014, p. 21). 29 Ginsburg (2013, pp. 490–491). 30 Boyle (2008, p. 66). 31 Ibid. 26

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most properly understood as a ‘law of users’ rights’”.32 The very title of the book he co-authored with Stanley Lindberg The Nature of Copyright: A Law of Users’ Rights was a defiant challenge to the centrality of author in copyright act. From a historical analysis of copyright for about four centuries, Patterson and Lindberg argued that “copyright had been the product of a precarious attempt to balance the rights of the creators-and those of the publishers-with the rights of users, present and future”,33 and that “copyright law consists of three parts: a law of authors’ rights, a law of publishers’ rights and a law of users’ rights”.34 The justification for a users’ rights in the digital era had been outlined by many. It had been contended that there had been a fundamental change in the creative ecosystem. Even though users had come to the forefront of the creative process copyright law ignores their need for the material required for creation and instead emphasises the rights of the first creators to the detriment of the users’ needs and interests as well as access to knowledge and civic liberties. Copyright restrictions on the use of online materials are reinforced by (i) contractual restrictions, (ii) algorithms used to filter, disable and block access to creative works and (iii) monitoring and surveillance of access and use. All in all, “copyrighted materials (which) were once available unless proven infringing…are unavailable unless explicitly authorised by the copyright owner”.35 Access to knowledge had now become fundamental in this environment as digital content embraces most everyday practises. On the normative level, it is imperative to shift “the locus of copyright analysis from author’s rights to the creative process, emphasising the role of users as partners in promoting copyright objectives”, and incentivse “the full range of activities involved in the creative process, including generating new works, transforming existing materials, absorbing, learning, expressing and disseminating new knowledge”.36 It had also been contended that “the author is herself a user, and therefore users’ rights are an incidence of authorship and therefore cannot be mere exceptions to the author’s rights as much as themselves central aspects of copyright law inextricably embedded in authorship itself”.37 Such ideas gave an impetus to the Access to Knowledge (A2K) movement. While those who advocate users’ rights agree on the imperative of incorporating users’ rights in copyright law, they differ on what exactly those rights should be. Thus, Patterson and Lindberg put forth the view that copyright law consists of three parts: a law of authors’ rights, a law of publishers’ rights and a law of users’ rights.38 In contrast, David Vaver put forth the view that users have rights while copyright owners have only duties, and that “owner rights should be enacted and enforced only in certain special cases that (i) demonstrably encourages the production of the work, and (ii) 32

Litman (2011, p. 326). Ray Patterson and Lindberg (1991, p. 2). 34 Ray Patterson and Lindberg (1991, p. 4). 35 Elkin-Koren (2017, p. 138). 36 Elkin-Koren (2017, p. 134). 37 Drassinower (2005, p. 466). 38 Ray Patterson and Lindberg (1991, p. 4). 33

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does not unreasonable prejudice the legitimate interests of users”.39 It is appurtenant to mention the Canadian (Amendment) Act, 2012 provided an exception that granted Canadians the right to create remixed work for non-commercial purposes under certain circumstances. There had been suggestions that that exception be transplanted to other national copyright laws. However, though they are in a minority, some do not agree with the displacement of the author from the centre of copyright doctrine and equate the author and the user. The questioning of new-fangled theories ranges from polemical arguments to reasoned defence of ‘the fallen faith’ by Jane Ginsburg. Thus, Tracy Reilly vehemently asserted that the true motivation of those who wanted to banish the historical notions of copyright authorship and originality was envy of those who create masterpieces; the collectivist principles was promoted by some professors and came in handy for those who want to get something for free. Reilly quoted Fredrich Nietzsche to bring out the difference between those who create and those who enjoy: “everyone who enjoys supposes that the tree was concerned with the fruit, but it was really concerned with the seed”.40 Ginsburg pooh-poohed the contemporaneous idea that “today’s authors need copyright exceptions and limitations more than they need exclusive rights”.41 She drew a distinction between end-users and creator-users who make transformative use of works, in other words between consumptive and transformative uses. The interests of the two types of users are different. Creator-users do not disparage authors’ rights, though they may chafe at them, and eventually most of them would assert their right in the derived work. In contrast, end-users have no use for rights; a major reason for users’ rights being asserted is ‘techno-postmodernism’. Digital technologies had conferred on users vastly increased capacity to receive, copy, store and transmit works of authorship, thereby triggering the question why law should deny them the uses which technology had enabled. The claims of endusers were buttressed by postmodernist literary criticism which held that the author was dead, and it is readers who give meaning to the texts they read and reading itself is a creative act. Consequently, consumptive use by end-users is a creative act entitled to a right. The ‘death of the author’ proclaimed by postmodernist literary criticism gave rise to the copyright syllogism, “copyright is a consequence of the romantic conception of authorship; romantic author is dead; therefore, copyright is (or should be) dead, too”.42 From an analysis of the fair used doctrine and related case law, Ginsburg concluded that “the traditional fair use inquiry balances the new expressive use (promoting the second-comer’s authorship) against the first author’s returns for her intellectual labours”.43 However, as outlined above, what was the mainstream view of yesterday had come to be today’s minority view in the U.S. academia. Advocates 39 Vaver (2007, p. 736). The origin of users’ rights in Canadian law lies in the work of Professor David Vaver, who was cited with approval by the Supreme Court of Canada in its adoption of the term. Geist (2017, p. 202). 40 Reilly (2017, pp. 599, 627–628). 41 Ginsburg (2014, p. 15). 42 Ginsburg (1997, pp. 6–8). 43 Ginsburg (2014, pp. 19).

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of public domain/commons fault copyright for inadequately addressing the needs of creators of derived works because copyright concentrated “more on the amount of property to encourage authors to produce than the countervailing need to keep a large amount of information free from property rights so that authors and creators have the necessary raw materials with which to work”.44

10.3.2 European Union: Adoption of Fair Use like Exception Internationally, there is wide variation of the provisions relating to limitations and exceptions among national laws with the American open-ended fair use system that leaves the task of identifying individual exemptions to courts at one extreme to Continental European tradition of a narrow list of specific exemptions of the authors’ right on the other with the fair-dealing system in British Commonwealth countries in the middle. The merit of the fair use system lies in its flexibility, its ability to assimilate new technologies into the copyright system; it is considered to be one of the factors creating a positive environment in the US for innovation and investment in innovation. It offers “a zone for trial and error, for bolder risk taking, with the courts providing a backstop to adjudicate objections from rightsholders if innovators have trespassed too far upon their rights”.45 However, the flip side of the fair use system is its unpredictability as the subjective judgment of a judge matters quite a bit in deciding whether a particular case is covered by fair use.46 In contrast, the system of narrow and specific limitations and exceptions prevalent in countries with an authors’ right system of copyright is too rigid to respond to new technological challenges and opportunities; however, unlike the fair use system, it has the merit of providing predictability and legal security.47 Ironically, the system of limitations and exceptions crafted through arduous, vexatious negotiations and incorporated in European UnionCopyright Directive (EUCD) turned out to be inadequate to address the new challenges posed by the stream of newer and newer digital technologies which hit the copyright landscape, one of the reasons being the embargo EUCD placed on creation of new exceptions by Member States. A rigid system of exceptions would enable rightsholders to block potentially important new technologies thereby impeding innovation and hampering growth.48 The failure to develop web search engines like Google, and the tardy development of “computerised search and analysis techniques on data and text” at a time when “data 44

Boyle (1996, note 2 at p. 244). Hargreaves Study (2011, paragraph 5.12, p. 44). 46 See for example, Nimmer (2003), pp. 281–282, Lessig (2004, p. 187), Heins and Beckles (2005, p. 11), Guggenheim, ‘Foreword’ to Aoki et al. (2008). 47 Elkin-Koren and Netanel question the conventional view that fair use is open-ended while the system of closed catalogue which listing specific exceptions lacks flexibility. Elkin-Koren and Netanel (2020). 48 Hargreaves Study (2011, paragraph 5.10 at p. 43). 45

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farming became routine in systems across the economy, from the management of transport to the administration of public services” were attributed to a rigid system of exceptions.49 All in all, recent years “witnessed a growing mismatch between what is allowed under copyright exceptions, and the reasonable expectations and behaviour of most people”.50 It is difficult for anyone to understand why it is legal to lend a friend a book, but not share a digital music file even though it is easy to copy such a file and share it with friends and family members. This disjunction between what technologies had made possible on the one hand and copyright law on the other “puts the law into confusion and disrepute” and “is not a tenable state of affairs”.51 The new way of thinking about copyright wafted across the Atlantic to the European academia. Thus, Thomas Dreier questioned “the traditional view of copyright as a set of exclusive rights guided by the aim to provide for as much protection as possible”,52 and “exclusive rights being the rule and limitations being nothing more than exceptions”.53 Balancing the interests of content creators and end-users is “all the more necessary in the digital and networked information society where copyrighted information is not only created and consumed, but constantly extracted, regrouped, repackaged, recombined, abstracted and interpreted”.54 Balancing in the digital environment is bound to be a contentious issue given the conflict of interests. However, a mitigating factor is that limitations are not an all-or-nothing matter. There is an urgent need for “a flexible–albeit de minimis–exception in view of the rapid technological development of the information society infrastructure and the different new business models and use possibilities”.55 The question of providing ‘flexible–albeit de minimis–exception’ engaged the attention of many European academics and governments; the pros and cons of introducing fair use and modifying the Three-Step test were extensively examined by European academics56 and governments.57 Bentley and Aplin put forth the novel

49

Ibid. Ibid. 51 Ibid. 52 Dreier (2010, pp. 51–52). 53 Ibid. 54 Dreier (2010, p. 52). 55 Ibid. 56 For example, Dnes (2011), Hugenholtz and Senftleben (2011), Dnes (2013), Senftleben (2014), Hugenholtz (2016), Geiger et al (2018), Geiger (2020). 57 Two of the many studies on incorporating fair use doctrine in E. C. laws were conducted at the behest of the British and Dutch governments. British study at Hargreaves (2011, paragraphs 5.1–40, p. 41–52), and the Dutch Study at van der Noll et al (2012). 50

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argument that Article 10 (1) of the Berne Convention mandated a ‘global, mandatory fair use’ which has nothing to do with the Three-Step test.58 A group of seven scholars drew up a European Copyright Code under the Wittem Project; the code was an endeavour “to meld civilian (authors’ right system) and common law (economic approach) approaches to copyright”.59 The Code laid stress on the principle of balance and flexibility in system of rights and limitations as rapid technological development makes future modes of exploitation and use of copyright works unpredictable.60 The chapter on limitations is the longest and most ambitious of the five chapters that together constitute the Code. Limitations to copyright are enumerated under four distinct categories: (i) uses with minimal economic significance (Article 5.1); (ii) uses for the purpose of freedom of expression and information (Article 5.2); (iii) uses permitted to promote social, political and cultural objectives (Article 5.3) and (iv) uses for the purpose of enhancing competition (Article 5.4).61 The most innovative aspect of the entire Wittem Code is its “half-open structure of the limitations… [which] combines the advantage of legal security and predictability associated with the ‘closed list’ approach of limitations and exceptions under the author’s right tradition” with “the flexibility and adaptability to technological change of the American fair use doctrine”.62 However, as mentioned above there had been a disjunction between copyright scholarship and copyright policymaking with the result that “the Wittem Code remains a laudable doctrinal work with no official institutional follow-up”.63 In regard to the introduction of fair use in European copyright laws, the overall consensus seems to be that “transplanting (fair use) doctrine into civil law-based droit d’auteur might lead to unintended consequences and ultimately systemic rejection”.64 In some cases, opposition was laced with ideological rancour. Thus, the Hungarian Copyright Association contended that the idea of introducing fair use in European copyright laws was promoted by certain ‘copyright minimalist ideologues’, and ‘big and prosperous online intermediaries’ who believe that they stand to gain from a low level of protection.65 The report of Ian Hargreaves, commissioned

58

Bentley and Aplin (2018). Ginsburg (2011). 60 The Wittem Project (2010 p. 11). 61 The Wittem Project (2010, pp. 23–25). 62 Hugenholtz (2012, p. 349–50). 63 Sganga (2018, p. 153). 64 Hugenholtz and Senftleben (2011, p. 8). 65 Responses by the Hungarian Copyright Association to the Public Consultation on the review of the EU copyright rules (3 March 2014), cited in Hughes (2017, pp. 252–253). 59

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by the British government, came to the conclusion that “importing Fair Use wholesale was unlikely to be legally feasible in Europe”66 ;the UK could achieve many of its benefits by taking up copyright exceptions already permitted under EU law, promoting at EU level an exception to support text and data analytics, and arguing for an additional exception, designed to enable EU copyright law to accommodate future technological change where it does not threaten copyright owners.67 In coming to this conclusion, the Hargreaves posed the question, “if only the UK could adopt Fair Use, would East London quickly become a rival to Silicon Valley”, and the answer was “certainly not”.68 The success of high technology companies in Silicon Valley “owes more to attitudes to business risk and investor culture, not to mention other complex issues of economic geography, than it does to the shape of IP law”.69

10.3.3 New Interpretation of Three-Step Test The suggestions on recasting the Three-Step test were analogous to the suggestions for introduction of fair use type limitations and exceptions in European copyright laws. Thus, Max Planck Institute, Munich and the Queen Mary University of London came out with a Declaration on a Balanced Interpretation of the ‘Three-Step Test’ in Copyright Law (2008). The Preface to the Declaration stated that in determining the scope of application of limitations and exceptions the Three-Step test should not take into account only the interests of rightsholder’s; it should also give equal consideration to legitimate third party interests..70 The Declaration expressed the opinion that when correctly applied, the Three-Step Test requires a comprehensive overall assessment, rather than the usual step-by-step application.71 In the same vein, Haochen Sun called upon the users of copyright to create a “revolutionary earthquake to break down the very foundation on which the three-step test is founded” so as “to build up the user-centreed copyright law which grants broader privileges to users and imposes social responsibilities upon right holders”.72 However, in the policy realm, the reconceptualised Three-Step test fared no better than the Wittem Copyright Code. There had also been suggestions that in order to prevent ‘privatisation of information’ and assure that the basic resource of ‘information’ is still available for further innovations it would be desirable to formulate “some positive access rights and use rights for existing creations”, and rethink “the mechanism of exclusivity that might

66

Hargreaves Study (2011, p. 5). Hargreaves Study (2011, paragraph 5.26 at p. 48). 68 Hargreaves Study (2011, paragraph 5.17 at p. 45). 69 Ibid. 70 Three Step Declaration (2008, p. 119). 71 Three Step Declaration (2008, p. 119). Also see Senftleben (2004), Senftleben (2010), Hilty (2010). 72 Sun (2007, pp. 330–331). 67

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lead to exclusion”.73 More fundamentally, “there might be a need in the future to reconsider and reshape copyright as an ‘access right’, meaning a right to grant access (and not to hinder it), as a right to say ‘yes’ rather than a right to say ‘no’, as an inclusive right rather than an exclusive right”.74 Some exceptions should be elevated to the status of user rights. However, to date such ideas had not been embraced by policymakers.75 The concept of transformative use was appealing enough for United Kingdom’s Gowers Review of Intellectual Property to suggest to the government to take up with EU amendment of EUCD to provide for an exception for creative, transformative or derivative works’ within the parameters of the Three-Step test”.76 In the public consultation following EC’s Green Paper on Copyright in the Knowledge Economy, the question was posed whether an exception for UGC should be introduced in EUCD.77 Consultation showed “that most of the stakeholders consider that it is too early to regulate UCC (User Created Content). There was ambiguity as to the scope of UCC”.78 It was also “unclear whether both amateurs and professionals should benefit from special rules on UCC and how a distinction between those groups can be drawn or how rules on UCC would relate to existing limitations, such as quotations, incidental use, and caricature, parody or pastiche”.79 EC announced its intent to further “investigate the specific needs of non-professionals that rely on protected works to create their own works”.80 In spite of various suggestions, the EU Digital Single Market (DSM) Directive (2019), did not provide an omnibus fair use-type exception designed to enable EU copyright law to accommodate future technological change; nor did it provide a limitation focussing exclusively on UGC.81

Bibliography A. Articles and Books Aoki, K., Boyle, J., & Jenkins, J. (2008). Bound by law: Tales from the public domain. Bently, L., & Aplin, T. (2018). Displacing the dominance of the three-step test: The role of global, mandatory fair use. University of Cambridge, Legal Studies Research Paper Series, Number 33/2018. 73

Geiger (2008, p. 197). Geiger (2018, p. 448), also see Dusollier (2015). 75 Giblin and Weatherall (2017, p. 21), Geiger (2017). 76 U.K. Gowers Review (2006, paragraph 4. 88, pp. 67–68). 77 E.C. Green Paper (2008, pp. 19–20). 78 E.C. Communication Paper (2009a, paragraph 3.5, p. 9). 79 Ibid. 80 Ibid. 81 EU DSM Directive (2019). 74

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Bollier, D. (2009). Viral spiral: How the commoners built a digital republic on their own. New Press. Boyle, J. (1996). Shamans. Harvard University Press. Boyle, J. (2008). Public domain: Enclosing the commons of the mind. Yale University Press. Demers, J. (2006). Steal this music: How intellectual property law affects musical creativity. University of Georgia Press. Dnes, A. (2011). Law and economics analysis of fair use differences comparing the US and UK. Report for the Review of IP and Growth, Paper prepared for the UK Intellectual Property Office. Dnes, A. (2013). Should the UK move to a fair-use copyright exception? International Review of Intellectual Property and Competition Law, 44, 418–444. Drassinower, A. (2005). Taking user rights seriously. In M. Geist (Ed.), In the public interest: The future of Canadian copyright law (pp. 462–479). Irwin Law. Dreier, T. (2010). Limitations: The centerpiece of copyright in distress—An introduction. Journal of Intellectual Property, Information Technology and Electronic Commerce Law, 1(2), 50–55. Elkin-Koren, N. (2010). User-generated platforms. In Dreyfuss, R. C., First, H., & Zimmerman, D. L. (Eds.), Working within the boundaries of intellectual property (pp. 111–135). Oxford University Press Elkin-Koren, N. (2017). Copyright in a digital ecosystem: A user rights approach. In R. Okediji (Ed.), Copyright law in an age of limitations and exceptions (pp. 132–168). Cambridge University Press. Elkin-Koren, N., & Netanel, N. W. (2020). Transplanting fair use across the globe: A case study testing the credibility of U.S. opposition. Joint PIJIP/TLS Research Paper Series, Number 50. Geiger, C. (2008). Flexibilising copyright—remedies to the privatisation of information by copyright law. International Review of Intellectual Property and Competition Law, 39(2), 178–197. Geiger, C. (2017). Copyright as an access right: Securing cultural participation through the protection of creators’ interest. In R. Giblin & K. Weatherall (Eds.), What if we could reimagine copyright? (pp. 73–110). Australian National University Press. Geiger, C. (2018). Freedom of artistic creativity and copyright law: A compatible combination? U.C Irvine Law Review, 8, 413–448. Geiger, C. (2020). ‘Fair use’ through fundamental rights in Europe: When freedom of artistic expression allows creative appropriations and opens up statutory copyright limitations. PIJIP/TLS Research Paper Series no. 63. Geiger, C., Frosio, G., & Bulayenko, O. (2018). The EU commission’s proposal to reform copyright limitations: A good but far too timid step in the right direction. European Intellectual Property Review, 40(1), 4–15. Geist, M. (2017). ‘The Canadian copyright story: How Canada improbably became the world leader on users’ rights in copyright law’. In R. Okediji (Ed.), Copyright law in an age of limitations and exceptions (pp. 169–205). Cambridge University Press. Gervais, D. J. (2009). The tangled web of UGC: Making copyright sense of user-generated content. Vanderbilt Journal of Entertainment and Technology Law, 11(4), 841–870. Gervais, D. J. (2010). User-generated content and music-file sharing: A look at some of the more interesting aspects of bill C-32. In M. Geist (Ed.), From ‘radical extremism’ to ‘balanced copyright’: Canadian copyright and the digital agenda (pp. 447–475). Irwin Law. Ginsburg, J. C. (1997). Authors and users in copyright. Journal of the Copyright Society of the USA, 45(1), 1–20. Ginsburg, J. C. (2011). European copyright code—Back to first principles (with some additional detail). Columbia Public Law Research Paper No. 11–261. Ginsburg, J. C. (2013). Copyright 1992–2012: The most significant development? Fordham Intellectual Property, Media and Entertainment Law Journal, 23, 465–501. Ginsburg, J. C. (2014). Exceptional authorship: the role of copyright exceptions in promoting creativity. In S. Frankel & D. J. Gervais (Eds.), Evolution and equilibrium of copyright in the digital age (pp. 15–28). Cambridge University Press. Grossman, L. (2006, December 25). You-yes, you- are time’s person of the year. Time.

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Heins, M., & Beckles, T. (2005). Will fairness survive: Free expression in the age of copyright control, a public policy report. Brennan Center for Justice. Hetcher, S. (2007). User-generated content and the future of copyright: part one—Investiture of ownership. Vanderbilt Journal Entertainment and Technology Law, 10(4), 863–892. Hilty, R. M. (2010). Declaration on the ‘three-step test’: Where do we go from here? Journal of Intellectual Property, Information Technology and Electronic Commerce Law, 1(2), 83–86. Hugenholtz, B. P. (2012). The Wittem group’s copyright code. In T. E. Synodinou (Ed.), Codification of European copyright law: Challenges and perspectives (pp. 339–54). Kluwer Law International. Hugenholtz, B. P. (2016). Flexible copyright: Can EU authors’ rights accommodate fair use? In I. Stamatoudi (Ed.), New developments in EU and international copyright law (pp. 417–433). Kluwer Law International. Hugenholtz, B. P., & Senftleben, M. (2011). Fair use in Europe: In search of flexibilities. Instituut voor Informatierecht. Hughes, J. (2017). Fair use and its politics—At home and abroad. In R. Okediji (Ed.), Copyright law in an age of limitations and exceptions (pp. 234–274). Cambridge University Press. Hunter, D., & Gregory Lastowka, F. (2004). Amateur-to-amateur. William and Mary Law Review, 46, 951–1030. Keen, A. (2007). The cult of the amateur: How today’s internet is killing our culture. Doubleday. Katyal, S. K. (2006). Semiotic disobedience. Washington University Law RevIew, 84, 489–571. Lessig, L. (2004). Free culture: How big media uses technology and law to lock down culture and control creativity. Penguin Press. Lessig, L. (2008). Remix: Making art and culture thrive in the hybrid economy. Penguin Press. Leval, P. N. (1990). Toward a fair use standard. Harvard Law Review, 103, 1105–1136. Litman, J. (2011). Reader’s copyright. Journal of Copyright Society of USA, 58, 325–353. Lobato, R., Thomas, J., & Hunter, D. (2011). Histories of user generated content: between formal and informal media economies. International Journal of Communication, 5, 899–914. McNally, M. B., Trosow, S. E., Wong, L., Whippey, C., Burkell, J., & McKenzie, P. J. (2012). User–generated online content 2: Policy implications’. First Monday, 17(6), 4. Nimmer, D. (2003). Fairest of them all and other fairy tales of fair use. Law and Contemporary Problems, 66, 263–87. Palfrey, J., & Gasser, U. (2008). Born digital: Understanding the first generation of digital natives. Basic Books. Ray Patterson, L., & Lindberg, S. W. (1991). The nature of copyright: A law of users’ rights. University of Georgia Press. Reilly, T. (2017). Copyright and a synergistic society. Minnesota Journal of Science and Technology, 18, 575–630. Reuveni, E. (2007). Authorship in the age of the conducer. Journal of Copyright Society of the USA, 54(218), 1801–1859. Scassa, T. (2013). Acknowledging copyright’s illegitimate offspring: User-generated content and Canadian copyright law. In M. Geist (Ed.), The copyright pentalogy: How the supreme court of Canada shook the foundations of Canadian copyright law (pp. 431–54). University of Ottawa Press. Senftleben, M. (2004). Copyright, limitations and the three-step test: An analysis of the three-step test in international and EC law. Kluwer Law International. Senftleben, M. (2010). The international three-step test: A model provision for EC fair use legislation. Journal of Intellectual Property, Information Technology and Electronic Commerce Law, 1(2), 67–82. Sganga, C. (2018). Propertizing European copyright: History, challenges and opportunities. Edward Elgar. Soliman, C. (2012). Remixing sharing: Sharing platforms as a tool for advancement of UGC sharing. Albany Law Journal of Science and Technology, 22(2), 279–355. Sun, H. (2007). Overcoming the Achilles’ Heel of copyright law: The case for the creative destruction of the three-step test. Northwestern Journal of Technology and Intellectual Property, 5, 265–331.

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Tapscott, D., & Williams, A. D. (2008). Wikinomics: How mass collaboration changes everything. Portfolio, Penguin Group. The Wittem Project. (2010). European copyright code. Available at https://www.ivir.nl/publicaties/ download/Wittem_European_copyright_code_21_april_2010.pdf. last Accessed on October 5, 2022. Three Step Declaration. (2008). Max Planck Institute, Munich and the Queen Mary University of London. Declaration on a balanced interpretation of the ‘three-step test’ in copyright law. Reprinted in Journal of Intellectual Property, Information Technology and Electronic Commerce Law, 2010, 1(2), 119–122. Toffler, A. (1981). The third wave. Bantam Books. Trosow, S. E., Burkell, J., Dyer-Witheford, N., McKenzie, P., McNally, M. B., Whippey, C., & Wong, L. (2010). Mobilizing user-generated content for Canada’s digital advantage. FIMS Publications 21, Western University Scholarship@Western. van der Noll, R., et al. (2012). Flexible copyright: The law and economics of introducing an open norm in the Netherlands. SEO Economic Research Report No. 2012–2060. Vaver, D. (2007). Copyright and the internet: From owner rights and user duties to user rights and owner duties. Case Western Reserve Law Review, 57, 731–750. Wong, M. W. S. (2009). ‘Transformative’ user-generated content in copyright law: Infringing derivative works or fair use? Vanderbilt Journal.

B. Official Documents I. Cases United States Authors Guild Inc. v. Google Inc., 954 F Supp 2d 282, 291 (SDNY 2013). Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

II. Government Documents Canada 2012. Copyright (Amendment) Act, 2012. European Commission/European Union EUCD. (2001). Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society. E. C. Green Paper. (2008). Commission of the European Communities, Green Paper. Copyright in the knowledge economy. COM (2008) 466 final dated 16 July 2008. E. C. Participative Information Society. (2009). European Commission User-Created-Content: Supporting a Participative Information Society—Final Report (SMART 2007/2008). E. C. Communication Paper. (2009a). Commission of the European Communities. Communication from the Commission: Copyright in the knowledge community. COM (2009) 532 final dated 19 October 2009. EU DSM Directive. (2019). Digital single market directive, 2019 (formally known as Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on Copyright and Related Rights in the Digital Single Market and Amending Directives 96/9/EC and 2001/29/EC). Organisation for Economic Cooperation and Development (OECD)

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United Kingdom Gowers Review. (2006). Gowers review of intellectual property. Hargreaves Study. Hargreaves, I. (2011). Digital opportunity: A review of intellectual property and growth. A Study Commissioned by the British Government.

Chapter 11

New Intermediaries and Their Regulation

Abstract This Chapter narrates how the appearance of interactive Web 2.0 facilitated the emergence of new intermediaries such as Facebook and other social media and sharing platforms like YouTube which being content providers are a species apart from the intermediaries for which safe harbour was provided in the early implementation legislations of the Internet Treaties. It details the challenges posed by the new intermediaries to copyright law and enforcement and the public policy responses to those challenges. It describes in considerable detail the making of the highly contentious EU’s Digital Single Market Directive, 2019 (DSM Directive), which is the most comprehensive legislation so far to address the problems arising from the new intermediaries. Apart from detailing the provisions of DSM, the Chapter also elaborates the reasons why transposition into national laws was a very slow process. The Chapter also describes the legislation enacted in France and Australia to ensure that news aggregators like Google News to do not profiteer at the expense of newspaper publishers, the moves in the U.S. to regulate the new intermediaries, and the efforts being made in many countries to hold the new intermediaries responsible for spread of fake news and hate speech, and to curb the market power of many new intermediaries. The Chapter ends with the conclusion that the Internet Treaties can subsume the legislative changes needed to deal with challenges posed by new intermediaries.

11.1 Safe Harbour: A 20th Century Solution to a 21st Century Problem? As mentioned above, one of the hot-button issues in the runup to the DipCon, during the DipCon and in the runup to the enactment of DMCA was the question of the secondary liability of intermediaries for acting as a conduit for transmitting content or for hosting content and system caching or for serving as search engines. It was also mentioned that S. 512, the DMCA provision regarding safe harbour and ‘notice and take down’ regime, had come to be a norm accepted over most of the world (see Sect. 3.2.2).

© The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_11

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From the late 2000s, it appeared that the ‘notice and take down’ procedure and the safe harbour regime of S.512 and its equivalents had become obsolete in countries with deep penetration of high-speed connectivity and extensive use of the sharing platforms made possible by the interactive Web 2.0. Today, “Internet users post hundreds of millions of authorised and unauthorised photos, videos, sound recordings and other works on a daily basis”; in 2019, YouTube alone had almost 500 hundred hours of video uploaded every minute.1 In order to cope with such massive volumes of online copyrighted material, rightsowners began to use automated systems to monitor content online and issue automated notices to automated systems of intermediaries under the ‘notice and take down’ procedure of S.512 of DMCA. The massive volume of notices under S.512 can be gauged from the fact that as of 9 February 2022 Google received notices for delisting 5,570,125,728 URLs.2 The notice and take down procedure was so strained by the unremitting blizzard of notices that that procedure came to be characterised as “a twentieth century Solution to a twentyfirst century problem”.3 Even though ‘robo-notices’, as millions of ‘notice and take down’ notices issued through automated processes are sometimes called, were not envisaged when the DMCA was enacted, the wording of the DMCA is “general enough that this system of automated notice and takedown can reasonably fit within the statutory parameters”4 ; however, such automated systems are bound to make mistakes5 particularly because they cannot take into account the context in which a copyrighted work is used. An egregious example was the thirty seconds homemade video taken by Stephanie Lenz which showed her toddler bouncing to the sound of Prince’s song Let’s Go Crazy playing at the background. True to the saying that hard cases make bad law,6 the Court agreed with the contention of Lenz that before issuing a S.512 notice Universal Music Corporation ought to have considered in its good faith assessment (mandated by S.S.512(c)(3)(A)(v) of DMCA) whether the use by Lenz was fair use; it rejected the contention of Universal Music Corporation that it was obligated to consider fair use only ex-post while examining the counter-notice filed by Lenz and not ex-ante before the issue of the notice under S.512. In effect, the court upheld the contention of copyright scholars like James Boyle that fair use was not just a defence against an indictment for copyright infringement but an authorised use outside the scope of the exclusive right of the rightsholder.

1

U.S. Copyright Office (2020, pp. 9–10). Google Transparency Report. 3 Boyden (2013). 4 Senate Subcommittee Hearing (2020a, 2020b, 2020c, Hughes Statement, p. 3). 5 A study by Urban et al. (2016) showed that all takedown requests in the sample appeared to be automated, and that nearly 30% of takedown requests were of questionable validity. The study examined a random sample of takedown notices, taken from a set of over 108 million requests submitted to the Lumen archive over a six-month period (most of which relate to Google Web Search). 6 Lenz v. Universal Music Corporation, 572 F. Supp. 2d (N.D. Cal. 2008). 2

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The safe harbour regime for the intermediaries put in place by S.512 also appeared to be a twentieth century solution to a twenty-first century problem because the sharing platforms (also called hosting service providers) like YouTube and Facebook which came into existence after the interactive Web 2.0 made its appearance were a species different from the hosting service providers which existed when the early implementation legislations were enacted. The basic premise of the safe harbour status is that the intermediary does have any knowledge about the content entrusted to it and it acts strictly in a passive manner while hosting, storing and transmitting content. In contrast to such intermediaries, YouTube processes and converts content uploaded by its clients into different technical formats and curates the overall uploaded library; its recommendation system, its crown jewel, provides personalised high-quality recommendations to its users.7 YouTube (a subsidiary of Google) is a highly profitable business with an annual turnover of about $ 15 billion and is as big many corporate entities identified as big ‘media companies’8 and competes with online content providers such as online audio and video streaming services, for the same audiences. No wonder that platforms like YouTube and Facebook have earned the sobriquet of ‘new media’; unlike the ‘old media’ they need not create the content and incur the costs for such creation. They can generate revenue and profits by processing and disseminating the content uploaded to them by their clients; much of the content so uploaded is copyrighted content of old media accessed without authorisation. If intermediaries like YouTube were unknown in 1996 so was UGC; holding intermediaries like YouTube liable for the unauthorised content uploaded by their users or controlling uploading of content by users through TPMs such as upload filters would have a significant impact on UGC. The question whether the activities engaged by YouTube are such that it should be treated as a content provider and not an intermediary entitled to safe harbour status was adjudicated in the U.S. in the suit Viacom brought against YouTube.9 Viacom argued that YouTube should be treated not a service provider entitled to safe harbour status but as a content provider, an integrated media business. Neither the District Court nor the Second Circuit appellate court agreed with the contention of Viacom that YouTube was a content provider. The courts held that the additional activities undertaken by YouTube were ancillary to the storage functions undertaken by intermediaries; they also laid down a very high standard of proof for denying safe harbour status to sharing platforms like YouTube. In short, in both the U.S. and the EU, “host service providers incurred no obligation to clear rights in copyrighted content posted by users who were not the authors of that content, nor did they have any general obligation... to monitor the information that they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity”.10 7

Senate Subcommittee Hearing (2020a, 2020b, 2020c, Hughes Statement, p. 6); Lawrence (2019, p. 516). Also see Davidson et al. (2010), Madrigal (2018). 8 Senate Subcommittee Hearing (2020, Hughes Statement, p. 6). 9 Viacom International, Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012). See also Hart (2011), Menell (2012). 10 Ginsburg (2020).

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Thwarted by the courts, the entertainment industry turned to the Congress for doing away the safe harbour status of sharing platforms. Representatives of that industry argued that sharing platforms had no incentive to proactively prevent unauthorised copyrighted content being uploaded because the business models used by sharing platforms like YouTube depended very much on the volume of copyright uploaded by users and they got a safe harbour status automatically. This situation placed an enormous burden on rightsholders to enforce their rights; rightsholders are required “to spend endless resources to detect and fight infringements, and most often their efforts are fruitless because infringing content that has been taken down can be reposted immediately”. Consequently, these actions “spark an endless cycle of detecting, reporting, taking down and reposting infringing content”.11 The demand of rightsholders that sharing platforms should not continue to be entitled to a safe harbour acquired an extraordinary visibility when an open letter to the Congress, entitled “Dear Congress, The Digital Millennium Copyright Act is broken and no longer works for creators” was published; the signatories of the letter were 186 musicians including superstars such as Sir Paul McCartney, Bruce Springsteen, U2, Taylor Swift, Lady Gaga, Beck, Gwen Stefani, Yoko Ono Lennon and Bruno Mars. The petitioners contended that DMCA was passed in an era that was technologically out-of-date compared to the present era and that artists’ earnings continued to diminish while tech companies which were not the “intended protectorate” of DMCA earned huge profits. The petitioners called upon the Congress “to enact sensible reform that balances the interests of creators with the interests of the companies who exploit music for their financial enrichment”. Only with such an enactment would consumers truly benefit.12 The demand for a legislation which would eliminate the entitlement of the new intermediaries for safe harbour status did not go uncontested. From the users’ point of view, there had been demands that direct appropriations of copyrighted content to sharing platforms like YouTube should be considered fair use because sharing of commercial cultural products decommodifies them and gives them authentic meaning; further decommodified culture allows people “to build something creative on the foundation of what already exists”. Therefore, such a sharing should be allowed as we need a cultural world in which decommodified culture prevails.13 Another forceful argument that the music industry began to put forth from 2015 onwards was that YouTube and other such platforms had been taking advantage of their safe harbour status to coerce rightsholders into either abandoning their rights or licensing at below fair market rate. Thus, according to IFPI’s Global Music Report, 2018, in 2017 sharing platforms like YouTube and Vimeo with about 1.3 billion users had about five times the subscribers of audio steaming services like Spotify; yet the revenue that rightsholders realised from licenses given to sharing platforms was only $856 million as compared with $ 5,567 million from streaming services.14

11

Views of music creators cited in Elkin Koren, Namhias & Perel (2020, p. 32). Ingham (2016). 13 Halbert (2009, pp. 938, 960–961). 14 IFPI Global Music Report (2018, p. 27). 12

11.2 News Aggregators

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Rightsowners argued that this ‘value gap’ arose from a policy-induced market distortion which ought to be eliminated by eliminating the safe harbour status of sharing platforms, and thereby treating all digital distributors of music alike in copyright law. Numerous rightsholders from other sectors (images, audio-visual, publishers and to a lesser extent, broadcasters) also reported problems with the unauthorised or under-licensed use of their content by some online platforms. All in all, value gap posed the biggest threat to content industries such as music. However, the valuegap ‘rhetoric’ was questioned by many copyright sceptic academics. They argued that music industry had been showing profit for several years in a row, and that even assuming that “stakeholders are currently receiving inadequate compensation, this is not the result of safe harbour but rather a by-product of fundamental social and economic developments that have transformed the way we create and consume creative content”.15 Further, comparing sharing platforms and streaming services is like comparing apples and oranges; the business models of sharing platforms and streaming services were different, and consequently, the legal risks they face are different. Streaming services are “closed distribution platforms” which directly choose and control the whole universe of content they make available to subscribers; in contrast, “open public-facing platforms” like YouTube “face uncertain and continuous exposure to legal claims arising from their users’ activity, including copyright infringement”. In short, open public-facing platforms and closed distribution platforms are so different that comparing the license fees they pay to rightsowners makes no sense.16

11.2 News Aggregators The content disseminated by the New Media is not limited to music and films; it covers news also. The Internet had profoundly impacted newspaper business; with the advent of online newspaper editions, news aggregators and social media had become the main marketplace for accessing news. By offering short snippets of news from several online publishers with links to the original articles online platforms offering news aggregating services such as Google News, Yahoo News and Microsoft News had radically altered news consumption habits and they began to garner the bulk of advertising revenue associated with the dissemination of news without any necessity of creating content or sharing their advertising revenue with the news publishers from whom they gathered the news snippets. All in all, the business of news aggregating services seemed to defy the old saying ‘no pain, no gain’.

15 16

Elkin-Koren, Namhias & Perel (2019, p. 5). Bridy (2020, pp. 327–328).

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11.3 European Union: Digital Single Market Directive, 2019 The EU was the first entity to address the policy challenges posed by the new intermediaries and news aggregators. The enactment of the DSM Directive (2019) should be seen as a continuation of the efforts the EU had been making since 1991 to harmonise the laws of its Member States relating to copyright and related rights with a view to remove the divergences in national laws and thereby foster a European Single Market. The DSM Directive was expected to ensure that EU fully utilises the capabilities it has to lead in the global digital economy. The decision-making process in the European Union is very complex with European Commission, the European Parliament and the Council sharing equal power and responsibility for adoption of directives (see Sect. 5.2). In the European Parliament itself, five different Subcommittees examine a proposed directive. All in all, different texts emerge during consideration of a directive, and several rounds of multiparty policy negotiations within and between the European Parliament and the Council take place before a consensus emerges. Even by the EU standards the adoption of the DSM Directive was extremely complicated due to two reasons: first, the controversial nature of some of the proposals, and secondly, the copyright policy environment becoming more complex as in the U.S.17 On 14 September 1996, the E.C. came up with a proposal for a directive of the European Parliament and of the Council on copyright in the Digital Single Market.18 The proposal kept intact the provisions of other extant directives relating to copyright excepting for a few changes to the EUCD and the Database Directive19 consequent to the new exceptions proposed by the proposal. Articles 11 dealing with news aggregators like Google News and Article 13 dealing with new type of intermediaries were the most controversial provisions. These proposals were controversial right from the start, and almost every step of the legislative process was marked by intense lobbying and sharp policy conflict, not surprising that safe harbour, which exempted online intermediaries from liability for content hosted by their systems, had been the cornerstone of Internet policy for nearly two decades. Even after the DSM Directive was adopted in 2019 policy controversy did not abate. Poland mounted a judicial challenge to Article 17 of the DSM Directive (corresponding to Article 13 of the Proposal); there were sharp disagreements among other Member States about the implementation of Article 17, again not surprising given that the Article 17 which emerged out from the labyrinthian maze of conflicting interests and ideological viewpoints was a patchwork of compromises susceptible to multiple interpretations. The legislative proposals of Member States for transposition of Article 17 vary widely, so widely that a digital single market would remain a work in progress. 17

For a crisp account of the making of the DSM Directive see Valente (2020, pp. 12–17). Proposal (2016). The Explanatory Memorandum of the Proposal (pp. 1–11) furnishes, inter alia, a summary of the ex-post evaluations of EUCD and stakeholder consultations which provided the inputs for the proposal and impact assessments of the proposal (pp. 6–8). 19 EC Database Directive (1996). 18

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11.3.1 Mandatory Exceptions The proposal proposed three mandatory exceptions which allowed (i) text and data mining (TDM)20 to be carried out by research organisations and cultural heritage institutions for the purposes of scientific research (Article 3); (ii) uses of works and other subject matter in digital and cross-border teaching activities (Article 5); and (iii) cultural heritage institutions21 to make copies of works and other subject matter that were permanently in their collections to the extent necessary for their preservation (Article 6). There were no controversies regarding the exceptions (Articles 3, 5 and 6 of the Proposal) and the proposed exceptions were approved without much ado22 ; however, there were suggestions that the scope of the exception regarding TDM should be expanded.

11.3.2 News Aggregators and Media Monitoring Services (Article 11 of the Proposal and Article 15 of the Final Directive) One of the goals that the directive sought to achieve was that “an online platform must not earn money from material created by people without compensating them”; consequently, “a platform is legally liable if there is content on its site for which it has not properly paid the creator”.23 Article 11 of the Proposal sought to enhance the bargaining power of publishers by explicitly vesting in publishers related rights of reproduction and making available to public; these rights were similar to those vested in film producers, phonogram producers and broadcasting organisations. Such rights were expected to help publishers overcome the difficulties they sometimes faced in proving their copyright ownership in articles written by free lancers, enhance their bargaining power vis-à-vis news aggregators, eliminate the problems they faced in licensing the online use of their publications and help them secure an equitable proportion of the value added by news aggregators and media monitoring services. Article 11 also made it clear that the rights proposed would in no way affect any rights of authors and other rightsholders in respect of the works and other subject matter incorporated in a press publication. The duration of the rights proposed for the publishers was to be twenty years from the first day of January of the year following the date of publication. Recital 33 of the Proposal made it explicit that the 20

TDM is a technique to collect information from large amounts of digital data through automated software tools. For details see TDM, In-depth analysis and Triaille et al. (2014). 21 A cultural heritage institution was defined to be a publicly accessible library or museum, an archive or a film or audio heritage institution. 22 For an analysis of the final provisions, Article 3 and 4, regarding text and data mining see Hugenholtz (2019). 23 EU DSM Directives FAQs (2019).

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new rights for publishers would not “extend to acts of hyperlinking which do not constitute communication to the public”; Recital 34 made it explicit that the new rights for publishers would also be subject to the exceptions to and limitations on the rights of reproduction and making available to the pubic which were provided by EUCD including the exception on quotation for purposes such as criticism or review. On the face of it, the proposal was eminently justified as “these are trying times for press publishers”, “paid subscriptions have generally declined, readership has eroded, and advertising revenues that long supported print journalism have shrunk”, and “the transition to digital publishing has been challenging”.24 Unless the financial sustainability of the press was assured a free and pluralist press, so essential to the proper functioning of a democratic society would wither away. During the deliberations preceding the adoption of the DSM Directive, Article 11 of the Draft Directive came in for extensive criticism by academics and civil society groups.25 Everyone agreed that press publishers faced an ‘existential threat’. However, the critics held that the proposal to add an additional layer of rights was the wrong solution to a serious problem.26 The challenges to the press were “related to secular trends, such as the abundant availability of low-cost “basic” news; and changes in consumer preferences, such as unbundling of digital content and reluctance to pay for “premium” content such as quality journalism”. Further, Germany (2013) and Spain (2014) enacted national legislation similar to that of Article 11, and evidence from those national experiences indicated that conferment of a neighbouring right had a negative impact on publishers’ economic interests. The negative impact was attributed to the fact that the net impact of news aggregators on the originators of online news and their revenues streams is the resultant of two opposing forces: the substitution effect and the market expansion effect. Substitution effect arises if users are satisfied with the snippets of information provided by news aggregators and do not use the link to go to the original source; in such an event news aggregators displace the original sources of news. The market expansion effect arises from the fact that the news aggregators provide snippets of information from a large number of sources many of which may not be known to a user, and the discovery of news sources of information and ‘consuming’ the content provided by such sources would enhance the market for such sources of information.27 Hundreds of academics repeatedly sent warnings about “the ill-conceived plans for the introduction of a new intellectual property right in news” to Members of European Parliament. Among others, they warned that “considering the current high levels of market concentration on online advertising markets and in media”, a publishers’ right may “further

24

Samuelson (2018). For an extensive bibliography of the studies, opinions and sources of data relating to Article 11 of the Draft SDM Directive see CREATe (2017). 26 Remy (2016). 27 Colangelo and Torti (2019, para 2.1, pp. 79–82). Also see Senftleben et al., (2017, pp. 553–555), Hilty and Moscon (2017, pp. 81–86). 25

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strengthen the power of media conglomerates and of global platforms to the detriment of smaller players”.28 The European Copyright Society argued that extending related rights to publishers by equating them with phonogram producers would be unjustified, given that publishing requires very limited upfront investment in technical infrastructure. In addition, creating an extra layer of rights would generate legal complexity and even have detrimental impact on EU research policy’s open access strategy. Senftleben et al. argued that, while copyright and related rights would be effective in the paper era, other instruments such as trade secrets, trademarks and database protection could be more effective for the new forms of reading online. The new right would adversely affect innovation in the very business of press publishing even though from an economic perspective it was essential that publishers, including press publishers, develop new business models in the digital environment.29 Some academics also contended that news aggregators do indeed help media pluralism and diversity of views as they facilitate access to news from different sources; many small newspapers would go unnoticed but for news aggregators. As access to news would be curtailed by the proposal, fake news would be promoted. A number of academics, a study by Technopolis commissioned by the Legal Affairs Subcommittee of the European Parliament and a study commissioned by that Parliament’s Policy Department for Citizens’ Rights and Constitutional Affairs recommended “that the press publishers’ right be abandoned and replaced with a presumption that press publishers are entitled to copyright/use rights in the contents of their publications”.30 Such a presumption “would save a publisher from having to demonstrate he had contractual transfers or use rights in respect of each and every article” and should enforce his rights against news aggregators and media monitoring services, and strike a fair bargain with them. Julia Reda, a German Member of the European Parliament belonging to the Pirate Party, vociferously opposed the directive; she labelled Article 11 as a “link tax” as press aggregators have to purportedly pay for the hyperlinks they use, and claimed that Article 11 would restrict businesses as well as individuals like bloggers who publish news snippets, thereby limiting freedom of information and access to information. However, European publishers very strongly lobbied for the provision so much so with a few modifications Article 11 was approved. Article 15 of the Final Directive differs from Article 11 of the Proposal in six respects. First, the definition of press publications specifically excludes periodicals that are published for scientific or academic purposes such as scientific journals. Secondly, the body of Article 15 incorporates the exceptions mentioned in Recitals 33 and 34 of the Proposal such as (i) private or non-commercial uses of press publications by individuals, (ii) acts of hyperlinking and (iii) use of individual words or very short extracts of a press publication. Thirdly, Article 15 explicitly states that the new rights for publishers shall not be invoked to prohibit (i) the use by other authorised users, and (ii) the use

28

Academics (2018). Senftleben et al. (2017, 549–551, 555). 30 EU Policy Department Study (2017, pp. 8, 22, 24, 26–27, 38). 29

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of works or other subject matter for which protection has expired. Fourthly, the duration of the new rights vested in publishers was drastically reduced from twenty years proposed to just two years. Fifthly, Article 15 would not apply to press publications first published before 6 June 2019. Sixthly, Member States “shall provide that the authors of works incorporated in a press publication receive an appropriate share of the revenues that press publishers receive for the use of their press publications” by news aggregators and media monitoring services. Member States have time till 7 June 2021 to transpose DSM Directive into their national laws. As transposition of the DSM Directive into national laws is not yet complete it is early to say whether despite all the stir the final result may be a scattered harmonisation among the EU Member States. France transposed Article 15 through Act of 24 July 2019, and if one goes by the French experience, it would be quite a task to get Google to fall in line. When the French Act became effective on 25 October 2019, Google immediately announced, as it did earlier with similar Spanish national legislation, that it had no intention of paying any remuneration whatsoever to press publishers and decided unilaterally that it would no longer display article extracts, photographs, infographics and videos within its various services (Google Search, Google News and Discover) unless the publishers granted the authorisation free of charge. The defiance by Google was taken up by the French Competition Authority; in its ruling of 9 April 2020, that Authority held that some of the practices of Google would qualify as anticompetitive practices, and issued interim orders directing Google to negotiate in good faith with the publishers and news agencies who request it according to transparent and non-discriminatory criteria. Google was also required to submit to the Authority monthly reports on how it was complying with the orders of the Authority.31 In October 2020, the Court of Appeals upheld the order of the Competition Authority.32 The use of competition law by France to get Google fall in line indicates that copyright law may be inadequate and stronger laws like competition law may be required to prevent free riding by news aggregators and ensure that newspaper publishers receive fair remuneration for their content. It is significant that Australia, the second country to enact a legislation to prevent free riding by news aggregators, chose to follow the competition route. (Appendix to this Chapter for details). It is pertinent to point out that a few days before the judgement, Google announced the decision to launched curated news service called Google News Showcase with a $1 billion investment in partnership with news publishers. Google claimed that several important publications from Germany, Brazil, Argentina, Canada, the UK and Australia had already signed up.33 The publications covered by Google News Showcase include the Wall Street Journal in the U.S. and The Times and The Sun in the UK. Facebook also launched a similar service called Facebook News which covers, among others, The Economist.

31

Spitz (2020a). Spitz (2020b). 33 Spitz (2020b). 32

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11.3.3 OCSSPs and Safe Harbour (Article 13 of the Proposal and Article 17 of the Final Directive) The dominance of the American tech-giants like Facebook, YouTube and Twitter was a matter of deep concern among the policymakers of the European Union and that concern is a major reason why, while enacting the DSM, “broke rank from the old consensus in (DMCA and EUCD/E-Commerce Directive) limiting the copyright infringement liability of all internet platforms and systems”,34 Article 13 proposed a new regime of responsibility and liability for a new subcategory of intermediaries called “online content-sharing service providers” (OCSSPs). OCSSP is defined as “a provider of an information society service35 of which the main or one of the main purposes is to store and give the public access to a large amount of copyrightprotected works or other protected subject matter uploaded by its users”, and which organise and promote “the content so uploaded for profit-making purposes”. OCSSPs were required either to enter into licensing agreements with rightsowners and pay the license fees or alternately to take down the infringing material. Article 13 specifically suggested use of effective content recognition technologies36 as one of the measures that such intermediaries were required to take; however, with a view to strike a balance between the rights of rightsowners and the interests of users, Article 13 laid down that the measures taken should be “appropriate and proportionate” Article 13 also required the Member States to put in place “complaints and redress mechanisms” to be available to users in case of disputes over the application of the measures by OCSSPs, and further to facilitate where appropriate, “the cooperation between the information society service providers and rightsholders through stakeholder dialogues to define best practices”. From the very beginning, the DSM Directive was a heavily lobbied field, and every weapon in the armoury of lobbying was used by different groups so much so there was a tremendous amount of noise and misinformation, and misleading rhetoric clouding the true nature of the issues. Not surprising given that powerful interest groups were arrayed against each other. One the one side were entertainment industries (European as well as American) which were capable of mounting very strong lobbying effort and stood to gain substantially as the haemorrhage of their revenues through online infringement was likely to be curbed by Article 13. On the other side were the equally strong American high-tech giants like Google, Yahoo and Facebook. It is well known in the literature on the politics of policy change that politics of entrenchment is difficult to surmount, politics of entrenchment being 34

Senate Subcommittee Hearing (2020, Hughes Statement, p. 2). Italics in original. The term used in the EU DSM Directive (2019) for intermediaries. 36 Following the start of the Viacom litigation, YouTube introduced in 2007 Content ID, an automatic content recognition technology, to monitor content being uploaded and identify infringed content. most other video and social platforms like Facebook, Vimeo, Spinrilla, SoundCloud, Dailymotion, Twitch, and Tumblr emulated YouTube by opting for automated content recognition technological systems to monitor the online content relating to them. As YouTube would not licence Content ID, they had been licensing the digital fingerprinting technology from Audible Magic. 35

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the spirited opposition of groups which stand to lose a long-entrenched privilege. Sharing platforms stood to lose the safe harbour sanctuary, a privilege central to their business and which they enjoyed ever since they came into being about two decades ago. The sheer number of lobbies and their size is staggering. Thus, one hundred and forty-five organisations active in the areas of human and digital rights, media freedom, publishing, libraries, educational institutions and software development were active in opposing Article 13. The organisations included the EFF, Creative Commons, European Digital Rights, Max Planck Society, GitHub, various Wikimedia chapters and the Wikimedia Foundation, and the Computer and Communications Industry Association (a mega-association representing Google and other large technology companies). Those in support of Article 13 included Independent Music Companies Association, Society of Authors, Copyright Collecting Societies, academic publishers including the International Association of Scientific, Technical, and Medical Publishers, and major European press publishers and their organisations including Agence France-Presse, the Press Association and the European Alliance of News Agencies. Celebrities also joined the fray with Internet pioneers including Tim Berners-Lee, Vint Cerf, Jimmy Wales and Mitch Kapor opposing Article 13 and cultural personalities like David Guetta, Ennio Morricone, Jean-Michel Jarre, Paul McCartney James Blunt and Philip Pullman supporting Article 13.37 What would have been a battle of corporate giants was turned into opposition by public spirited citizens because Internet savvy users and copyright sceptic academics saw Article l3 as an undesirable curb on the democratisation of cultural creativity and swelled the ranks of the opposition; consequently, universities and research institutions turned into bastions of opposition. Particularly offending was the proposal requiring intermediaries to use automatic content recognition technological systems, simply known as upload filters. It was widely believed that if the proposal were approved Internet users stood to lose the freedom they had for about fifteen years to upload content, and limitations and exceptions would virtually extinguished. Like automated ‘notice and take down systems’ upload filters (see Sect. 11.1) are prone to make mistakes and report ‘false positives’ (wrong indication of infringement when there is no infringement)38 ; more egregiously, they cannot take into account context while determining whether content is infringing or not. Yet without taking the context into account, it is not possible to correctly ascertain whether the content which is being taken down is covered by limitations and exceptions. Distinguishing critical reviews, parodies and transformative remixes from infringing reuses of copyrighted material often involves the kind of contextual decision-making that is easy for humans but difficult for algorithms.39 Analogous to the opposition to TPMs, upload 37

Wikipedia; last accessed on 1 October 2022. For numerous examples of errors see Sag (2017, pp. 543–554). 39 Sag (2017, p. 531). 38

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filters evoked visceral opposition of copyright scholars and Internet libertarians. As a result of the involvement of Internet and citizen activists, and the organisations representing them lobbying by the American technology giants was supplemented by public protests strategically timed to synchronise with important milestones in the processing of the directive. Full use was made of the opportunities provided by social media to mobilise opposition, share information indicting Article 13, blackout popular websites like Wikipedia, and carpet bomb decision makers with emails and automatically generated emails and auto-dialled calls. Citizen protests were complemented by strategically timed open letters of hundreds of academics opposing the latest version of Articles 11 and 13 as the Proposal negotiated the EU decisionmaking structures. In the runup to the DSM Directive it was contended that “upload filters (proposed by the proposal) were incompatible with the right to freedom of expression and information guaranteed by the European Charter of Fundamental Rights”.40 It was contended that copyright law “would degenerate into a censorship and filtering tool with a corrosive effect on freedom of expression, freedom to conduct a business and the protection of personal data”.41 Supporters of Article 11 and 13 blamed Google and other high-tech giants for financing, orchestrating, magnifying and amplifying protests.42 The issue of lobbying, particularly of deceptive, high-spending lobbying by Google, was hotly debated during the discussion in the European Parliament of the Draft Directive in August–September 2018. Many Members of the European Parliament (MEPs) were angered by the online campaign; when they looked around and saw on the streets very limited protests, they felt they were being ‘Astro-turfed’.43 It is not surprising that it was difficult to reach a consensus on the DSM Directive with provisions as controversial as Articles 11 and 13.44 On 20 June 2018, the Parliament approved the motion to reject the recommendation of its Legal Affairs Subcommittee to begin negotiations based on the text proposed by that Subcommittee, with 318 votes in favour, 278 votes against and 31 abstentions. After further negotiations, the European Parliament agreed in September 2018 to start negotiations based on an amended text. The trialogue negotiations between European Commission, Council 40

Critics chose to overlook the fact that the Right to Property (including intellectual property is also a Fundamental Right in the EU Charter. 41 Senftleben (2019, p. 134). Footnote 13 at pp. 134–135 of this citation furnishes a large number of citations of academic critiques of Article 13 of Draft DSM. For a bibliography of research studies and academic opinions on Article 13 see CREATe (2017). Similar arguments were made in the U.S. in regard to upload filters used by sharing platforms like Content ID of YouTube. See for example Sawyer (2009). 42 Orlowski (2018), Rieck (2018). 43 Bailey (2019). This article quoted Helga Truepel, a German MEP as saying “I think it’s due to this message spamming campaign. I talked to some of my colleagues here [and they] are totally pissed off, because in the streets there were a maximum 500–800 people last Sunday… and we were only deleting emails for weeks now’. 44 For an overview of the preparatory work preceding the issue of the proposal (2016), the stand of the Parliament and the Council at various stages which the directive was a work in progress and the views of different stakeholders see EU Legislation in Progress (2019).

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of Europe and European Parliament concluded on 13 February 2019. A Draft Directive which emerged from a formal trialogue meeting incorporated many suggestions made by the opponents of the proposal and also met the concerns expressed by Member States; however, that Draft Directive was not adopted by consensus either by the European Parliament or the Council. The European Parliament approved the directive with 348 votes in favour and 274 against; before the directive was put to vote, a legislative manoeuvre to remove Article 15 (corresponding to Article 11 of the Proposal regarding news aggregators) and Article 17 (corresponding to Article 13 of the Proposal dealing with OCSSPs) from the Final Directive was defeated by just five votes. When the directive approved by the Parliament by majority vote came up for consideration by the Council six Member States rejected the directive (Italy, Sweden, Finland, Poland, The Netherlands and Luxembourg), and Belgium, Estonia and Slovenia abstained. However, the support of the remaining nineteen Member States who backed the Draft Directive was enough to secure approval of the directive. During the deliberations of the Council of European Union, the Netherlands, Luxembourg, Poland, Italy and Finland issued a joint statement that the directive does not strike the right balance between the protection of rightholders and the interests of EU citizens and companies, Estonia issued a separate but similar statement. Even though Germany voted for the Draft Directive it issued a longish statement that while it agreed with the directive it regretted that “it was not possible to agree on a concept for the copyright responsibility of upload platforms that could be broadly supported by all parties”.45 Further, no sooner was the DSM Directive finally approved when Poland challenged the directive in the Court of Justice of European Union (CJEU) broadly on the ground that Article 17(4) (b) and (c) violated the right to freedom of expression and information, guaranteed by Article 11 of the Charter of Fundamental Rights of the European Union. It was generally believed that the Polish move was a cynical, political ploy of the ruling party to score over Civic Platform, the biggest Polish opposition party, in the elections to the European parliament just two days before the elections;46 whatever might be the motive, the move an indication that a large segment of the Polish electorate might not be happy with Article 17. Article 17 is a complex provision which figuratively sought to square the circle and strove to accommodate the conflicting concerns and interests of all the interest groups. Article 2(6) defines an OCSSP. To be labelled an OCSSP, an intermediary should have two characteristics. First, the main purpose of the intermediary should be to enable users to upload and share content; if the main purpose is different such an intermediary is not an OCSSP. Examples of services which are not OCSSPs are: (i) providers of business-to-business cloud services, and cyberlockers which allow users to upload content for their own use, and (ii) online marketplaces the main activity of which is online retail, and not giving access to copyright-protected content. The second characteristic of an OCSSP is that it should provide its services with a profit motive. Thus, providers of services such as open source software development, not-for-profit 45 46

EU Council Member States’ Statements (2019). Fraser and Volpicelli (2019).

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scientific or educational repositories and not-for-profit online encyclopaedias are not OCSSPs. Article 17 (1) removed the entitlement of an OCSSP to safe harbour status under Article 14 of the Electronic Commerce Directive and laid down that an OCSSP performs an act of communication to the public or of making available to the public when it gives public access to protected content uploaded by its users; consequently, a OCSSP becomes primarily liable for infringement. In order to avoid liability, an OCSSP should secure an authorisation (such as a licensing agreement) from the rightsholders for communication or making available the content uploaded by users. Realistically speaking, OCSSPs are unlikely to obtain authorisation for all the content uploaded on their platforms by countless number of users. Hence, Article 17(4) offered an alternative to OCSSPs to avoid liability. In order to avoid liability for unauthorised acts of communication to the public, an OCSSP must demonstrate that it (i) made “best efforts to obtain an authorisation”, (ii) made “best efforts, in accordance with high industry standards of professional diligence, to ensure the unavailability of specific works which the rightholders have provided them with the relevant and necessary information”, and in any event (iii) acted “expeditiously, upon receiving a sufficiently substantiated notice from the rightsholders, to disable access to, or to remove from their websites, the notified works or other subject matter, and make best efforts to prevent their future uploads” (italics added). Article 17(5) provides that the assessment of whether OCSSPs comply with the conditions set out in Article 17(4) needs to be done in light of the principle of proportionality. Article 17(4) was the epicentre of controversy in the runup to the adoption of the directive and even thereafter. Article 17 made no reference to upload filters as they evoked the visceral opposition of most copyright scholars as well as computer users, particularly those who generated UGC. Many argued that even though Article 17 (4) did not, unlike Article 13 of the Proposal, make an explicit reference to the “use of effective content recognition technologies”, the phrase in Article 17 “best efforts, in accordance with high industry standards of professional diligence” was an allusion, a ‘coy’ reference,47 to upload filters which as of 2019 were the state of art automatic content recognition device.48 The obligation ‘to make best efforts to prevent their future uploads’ evoked nearly as much visceral opposition as upload filters. Critics contended that such an obligation ‘requires the implementation of systems that monitor all user-submitted information’ which can be done either through manual human supervision or automated systems or both. Whatever be the system of monitoring chosen, “the intermediaries must filter the entirety of content to detect a reposting of once removed content”.49 Even though Article 17 (4) in effect obliged the OCSSPs to monitor the content uploaded, in deference to the Member States and members of the European Parliament who were opposed to automatic upload filters and the imposition of an obligation on OCSSPs to monitor content, Article 17(8) specifically provided that “the

47

Bridy (2020, p. 353). Grisse (2019, p. 894). 49 Kuczerawy (2020, p. 539). Also see Husovec (2018). 48

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application of this Article shall not lead to any general monitoring obligation”; reconciling Articles 17(4) and 17(8) turned out to be a great challenge in the transposition of Article 17 into national laws of the Member States. Constructive ambiguity in Article 17 was unavoidable given that France and Germany, the Superpowers without whose acquiescence, if not approval, not even a sparrow can fall in EU, differed sharply on the upload filters. France was a strong proponent of the use of upload filters while Germany was opposed to an explicit reference to the use of effective content recognition technologies because of the widespread criticism from the German public.50 As finally adopted, Article 17 tried to mitigate criticism by incorporating a few more provisions such as: (i) exempting from liability for unauthorised communication to the public start-up OCSSPs within their first three years of business, provided that their annual revenues remain below 10 million euros and their average monthly user base is below 5 million, (ii) requiring Member States not only to mandate that OCSSPs “put in place an effective and expeditious complaint and redress mechanism” but also ensure that “impartial and effective” out-of-court redress mechanisms are available for the settlement of disputes, (iii) reiterating that steps taken by OCSSPs in cooperation with rightsholders to prevent uploading of unauthorised copyright material should be “without prejudice to the application of exceptions or limitations to copyright”. In particular, users should be allowed to upload and make available content generated by users for the specific purposes of quotation, criticism, review, caricature, parody or pastiche, and (iv) providing for stakeholder dialogues led and guided by the E.C. to discuss best practices for cooperation between OCSSPs and rightsholders. When discussing best practices, special account was required to be taken, among other things, of the fundamental rights and of the use of exceptions and limitations. Taking into account the results of the stakeholder dialogues, the E.C. would issue guidance on the application of Article 17. High hopes were placed on the stakeholder consultations provided for by Article 17(10) to find a consensual way forward. The E.C. organised six stakeholder dialogue meetings between October 2019 and February 2020,51 and a targeted written consultation from 27 July to 10 September 2020. In spite of elaborate consultations, no consensus was reached, and the E.C. issued guidelines just three days prior to the expiry of the deadline imposed for transposition of Article 17 into national laws (7 June 2021).52 As with the anticircumvention provisions of DMCA, most academic opinion about Article 17 had been critical. Just to mention a few, Pamela Samuelson contended that Article 17 of the DSM was internally contradictory, deeply ambiguous, harmful to small and medium-sized companies as well as to user freedoms of expression, and violative of the European Charter of Fundamental Rights.53 Quintais observed that “the political compromise that led to the final text was shaped more by effective lobbying than sound empirical evidence and expert advice”, and the end result was 50

EU Council Member States’ Statements (2019, p. 3). Keller (2020). 52 These guidelines were termed ‘guidance’ by the E.C. See E.C. Guidance (2021). 53 Samuelson (2021, p. 304). 51

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“an imperfect piece of legislation, with some positive aspects such as the first explicit recognition of the public domain in EU acquis communautaire and plenty of worrisome ones”. Article 14, introduced as part of an amendments package put forward by the European Parliament during the legislative process, placed the legal concept of the public domain within the broader context of the issue of the preservation of cultural heritage. It created the presumption that faithful reproductions of works of visual arts in the public domain would also be part of the public domain unless the originality threshold is met.54 Articles 15 and 17 were worrisome; so was the fact that “the new exceptions are narrow in scope, subject to derogation in some instances, and partly grandfather the existing TPM regime”. From the legal-technical standpoint, the directive fell short of “its stated objectives of harmonisation and legal certainty”.55 Further, “the adoption of upload filters would violate OCSSPs and uploaders’s Articles 6, 8 and 10 of European Convention on Human Rights, the EU’s E-Commerce Directive and the EU General Data Protection Regulation 2016/679 (GDPR)”.56 Matthias Leistner, however, contended that “notwithstanding some tensions which are due to political compromise—the provision fits reasonably well into the system of EU fundamental rights, copyright law and existing provider safe harbours”.57 Be that as it may, in her testimony to the U.S. Senate Subcommittee on Intellectual Property, Julia Reda deposed that Article 17 would not have been enacted but for a broad range of balancing provisions for the benefit of users such as the introduction of a number of new mandatory exceptions, measures to protect the public domain, and provision for the online making available of out-of-commerce works.58 In an article entitled EU Copyright Reform: Our Fight was not in Vain, written after the European Parliament approved the directive, Rada highlighted the fact that despite the failure to stop upload filters and link tax the protest movement could ensure improvements in the text such as (i) limit the ‘infamous’ Article 17 to for-profit platforms, (ii) get fair remuneration of artists accepted as a fundamental principle for the first time at the EU level (Article 18), (iii) require transparency from distributors, such as publishers and record labels, towards the creatives59 whose works they exploit (Article 19), (iv) permit cultural institutions like museums and libraries across Europe to put works online which are no longer commercially available, independent of their copyright status (Article 8) and (v) a mandatory exception for caricature and pastiche throughout EU.60 The proof of the pudding is in the eating. Likewise, the effectiveness and the success of the directive in contributing to the emergence of a European Digital Single Market and of EU being a world leader in the global digital economy very much 54

Giannopoulou (2019). Quintais (2020, pp. 15, 23, 40–41). 56 Moreno (2020, pp. 22–23). Moreno offered suggestions for human rights-compliant implementation Article 17; so did Garstka (2020). 57 Leistner (2020). 58 Senate Subcommittee Hearing (2020, Julia Reda Statement, p. 1). 59 An informal word meaning a person whose job involves creative work. 60 Reda (2019). 55

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depends upon how soon and how well Article 17 would be transposed into the national legislations of Member States. Transposition was considerably delayed as many Member States have been waiting for the issue of guidelines by the E.C. to start the process for the enactment of the implementation legislation, and the E.C. issued the long-awaited guidelines only three days prior to the expiry of the deadline stipulated for transposition. In November 2020, the CJEU began to hear the Poland’s complaint against Article 17 of the DSM Directive. The crux of the matter is how OCSSPs could be made to fulfil their obligations under Article 17 without imposing any monitoring obligation on OCSSPs and further without restricting lawful uses. Broadly speaking, the Member States which had begun the process of transposition early in 2021 fall into opposite groups: (i) “originalists” like France, the Netherlands and Croatia which “seek to preserve a purported ‘original intent’ of Article 17” and consequently champion “simple transpositions of Article 17 that lack any exante user rights safeguards”, and (ii) “textualists” like Germany, Austria and Finland which maintain that “honouring the conflicting legislative objectives embedded in Article 17 of the DSM Directive requires the introduction of checks and balances” which include ex-ante user rights safeguards61 ; without ex-ante users rights safeguards, there is every possibility that content that ought not be blocked would be blocked by OCSSPs, thereby infringing the fundamental rights of expression and information. In simple words, originalists favour the use of automatic upload filters and imposing an obligation on an OCSSP to block a content indicated by a rightsowner to be infringing; a user would have a right to object to the blocking of content ex-post and not ex-ante. In contrast, textualists either prohibit, as Finland proposes to do,62 the use of automatic upload filters or enable the uploaders “to ‘preflag’ any uploads as legitimate; such uploads cannot be subjected to automated blocking”. Hence, unless the CJEU gives a definitive verdict upholding either the originalist or the textualist position, it is likely that there would be quite a bit of variation in the national implementation laws. In February 2021, the Netherlands had enacted an implementation legislation. On 28 May 2021, Bundestag approved the transposition law63 ; in keeping with the “textualist” approach advocated by Germany, the law provides ex-ante protection for “presumably authorised uses”. Champions of users’ rights like Julia Reda were highly appreciative of the German Law and commended that law to other Member States. The E.C. Guidance64 issued about a week after the Bundestag approved the transposition law made a heroic attempt to strike the “right balance between the different fundamental rights at stake, namely the users’ freedom of expression, the rightsholders’ intellectual property right and the OCSSP’s right to conduct a business”. It recognised that content recognition technology needs to be used by OCSSPs to regulate uploading so that the rights of the rightsholders are protected. At the same time, 61

Keller (2021). Also see Geiger and Jütte (2021). Keller (2020). 63 For details and a critique see Reda and Selinger (2021). 64 E.C. Guidance (2021). 62

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it took note of the fact that “in the present state of the art, no technology can assess to the standard required in law whether content, which a user wishes to upload, is infringing or a legitimate use”, and that for leaving the legitimate uses of content unaffected automatic blocking should be limited to manifestly infringing uploads. It is open to a rightsholder to oppose the uploading of content on the ground that the content is infringing, whereupon the OCSSP is required to conduct a human review of the content in order to decide whether it is infringing or not. The Guidance also took note of the fact that unauthorised online availability and ex-post review of uploaded content might in some cases cause significant economic harm to rightsholders, e.g. time sensitive content such as prereleased music or films or highlights of recent broadcasts of sports events. Consequently, the Guidance authorised rightsholders to ‘earmark’ such content; earmarked content can be uploaded even though it may not be manifestly infringing without prior human review of the content and determination that it is not infringing. Most of the comments so far had been from champions of users’ rights, and they have been invariably critical. The European Digital Rights (EDRi), a network dedicated to protection of rights and freedoms online, contended that the E.C. ignored civil society concerns and sided with the entertainment business65 ; EFF was disappointed with the Guidance as it refused to give up automatic filters and gave short shrift to the concerns of civil society.66 Reda and Keller were highly critical of the E.C. Guidance mainly because the ex-ante protection proposed by the Guidelines did not go as far as the German Law. As no conditions were stipulated for earmarking content they contended that the Guidelines had handed over a carte blanche to rightsholders67 ; Jütte and Priora argued that the Guidance further complicated copyright exceptions, and as such it is ‘a further step into a systematic distortion’.68 In defence of the Guidance, it should be said that the compromises that a public policy is required to effect in order to reconcile the conflicting interests of different stakeholders are such that the policies which emerge from the policymaking process are “rarely liked by everybody and frequently little liked by anybody…[and] when seen from the shining cliffs of perfection, the legislative process of compromise appears shoddy indeed”.69 Further, as Woodrow Wilson put it admiringly, compromise is “the true gospel of democratic politics” and “uncompromising thought is the luxury of the closeted recluse”.70 The Guidance itself make it clear that it is not legally binding, and that the Guidance may have to be reviewed after the CJEU delivers its judgement in the Polish challenge to Article 17. It is to be seen whether the Member States, which are yet to transpose Article 17, would be guided by the Guidance, and if so, to what extent. It is also to be seen whether the Netherlands and France would modify their laws in view of the Guidance.

65

EDRi (2021). Schmon (2021). 67 Reda and Keller (2021). 68 Jütte and Priora (2021). 69 Smith (1940, pp. 91–92). 70 Pestritto (2005, p. 224). 66

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In the meanwhile, in July 2021, E.C. issued notices to 20 Member States for failing to meet the deadline of June 7, 2021, for transposing the SDM Directive into national laws, never mind that the Guidance, for which many Member States were waiting, was issued only on June 4, 2021, just three days before the deadline. The issue of a formal notice is the first step before the Member States are hauled up before the CJEU. These notices seem to have hastened the pace of transposition. All in all, by the end of 2021 a total of 11 Member States had fully transposed the provisions of the DSM Directive into national law and one more (Denmark) had implemented Articles 17 and 15. In other words, by the end of 2021 less than half of the EU Member States had implemented the most controversial element of the 2019 copyright reform. The EU Member States which transposed the DSM Directive were ‘united in diversity’. Eight Member States, namely France, the Netherlands, Hungary, Croatia, Estonia, Malta, Ireland and Denmark, had chosen to restate the provision in their national laws presumably because they saw this approach “as a safe bet that does not risk violating their obligations under the directive”. Germany and Austria chose to include substantive ex-ante safeguards against over-blocking in their national implementations. Italy and Spain “included provisions that require that all disputes about blocking must be resolved ex-post, prioritising the interests of rightholders over freedom of expression of users”. On 26 April 2022, the CJEU delivered its long-awaited judgement in the judicial challenge mounted to Article 17 of the DSM Directive by Poland.71 The Court rejected the request of Poland to annul Article 17 with costs. It noted that currently no valid alternatives appear to exist to the use of automatic recognition and filtering tools in order to comply with the obligations under Article 17(4) (b)–(c), and held that the European Charter of Fundamental Rights (Charter) protected not only freedom of expression and information but also the rightholders’ intellectual property within the right to property. The judgement also held that the restriction that the DSM Directive imposed on freedom of expression and information was a reasonable restriction as, among others, the directive provided six key internal safeguards to ensure that the restriction was not unreasonable. The Court cast an obligation on the Member States to ensure that a fair balance is struck between the various fundamental rights protected by the Charter, and also comply with the principle of proportionality while transposing the directive into their national laws. As it invariably happens, interpretations of the judgement differ widely with most academics expressing in favour of a minimalist transposition and rightsholder preferring a strict construction of Article 17 and the judgement.

71

CJEP Judgement (2022). In the case brought up by Parliament, the European Parliament and Council were supported by the European Commission, France, Spain and Portugal; none else supported Poland.

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11.4 Deliberations in the United States 11.4.1 Congressional Hearings As mentioned above (see Sect. 11.1), there were demands to amend the DMCA so as to remove the entitlement of the new intermediaries to safe harbour status. However, as mentioned above (see Sect. 4.6), in the U.S., the Congress did not enact any significant law relating to copyright since 1998 because of the policy stalemate which ensued from the standoff between the rightsowners and the groups opposed to extension of rights; consequently, S.512 continues to be the subject matter of hearings and study. In March 2014, the House Subcommittee on Courts, Intellectual Property and the Internet (Subcommittee on the Judiciary) conducted hearings on S.512 of DMCA.72 At the hearing of the House Subcommittee, two opposite points of view were expressed. The first articulated by Sean O’ Connor, Professor of Law at the University of Washington and quite a few representatives of content providers was that while S.512 was “an excellent solution to problems in the 1990s’ over time the ‘notice and take down’ system ceased to work for artists, copyright owners, or companies in the innovation and creative industries…”73 The opposite point of view was articulated by Annemarie Bridy, a Professor of Law, and a few other witnesses. S.512 had proved to be resilient in the face of the Internet’s evolving culture and technology. No doubt, the scale of copyright infringement online was massive. However, perfect copyright enforcement online was a chimaera being technically impossible and economically infeasible. What S.512 facilitated was not perfect enforcement but fair and workable enforcement. The notice and takedown regime coped well with enforcing copyrights in the voluminous content hosted by online service providers. Corporate copyright owners and intermediaries had cooperated to automate the notice and takedown process to the greatest extent possible, thereby lowering the significant costs associated with enforcement for both groups.74 At the request of the ranking member of the Judiciary Subcommittee, the Registrar of Copyright began study of S.512, and after nearly five years the study was completed. The comments of Bridy and Keller in response to the notice issued by the Copyright Office carried forward the arguments of Bridy put forth before the House Subcommittee.75 Even before the Copyright Office’s Study was published in May 2020, the Senate Judiciary Subcommittee’s Intellectual Property Subcommittee commenced a series of hearings about two themes: (i) “The Digital Millennium Copyright Act at 22: What Is It, Why It Was Enacted, And Where Are We Now?” on February 11, 2020, (ii) “Copyright Law in Foreign Jurisdictions: How Are Other Countries Handling Digital Piracy on March 10, 2020?” and (iii) “How Does the DMCA Contemplate 72

House Subcommittee Hearing (2014). House Subcommittee Hearing (2014, pp. 9, 14–15). 74 House Subcommittee Hearing (2014, p. 16). 75 Bridy and Keller (2016, pp. 1–2, 21–25). 73

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Limitations and Exceptions Like Fair Use?” on 28 July 2020. S.512 figured mainly in the March and July hearings. In her testimony during the March 2020 hearing, Pamela Samuelson told the Subcommittee that while the interests of individual creators and copyright industry groups were no doubt important there were “other important industry, individual creator, and public interests at stake in the regulations that affect online content hosting services”. Due consideration should be given to the interests of creators of UGC, the audiences these UGC creators were reaching, and the U.S. leadership in the Internet and technology industries. She was vehement that the DSM Directive could not be a model for modifying S.512 of DMCA. The goal of Article 17 for EU rightsholders seemed to be “to extract rents from existing US-based mega-platforms”, and “not to provide incentives for new EU-based platforms to compete with the megaplatforms or innovate around them”. U.S. Internet policy “is and should be more procompetitive and pro-innovation, and the U.S. should also retain its leadership in the global arena in the development of sound copyright law and policy, not cede it to EU policymakers who have formulated such a flawed regime as Article 17”.76 The one message that Rebecca Tushnet wanted the members of the Subcommittee to take away from the hearing was that most beneficiaries of S.512 were not Google or Facebook, and that doing away with safe harbour “would destroy the small and medium entities that are vital to innovation, creativity and competition on the Internet”. YouTube’s Content ID was not an appropriate model, and automatic filtering was a mismatch for copyright.77 The testimonies offered by Justin Hughes and Mark Schultz starkly differ from those of Pamela Samuelson and Rebecca Tushnet. Technology and new business models had changed the Internet landscape significantly from what Congress and other national legislatures saw in the late 1990s and early 2000. There are visible cracks and visible loopholes in what was a very robust system laid down by S.512. Hughes put forth the view that EU “chose- quite reasonably- to put responsibility for copyright enforcement on the shoulders of some multi-billion-dollar platforms”.78 Mark Schultz was more vociferous in the demand that the “notice and take down” system should be replaced by “a notice and stay-down’ system”; “adding infringing works to a filter catalogue would automate a notice and stay-down system to deter repeat offenders”.79 The DMCA was “built for an era and a problem long gone”. The DMCA’s “file-based containment strategy is hopelessly outdated”. Copyright owners “are not worried about a particular user uploading a particular infringing file”. The problem is “the non-stop, widespread copying and uploading of creative works by many users”.80 There is an element of continuity in the conflicting views offered by copyright scholars; as in the Copyright Wars of the 1990s and early 2000s “If 76

(2020a, 2020b, 2020c) Senate Subcommittee Hearing (2020, Pamela Samuelson Statement, pp. 19–21). 77 Senate Subcommittee Hearing (2020, Tushnet Statement, pp. 1–2, 12–4). 78 Senate Subcommittee Hearing (2020, Justin Hughes Statement, p. 2). 79 Senate Subcommittee Hearing (2020, Schultz Statement, p. 9). 80 (2020a, 2020b, 2020c, Schultz Written Replies p. 1). Senate Subcommittee Hearing (2020, Schultz Written Replies, p. 1). Apart from oral testimony Schultz also submitted written replies.

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we ask the tech-centric/copyright-sceptics [now in 2020], they are likely to say that S.1201 is a disaster and that S.512 is working just fine; while the creator/copyright proponent will tell us exactly the opposite”.81 In an article, Ginsburg offered a sober comparative analysis of Article 17 of DSM Directive with S.512 of DMCA with a view to consider what the U.S. might learn from the directive. The safe harbour provisions of S.512 and S.12–5 of E.C. E-Commerce Directive replaced the normal copyright default, which requires authorisation to exploit works with a limitation on the liability of service providers who complied with statutory prerequisites. Article 17 had restored the default obligation of securing prior authorisation to exploit works in respect of OCSSPs. The safe harbour provided by S.512 “fostered a vast amount of communication among internet users but also shifted a vast amount of wealth to large commercial actors, without commensurate benefits to the creators of works”. If Congress wishes to revise S. 512 by returning the default from liability limitation to the normal copyright approach of obtaining authorisation, the DSM Directive offers Congress a model.82 In her testimony before the Senate Subcommittee, Ginsburg said that the notice and takedown system has not always worked out as intended largely due to the fact that the vast number of user-generated postings have surpassed anything Congress could have imagined in the late 1990s. This has resulted in an overwhelming burden on copyright owners to monitor for infringement and send takedown notices for every specific instance. Ginsburg also explained that the time window for users to file a counter-notice and have content reposted and for copyright owners to file infringement claims is a narrow one, and she suggested that an alternative dispute resolution system, possibly inspired by the Domain Name online dispute resolution system, should be considered to make notice and takedown more responsive to both users and copyright owners.83

11.4.2 Report of the Study of S.512, DMCA by the Copyright Office The Report of the Copyright Office concluded that the balance Congress intended when it established the S.512 safe harbour system was askew now. Despite the advances in legitimate content options and delivery systems, and despite the millions of takedown notices submitted on a daily basis, the scale of online copyright infringement and the lack of effectiveness of S.512 notices to address that situation continued to remain as significant problems. S.512 and its safe harbours were designed to achieve those goals by providing strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the online networked environment. However, the degree and breath of cooperation between intermediaries and rightsholders that was anticipated in 1998 did not come 81

Newhoff (2020). Ginsburg (2020, pp. 1, 20–21). 83 Senate Subcommittee Hearing, Ginsburg Statement. 82

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to full fruition. Instead of recommending any wholesale changes to section 512, the report chose to point out the numerous areas where Congress may wish to fine-tune section 512 in order to better balance the rights and responsibilities of Intermediaries and rightsholders, in alignment with its objectives when it passed the DMCA.84 The comments of Pamela Samuelson on the report of the study of S.512 by the Copyright Office were similar to the views she expressed in her testimony to the Senate Subcommittee.85 It is hazardous to guess when the Congress would act on the Study of S.512; however, if and when legislation is enacted, it is unlikely that it would retain S.512 as it is.

11.5 Internet Treaties Can Subsume Changes Needed in Safe Harbour Provisions Even though the E.C. had modified the safe harbour provision put in place in 2000 through the E-commerce Directive and the Report of the U.S. Copyright Office concluded that the balance Congress intended when it established the S.512 safe harbour system was askew now and indicated numerous areas where Congress may wish to fine-tune section 512, neither the E.C. nor the U.S., nor for that matter any country had sought revision of the Internet Treaties. Whatever changes are needed in national and regional copyright laws could be made within the broad framework that the Internet Treaties put in place. It may be recalled that the Agreed Statement to Article 8 of WCT makes it clear that “mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention”. It can be legitimately argued that the new intermediaries, or OCSSPs as DSM Directive calls them, provide more than provision of physical facilities, and are a class apart from old intermediaries like MCI Communications and Verizon which were provided a safe harbour in the early implementation legislation; consequently, exempting them from secondary liability has no logical basis. All in all, it could be said that the broad framework that the Internet Treaties put in place for adapting copyright and related rights to the digital era had withstood the phenomenal changes over the last quarter of a century fairly well because (i) the anticircumvention and rights management provisions of the Internet Treaties transposed into the implementation legislations undergird much of Internet economy, and (ii) it is possible to effect the legislative changes needed to deal with the new intermediaries within the framework that the Internet Treaties put in place. Therefore, all in all, the digital provisions of the Internet Treaties have withstood the technological gales of creative destruction and the phenomenal changes in the marketing and consumption of digital content. Of course, a common international approach to the secondary liability of the new intermediaries not known in 1996 would be ideal; but then, as would be elaborated 84 85

U.S. Copyright Office (2020, pp. 197–198). Samuelson (2020).

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in the next Chapter, from the perspective that time provides, the TRIPs agreement and the Internet Treaties were adopted during a brief window of a conducive international copyright policy environment from 1989 to 2000, and that before or later after that window they might not have passed muster.

11.6 Other Types of Regulation Initially, the appearance of social media aroused great hopes among advocates of participatory democracy as they felt that social media could facilitate greater citizen participation in the affairs of the State, and facilitate concerned citizens to mobilise and organise opposition to policy initiatives and actions of government; further social media could give an impetus to ‘citizen journalists’ to disseminate the ‘truth’ as they saw and challenge the ‘disinformation’ purveyed by Big Media. However, there was increasing realisation that online environment’s growing influence in personal lives and digital markets was not only for the better: “algorithms challenge our democracies by disseminating hatred and division, tech giants challenge our level playing field, and online marketplaces challenge our consumer protection standards and product safety”; the threats posed by Big Tech can be combated only by having a legal framework that would ensure that what is illegal offline is also illegal online.86 There is also increasing belief all over the world that the entitlement of social media like Facebook and Twitter to safe harbour status without any obligation to monitor the content and take down any objectionable had resulted in social media being purveyors of objectionable content. A complementary concern arises from the fact that sharing platforms enjoy ‘Good Samaritan’ protection from civil liability arising from the removal or moderation of third-party material they deem obscene or offensive as long as it is done in good faith. As a result of that protection sharing platforms have come to be “the New Governors’ of online speech”87 ; the New Governors exercise their power to ‘censor’ in a partisan way and consequently democracy is imperilled by “conversation in the public sphere” being governed not by “established customs and traditions in the service of democracy” but by “rules set up by a few for-profit companies”.88 And further, the weaponisation of social media poses a great challenge to the practice of democracy; social media is being used in many countries to target minorities, independent media and political opponents, and use massive trolling and disinformation campaigns to vilify them and make them objects of hate. The space for dissent and fairness of electoral practice is being subverted through abuse of the possibilities social media provide. All in all, one can notice a global trend of Big Tech facing a “trust deficit” and a shift “from the existing ‘negligence-based’ intermediary liability system—grounded on the principle of ‘no-monitoring obligations’—to a regime that requires intermediaries to undertake proactive monitoring and filtering 86

Christel Schaldemose, Member European Parliament. cited in European Parliament (2021). Klonick (2018, pp. 1669–1670). Also see Big Tech (2020), Ramaswamy and Rubenfeld (2021). 88 Applebaum and Pomerantsev (2021). 87

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of content”.89 As government actions against Big Tech pile up in one country after another, it creates a bandwagon effect. Any law imposing liability on the new types of Internet intermediaries for the content they host or transmit has to balance three considerations: (i) preventing harm such as copyright infringement, hate speech and terrorism, (ii) protecting free expression and (iii) fostering innovation and facilitating market entry. The more harmful the content is the higher the priority for the first consideration (preventing harm) in the balance the law seeks to achieve. Protection of free speech necessitates procedural safeguards to ensure that content is not taken down because of false complaints or that the limitations and exceptions provided by copyright law are not taken away by the law imposing new obligations on new intermediaries. Casting an obligation on a platform to monitor users’ communications raises serious questions about surveillance and privacy; legal requirements which require the use of expensive technologies for monitoring and of automatic filters would disadvantage small businesses offering services as a new intermediary.90 It is also to be borne in mind that regulation of social media is being used to prevent dissenting opinions for being disseminated by reining social media; an example of the saying “damned if you do and damned if you don’t”. There is also increasing concern that while digital platforms have opened up new vistas of opportunities a few digital platforms had acquired extraordinary market power and had emerged as digital gatekeepers between businesses and citizens. The term “gatekeepers” is “commonly referred to platforms providing online services (e.g. online marketplaces) or controlling and influencing access to online services (e.g. operating systems, app stores and voice assistants) and thereby exercising control over entire ecosystems, with a strong impact on competition and innovation in the digital field”.91 The concern about these gatekeepers was elaborately outlined by the EU document Regulating Digital Gatekeepers: Recent reports and studies have shown how a few large platforms have become online gatekeepers, controlling key channels of distribution because of a variety of factors, including strong network effects in the digital environment (i.e. users are more likely to value and choose platforms with a large user base), their intermediary role (i.e. between sellers and customers), and their ability to access and accumulate large amounts of data (e.g. users’ personal and non-personal data and competitors’ sales data)… A range of exploitative and exclusionary conduct and transparency-related issues that might warrant ex-ante regulation have been identified. These concern, inter alia, self-preferencing, i.e. unfairly favouring own products and services to the detriment of competing businesses (e.g. pre-installation and default settings exclusively of gatekeepers’ own products/services); preferencing of a third party, i.e. unfairly favouring a third party’s products or services to the detriment of competing businesses (e.g. discriminating between trade partners without reasonable cause); unjustified denial of access to the platform or functionalities necessary to conduct business (e.g. denial of access to the platform’s payment services); unjustified denial of access to collected data (e.g. data that end users allow the platforms to share); imposition of exclusionary terms and conditions for access (e.g. unfair blocking of certain 89

Frosio and Mendis (2020, p. 547). Keller (2019), Senate Subcommittee Hearing (2020a, 2020b, 2020c), Daphne Keller Statement, pp. 10–12. Also see van Hoboken and Keller (2019). 91 European Parliamentary Research Service (2020, p. 2). 90

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functionalities); unjustified tying and bundling practices, i.e. selling or offering together distinct goods/services without proper justification (e.g. adding applications to the primary service), imposing unclear or unreasonable terms and conditions on business users (e.g. excessive pricing for access to the platform) or on end users (e.g. excessive gathering of enduser data), unduly restricting or refusing data portability, i.e. impeding individuals from obtaining and reusing their personal data for their own purposes across different services, effectively locking end-users into one platform; and also unduly restricting or refusing interoperability (i.e. the ability of a system, product or service to communicate and function with other systems, products or services) making it very difficult or impossible for businesses and end-users to switch platforms. The implementation of such practices may discourage potential competitors and business users from competing and could translate into high barriers to entry into the market for new players and reinforce users’ lock-in situations. As a result, without intervention, negative effects on competition, on consumer choice and on innovation in alternative digital services may arise. (Boldfacing in original).92

No wonder that Big Tech like Google, Facebook, Amazon and Apple have been the targets of hundreds of antitrust investigations not only in the U.S. and EU but also in several countries including India.93 In the U.S., President Biden’ appointment of Lina Khan as Chairman of the FTC is seen as a significant step towards reining Big Tech. Lina Khan had won instant fame with her article, The Amazon Antitrust Paradox,94 wherein she argued that a company like Amazon can abuse its market power even if it uses that power to lower prices for consumers, rather than raising them, and that consequently consumer welfare standard presently used in antitrust enforcement is unequipped to capture the architecture of market power in the contemporaneous digital economy. As antitrust law as enforced now cannot rein in Amazon, it is imperative to make far-reaching changes to antitrust enforcement so that monopolistic practices of Amazon could aggressively blocked. Her appointment was seen to be indicative of the fact that taking on Big Tech had come to be a rare bipartisan concern in the American government,95 and that “if [Lina Khan is] given license to run with her ideas, Big Tech’s ability to consolidate power and snuff out competition could be curtailed for the first time in years”.96 In the EU and the U.S., ex-ante regulation is in process as existing ex-post antitrust rules and their enforcement are considered to be “too slow, cumbersome and unpredictable for the fast-moving digital sector”. Apart from antitrust action against some of the digital platforms like Google and Facebook, the European Commission has also initiated to put in place exante regulation to ensure that markets characterised by large platforms acting as digital gatekeepers remain fair and competitive for innovators, businesses, and new 92

European Parliamentary Research Service (2020, pp. 2–3). For an update, as of February 2022, of the antitrust investigations against Amazon, Apple, Facebook and Google see Panettieri (2022). In India Amazon, Apple, Google, and Walmart’s Flipkart are under investigation by the Competition Commission. 94 Khan (2017). 95 ‘Yes They Khan’ (2021). 96 Nickelsburg (2021). 93

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market entrant. Ex-post the proposed Digital Markets Act would cover “core platform services” which would have the following features: (i) highly concentrated multisided platform services, where usually one or very few large digital platforms set the commercial conditions with considerable autonomy; (ii) a few large digital platforms act as gateways for business users to reach their customers and viceversa; and (iii) gatekeeper power of these large digital platforms is often misused by means of unfair behaviour vis-à-vis economically dependent business users and customers. These core platform services include: (i) online intermediation services (including for example marketplaces, app stores and online intermediation services in other sectors like mobility, transport or energy) (ii) online search engines, (iii) social networking (iv) video sharing platform services, (v) operating systems and (vi) cloud services. With a view to stop core platform services from imposing unfair conditions on businesses and consumers the Act will establish obligations for them, “do’s” and “don’ts” they must comply with in their daily operations. Such practices include ranking services and products offered by the gatekeeper itself higher than similar services or products offered by third parties on the gatekeeper’s platform or not giving users the possibility of uninstalling any preinstalled software or app. Compliance with the obligations imposed would be enforceable by means of fines and periodic penalty payments.

11.7 Regulation of New Intermediaries as Purveyors of Objectionable Content 11.7.1 United States A measure of the concern comes out from the fact that “at a time when America’s political parties can agree on very little” there is a universal demand to revise S.230 of the Communication Decency Act which provides intermediaries a safe harbour status rendering them immune from general liability arising from hosting and disseminating fake news and hate speech. Various proposals to amend S.230 are afoot in the U.S.

11.7.2 European Union Concern about the Big Tech being used as purveyor of fake and false news and of targeted campaigns of hate is not limited to the U.S.; the European Commission had proposed the issue of the Digital Services Act, which would require large tech platforms that reach more than 10% of the EU’s population each month to actively look for and mitigate risks from harmful and illegal content, goods or services online. The proposed Act is expected to significantly improve the removal of illegal content, making sure it is done as fast as possible. The proposed Act would introduce new

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obligations on platforms to disclose to regulators how their algorithms work, on how decisions to remove content are taken and on the way advertisers target users. It would require yearly external audits and impose new transparency requirements towards users and regulators. Large platforms could be ordered to change their behaviour following such audits and could face hefty fines up to 6% or 10% of annual worldwide revenue if they don’t comply.97

11.7.3 India In February 2021, the Indian government had issued very comprehensive Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021prohibiting social media platforms from hosting content that the Rules deem to be objectionable. The Rules created a special category of ‘significant social media intermediaries’, such intermediaries being social media with users above the threshold notified by the Central Government. The special category includes Facebook, YouTube, WhatsApp and Twitter; an intermediary falling in the special category has to discharge additional duties and responsibilities in order to be entitled to the safe harbour status.98 Among such additional duties and responsibilities the one which had turned out to be the most contentious is the obligation cast on providers of messaging services such as WhatsApp to divulge the ‘first originator information’; this provision is designed to track down people who use messaging services to spread fake news or carry out illegal activities. However, this provision had been objected to by organisations like the Internet Freedom Foundation on the ground that identification of the first originator would require the messaging service providers to break their end-to-end encryption protocols and that might lead to a dangerous invasion of privacy. In fact, in May 2021, WhatsApp filed a suit in the Delhi High Court challenging the provision on the ground that it encroaches upon the right of privacy and further that the latest rules exceed the scope of Government’s rule-making powers. In June 2021, Twitter was very much in the news with the government faulting Twitter for not complying with the rules and the Uttar Pradesh government filed a case against it over the circulation of a video on its platform, alleging that it was meant to provoke communal tensions between different communities.99 In July 2022, Twitter challenged the legality of orders issued by the Government of India ordering it to block Twitter accounts and identified content of such accounts. After initial opposition many ‘significant social media intermediary intermediaries’ had seemingly fallen in line with the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021. However, government feels that social media like Google, Twitter and Facebook had not done enough to proactively remove fake news on their platforms; such inaction on fake news was forcing the Indian Government to 97

Schechner (2020), Gatekeeping Rules (2020). Prashant Reddy (2021a). 99 Prashant Reddy (2021b). 98

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order content takedowns, which in turn drew international criticism that authorities were suppressing free expression’.100

Appendix: Australia’s News Media101 and Digital Platforms Mandatory Bargaining Code A survey by the Australian Competition and Consumer Commission, spread over eighteen months, brought out (i) the imbalance in bargaining power between the news aggregators and the news publishing businesses, and (ii) the former taking away the lion’s share of advertising revenue from traditional media, thereby threatening the viability of the news businesses.102 Based on the Commission’s survey, the Federal Government asked the Commission, in April 2020, to develop a mandatory code to address the imbalance in bargaining power. The Commission released a draft News Media and Digital Platforms Mandatory Bargaining Code for public consultations on 31 July 2020. The Code provided a framework for news aggregators and the newspaper publishers to reach an agreement on the terms and conditions subject to which the content of the newspaper publishers could be used by news aggregators. The Code provided a right to the press publishers to notify news aggregators of their intention to commence negotiations whereupon the news aggregators are required to negotiate in good faith all issues relevant to news on digital platform services. The news aggregator and the press publishers are expected to reach an agreement within three months; if no agreement is reached, an independent arbitration process is initiated wherein each party (an Australian news publisher and a platform) would put forward a proposal, and an independent arbitrator would decide which proposal was more reasonable. The award of the arbitrator would be binding on both parties. If the news aggregator does not comply with the award, it could be subjected to a penalty up to ten per cent of its revenue in Australia. All in all, the Code relied on the competition law for enhancing the bargaining power of press publishers instead of conferring a related right on the press publishers as the EU did. The Code also incorporated a non-discriminatory clause whereby a news aggregator was bound not to delist Australian publishers from its news services; this was done to forestall actions like that of Google in Spain where it unilaterally removed Spanish publishers from Google News and closed down the Spanish version of Google News. Further, the Code also required a news aggregator to give publishers advance notice of the changes to algorithmic ranking and presentation of news; it also required a news aggregator to share with press publishers consumer data collected by it.103 During the legislative process, Microsoft came out strongly in support of the proposed legislation while Google and Facebook strongly opposed the legislation; 100

Reuters (2022) Press publishers are called ‘news media’ in Australia. 102 Meade (2021). 103 Matulionyte (2020). 101

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both Google and Facebook threatened retaliation, with Google threatening to pull out its search engine from Australia and Facebook threatening to block users from posting Australian news on its platform. During the consultations, all political parties and nation’s media, small and big, welcomed the Code. Thereupon, the Federal Government introduced the necessary legislation to give a statutory basis to the Code. Only Facebook followed up its threat and come February 18, 2021, Australians woke up to find that Facebook blocked news for its Australian users. Google entered into agreements with large publishers such as News Corp, Nine and Seven West Media (one of the big four Australian media) as well as quite a few smaller outfits such as Junkee and Private Media. The contrasting stands of Microsoft, Google and Facebook is explained by two factors: (i) the relative importance of the Australian market for a firm, and (ii) the relative importance of news in its overall business. The Bing search engine, operated by Microsoft, had only five per cent of the Australian market for search engines.104 In contrast, the Google search engine dominated that market; blocking links to news would have rendered Google’s search engine much less useful, sending customers to rivals such as Microsoft’s Bing. That explains the eagerness of Google to enter into agreements with the Australian media. In contrast to Microsoft and Google Facebook does not offer a search engine, and further news represents less than four per cent of what users see in its feed. And further, though Australia is one of Facebook’s biggest foreign markets, it represents only a sliver of its global revenues. So, walking away did not hurt Facebook as much as Google.105 The heavy-handed blocking by Facebook of all media content from its site was aggravated by the fact that official health pages, emergency safety warnings and welfare networks were all scrubbed from the site along with the news. Facebook’s action elicited universal criticism not only in Australia but also abroad. Scott Morrison, the Australian Prime Minister, spoke to his counterparts in Canada, France, India and the UK. The strong reaction to Facebook’s action was aptly summed up in the remark of E. C’s President Ursula von der Leyen at the Munich Security Conference that “we just cannot leave decisions, which have a huge impact on our democracies, to computer programmes without any human supervision or to the board rooms in Silicon Valley”.106 The universal condemnation of its action forced Facebook to return to the negotiation table, and in return for minor concessions Facebook lifted the blocking of news. After the negotiations a few amendments were incorporated in the proposed legislation; these changes “mainly concern the procedure for how the negotiations are to be run” and leave intact “the main principles on how the Code will function”.107 The amendments made it clear that a decision apply the Code to a particular platform should take into account whether the platform “has made a significant contribution to the sustainability of the Australian news industry through reaching commercial agreements with news media businesses”. A month’s advance notice 104

Porter (2021). Done Over (2021). 106 Taylor et al. (2021). 107 Matulionyte (2021). 105

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would be given to a platform before it is designated. Mandatory arbitration would be a last resort where commercial deals cannot be reached by requiring mediation, in good faith, to occur prior to arbitration for no longer than two months.

Similar legislation is under process in Canada, and even the U.S. is likely to have legislation relating to news aggregators.108 In India, itself, on the very day the Australian legislation was enacted the Indian Newspaper Society wrote to Google demanding that Google should share 85% of its advertising revenue with newspaper publishers, and further that it should also furnish to the publishers details of its advertising revenue.109 Further, the Digital News Publishers Association had moved the Competition Commission to investigate the misuse of market dominance by Google; the Association alleged that Google not only dominates the market for information but also abuses this dominance by not providing a fair share of the advertising monies and by not providing adequate information. It has also complained that it does not get paid for the news snippets that appear in search. The association’s broader point is that the terms of engagement are “unilaterally and arbitrarily” dictated by the tech platform, and there is nothing its members can do about it. The imbalance of power and the denial of a fair share of revenue will be questions that the watchdog will be interested in exploring. Based on the complaint of the Association the Commission ordered an investigation.110

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Hilty, R., & Moscon, V. (2017). Modernisation of the EU copyright rules: Osition statement of the Max Planck Institute for Innovation and Competition. Max Planck Institute for Innovation & Competition Research Paper No. 17-12. Hugenholtz, P. B. (2019, 24 July). The new copyright directive: Text and data mining (Articles 3 and 4). Kluwer Copyright Blog. Available at http://copyrightblog.kluweriplaw.com/2019/07/24/thenew-copyright-directive-text-and-data-mining-articles-3-and-4/. Last accessed on September 30, 2022. Husovec, M. (2018). The promises of algorithmic copyright enforcement: Takedown or staydown? Which is superior? And why? Columbia Journal of Law and Arts, 42, 53–84. Indian Express. (2021a, February 26). Need to pay more to newspapers for using content: INS to Google. Indian Express, 2021a. International Federation of the Phonographic Industry (IFPI), Global Music Report, 2018. Ingham, T. (2016, June 21). Revealed: The 186 artists fighting the YouTube-shielding DMCA. Music Business Worldwide. Jütte, B. J., & Priora, G. (2021, June 9). A further step into a systematic distortion. Kluwer Copyright Blog. http://copyrightblog.kluweriplaw.com/2021/06/09/a-further-step-into-a-system atic-distortion-the-ec-guidance-on-article-17-cdsm-directive-further-complicates-copyright-exc eptions/. Last accessed on October 1, 2022 Keller, D. (2019, August). Build your own intermediary liability law: A kit for policy wonks of all ages. The Center for Internet and Society, Stanford University. Keller, P. (2020, February 13). Article 17 stakeholder dialogue (Day 6): Hitting a brick wall. Communia. https://communia.association.org/2020/02/13/article17-stakeholder-dialogue-day6-hitting-brick-wall/ . Last accessed on 3 December 2022. Keller, P. (2021, January 21, 22). Divergence instead of guidance: The Article 17 implementation discussion in 2020, Parts 1 and 2. Kluwer Copyright Blog. http://copyrightblog.kluweriplaw. com/2021/01/21/divergence-instead-of-guidance-the-article-17-implementation-discussion-in2020-part-1/&…-part-2. Last accessed on October 1, 2022. Klonick, K. (2018). The new governors: The people, rules, and processes governing online speech. Harvard Law Review, 131, 1599–1670. Kuczerawy, A. (2020). From “Notice and Take Down” to “Notice and Stay Down”: Risks and safeguards for freedom of expression. In G. Frosio (Ed.), The Oxford handbook of intermediary liability online (pp. 525–543). Oxford University Press. Khan, L. M. (2017). The Amazon antitrust paradox. Yale Law Journal, 126, 710–805. Lawrence, D. L. (2019). Notes: Addressing the value gap in the age of digital streaming. Vanderbilt Journal of Transnational Law, 52, 511–543. Lee, T. J. (2021, February 25). The end of the beginning: Australia passes law to force Facebook and Google to pay for news. Arstechnica. Leistner, M. (2020). European copyright licensing and infringement liability Under Art. 17 DSM directive compared to secondary liability of content platforms in the U.S.—Can we make the new European system a global opportunity instead of a local challenge? Zeitschrift Für Geistiges Eigentum/intellectual Property Journal, 2, 123–214. Madrigal, A. C. (2018, November 8). How YouTube’s algorithm actually works. The Atlantic. Matulionyte, R. (2020, November 9). Press publishers’ right: Australia proposes its own version. Kluwer Copyright Blog. http://copyrightblog.kluweriplaw.com/2020/11/09/press-publis hers-right-australia-proposes-its-own-version/. Last accessed on October 2, 2022. Matulionyte, R. (2021, March 24). News media bargaining code: Australia now has its own version of the press publisher’s right. Kluwer Copyright Blog. http://copyrightblog.kluweriplaw.com/ 2021/03/24/news-media-bargaining-code-australia-now-has-its-own-version-of-the-press-pub lishers-right/. Last accessed on October 2, 2022. Meade, A. (2021, February 16). Google and Facebook: The landmark Australian law that will make them pay for news content. The Guardian.

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Menell, P. S. (2012, May 3). Judicial regulation of digital copyright windfalls: Making interpretive and policy sense of Viacom v. YouTube and UMG Recordings v. shelter capital partners. Media Institute. Moreno, R. F. (2020). “Upload Filters” and human rights: Implementing Article 17 of the directive on copyright in the digital single market. International Review of Law, Computers & Technology, 34(2), 1–30. Newhoff, D. (2020, February 17). DMCA review begins. Watch the Red Flag illusionofmore.com, 2020. Available at https://illusionofmore.com/dmca-review-begins-watch-the-redflag/. Last accessed on February 26, 2022. Nickelsburg, M. (2021, April 21). Amazon’s antitrust adversary: What Lina Khan’s Senate hearing reveals about Big Tech’s future. Geekwire. https://geekswire/2021/amazons-antirust-adversarylina-khans-senate-hearing-reveals-big-techs-future/. Last accessed on 3 December 2022. Orlowski, A. (2018, September 12). Article 13 pits Big Tech and bots against European creatives. The Register. Panettieri, J. (2022, February 7). Big Tech antitrust investigations: Amazon, Apple, Facebook and Google Updates. Channel Le 2e. Porter, J. (2021, February 24). Australia passes law requiring Facebook and Google to pay for news content. The Verge. Pestritto, R. (Ed.). (2005). Woodrow Wilson: The essential political writings. Lexington Books. Prashant Reddy, T. (2021a, February 27). New IT rules: The great stretching of ‘Due Diligence’ requirements under Section 79. The Wire. Prashant Reddy, T. (2021b, 17 June). What we should really be asking about Twitter and its legal immunity status in India. The Wire. Quintais, J. P. (2020). The new copyright in the digital single market directive: A critical look. European Intellectual Property Review, 42(1), 28–41. Ramaswamy, V., & Rubenfeld, J. (2021, January 11). Save the constitution from Big Tech. Wall Street Journal. Reda, F., & Keller, P. (2021, June 4). European Commission back-tracks on user rights in Article 17 guidance. Kluwer Copyright Blog. http://copyrightblog.kluweriplaw.com/2021/06/ 04/european-commission-back-tracks-on-user-rights-in-article-17-guidance/. Last accessed on October 1, 2022. Reda, J. (2019). Blog. EU copyright reform: Our fight was not in vain. https://felixreda.eu/2019/ 04/not-in-vain/. Last accessed on 4 December 2022. Remy, C. (2016, June 13). A neighbouring right for press publishers. The wrong solution to a serious problem. Kluwer Copyright Blog. Reuters. (2022, February 2). In heated meeting, India seeks tougher action from US Tech Giants on Fake News. The Wire. Rieck, V. (2018, August 18). Anatomy of a political hacking. Frankfurter Allgemeine. Sag, M. (2017). Internet safe Harbors and the transformation of copyright law. Notre Dame Law Review, 93, 499–563. Samuelson, P. (2018). Legally Speaking: Questioning a New Intellectual Property Right for Press Publishers. Kluwer Copyright Blog, November 19, 2018. Available at http://copyrightblog.klu weriplaw.com/2018/11/19/legally-speaking-questioning-a-new-intellectual-property-right-forpress-publishers/?doing_wp_cron=1597831438.5368249416351318359375. Last accessed on October 1, 2022. Samuelson, P. (2020, May 25). The US Copyright Office Section 512 study: Why the entertainment industry is claiming victory. Kluwer Copyright Blog. http://copyrightblog.kluweriplaw.com/ 2020/05/25/the-us-copyright-office-section-512-study-why-the-entertainment-industry-is-cla iming-victory/. Last accessed on October 1, 2022. Samuelson, P. (2021). Pushing back on stricter copyright ISP liability rules. Michigan Technology Law Review, 27, 299–334. Sawyer, M. S. (2009). Filters, fair use and feedback: User generated content principles and the DMCA. Berkeley Technology Law Journal, 24(1), 363–404.

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Schechner, S. (2020, December 15). Tech giants face new rules in Europe, backed by Huge Fines. Wall Street Journal. Schmon, C. (2021, June 3). The EU Commission’s refusal to let go of filters. Electronic Frontier Foundation. https://eff.org/de/deeplinks/2021/06/eu-commission-guidance-article17-do-not-letgo-filters. Last accessed on 3 December 2022. Senftleben, M., Kerk, M., Buiten, M., & Heine, K. (2017). New rights or new business models? An inquiry into the future of publishing in the digital era. International Review of Intellectual Property and Competition Law, 48(5), 538–561. Senftleben, M. (2019). User-generated content—towards a new use privilege in EU copyright law. In T. Aplin (Ed.), Research handbook on intellectual property and digital technologies (pp. 133– 162). Edward Elgar. Smith, T. V. (1940). The legislative way of life. University of Chicago Press. Spitz, B. (2020a, April 14). Press publishers’ right: The French competition authority orders Google to negotiate with the publishers. Kluwer Copyright Blog. http://copyrightblog.kluwer iplaw.com/2020a/04/14/press-publishers-right-the-french-competition-authority-orders-googleto-negotiate-with-the-publishers/. Last accessed on October2, 2022. Spitz, B. (2020b, October 14). Press publishers’ right: The court of appeal of Paris upholds the competition authority’s order for Google to negotiate with the publishers. Kluwer Copyright Blog. http://copyrightblog.kluweriplaw.com/2020b/10/14/press-publishers-right-the-court-ofappeal-of-paris-upholds-the-competition-authoritys-order-for-google-to-negotiate-with-the-pub lishers/. Last accessed on October 2, 2022. Taylor, J., McGowan, M., & Bland, A. (2021, 19 February). Misinformation runs Rampant as Facebook says it may take a week before it unblocks some pages. The Guardian. Triaille, J.-P., de Meeûs d’Argenteuil, J., & de Francquen, A. (2014). Study of the legal framework of text and data mining (TDM), prepared for the European Commission. De Wolf and Partners. Trust Deficit: On tech platforms and new publishers, The Hindu, January 13, 2022. Urban, J. M., Karaganis, J., & Schofield, B. L. (2016). Notice and takedown in everyday practice. University of California. Valente, M. G. (2020). Digital technologies and copyright: International trends and implications for developing countries. Digital Pathways at Oxford Paper Series Number 1, Oxford University. van Hoboken, J., & Keller, D. (2019, October 8). Design principles for intermediary liability laws. Working Paper of the Transatlantic High-Level Working Group on Content Moderation Online and Freedom of Expression. Available at https://www.ivir.nl/publicaties/download/Intermediary_ liability_Oct_2019.pdf; last accessed on October 2, 2022. Wikipedia. (2022). Directive on copyright in the digital single market. https://en.wikipedia.org/wiki/ Directive_on_Copyright_in_the_Digital_Single_Market. Last accessed on October 1, 2022. Yes They Khan. 2021. Joe Biden Appoints Lina Khan to Head the Federal Trade Commission. The Economist, 19 June 2021.

B. Official Documents I. Cases European Union CJEU Judgement. (2022). Judgement of the Court dated 26 April 2022 in C-401/19—Poland v Parliament and Council. Available at https://curia.europa.eu/juris/document/document.jsf? text=&docid=258261&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid= 4159967. Last accessed on October 2, 2022. United States Lenz v. Universal Music Corporation, 572F. Supp. 2d (N.D.Cal. 2008). Viacom International, Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012).

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Senate Subcommittee Hearing. (2020). Statement of Jane Gisnburg. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on How Does the DMCA Contemplate Limitations and Exceptions Like Fair Use? July 28, 2020. Senate Subcommittee Hearing. (2020). Statement of Jonathan Band. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on The Digital Millennium Copyright Act at 22: What Is It, Why It Was Enacted, And Where Are We Now?, February 11, 2020. Senate Subcommittee Hearing. (2020). Statement of Mark Schultz. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on The Digital Millennium Copyright Act at 22: What Is It, Why It Was Enacted, And Where Are We Now?, February 11, 2020. Senate Subcommittee Hearing. (2020). Statement of Rebecca Tushent. The United States Senate Committee on the Judiciary Subcommittee on Intellectual Property, 116th Congress, Hearing on The Digital Millennium Copyright Act at 22: What Is It, Why It Was Enacted, And Where Are We Now?, February 11, 2020c. United States Copyright Office. (2020, May 2020). Section 512 of Title 17. A Report of the Register of Copyright.

Chapter 12

WIPO’s Policy Environment and Performance (1997–2021)

Abstract This Chapter begins by describing how in the early 2000s WIPO’s copyright policy environment, like that in many countries, had changed very dramatically, and WIPO was figuratively transported on a Time Machine back to the long period from the 1960s to 1989s when, because of North–South confrontation, the periodic revision of the Berne Conference was given up as hopeless and dangerous. The Chapter narrates the developments in WIPO after the Diplomatic Conference (1996) such as the emergence of a strong Access to Knowledge (A2K) movement whose votaries believed that limitations and exceptions are more important than rights, the stalemate which emerged due to the failure of the A2K movement to get a treaty on limitations and exceptions and of the developed countries to strengthen enforcement of patents and copyright, the adoption of a Development Agenda by WIPO and its implementation, the failed attempt to negotiate a plurilateral Anti-Counterfeiting Trade Agreement (ACTA) and the adoption of Beijing Treaty on Audiovisual Performances, 2012 (BATP) and the Marrakesh Treaty, 2013. It ends with an exploration of the question as to whether the adoption of BTAP and the Marrakesh Treaty herald an end to the troubled times of WIPO. The Chapter concludes with the observation that an uneasy equilibrium exists between Member States which wish to usher a new copyright paradigm and others which are committed to the conventional copyright paradigm and that one cannot be certain how long that equilibrium lasts and how it impacts on the working of WIPO.

12.1 Lull Before the Storm In November 1997, Bogsch demitted office after a twenty-four-year-long reign and Kamil Idris succeeded him. Though the first DG from a developing country Idris had imbibed WIPO’s philosophy fully. The objective of book he wrote as DG, WIPO, Intellectual Property: A Powerful Tool for Economic Growth, was to dispel the popular myths that IP is “a negative force”, that it “stymies creativity” and that it is “irrelevant to developing countries”. The central message of the book is that “IP is a Performance described in this Chapter relates to copyright and related rights © The Author(s), under exclusive license to Springer Nature Singapore Pte Ltd. 2023 R. V. V. Ayyar, The WIPO Internet Treaties at 25, https://doi.org/10.1007/978-981-19-8390-0_12

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‘power tool’ for economic development that is not yet being used to optimal effect in all countries, particularly in the developing world”; “it offers the possibility of growth and economic development in a way that is not a ‘zero sum game’, where if some win, others will lose”. International acceptance and utilisation of lP tools would “lead to more innovation and therefore more creative change and cultural and economic growth”. The mission of WIPO was “to promote the protection of lP rights worldwide and to help extend the reach of the benefits of the international lP system to all its Member States”.1 Suffice to say, the transition from Bogsch to Idris brought about no discontinuity either in WIPO’s mission or its operations. There was every reason to believe that with successful conclusion of the TRIPs negotiations and the DipCon the adverse policy environment that prevailed for about a quarter of a century after the Stockholm Conference was gone, seemingly forever, and the unfinished agenda of the TRIPs negotiations and the DipCon could be briskly concluded. The Digital Agenda approved by the WIPO General Assembly in 1999, at the behest of the DG, WIPO, comprised (i) entry into force of the WCT and the WPPT before December 2001 and (ii) completing the unfinished agenda of the DipCon, namely (a) the extension of the principles of the WPPT to audio-visual performances, (b) adaptation of broadcasters’ rights to the digital era and (c) review of the need for the conclusion of an international instrument on the protection of databases.2 The first item of the agenda was fulfilled with WCT entering in force in March 2002 and WPPT in May 2002. The Database Treaty never took off; in the EU itself, the Directive on Databases came in for a scathing indictment in an internal evaluation (2005).3 Of the two other treaties listed in the Digital Agenda, only the treaty on audio-visual performances was adopted in 2012, and that too four years after Idris completed his tenure. To elaborate a little bit about the treaty on audio-visual performances, in compliance with the resolution adopted by the DipCon in regard to audio-visual performances (see Sect. 2.3.2), WIPO constituted a Committee of Experts to consider audiovisual performances in March 1997. The Committee had two sessions before its work was subsumed by the Standing Committee on Copyright and Related Rights (SCCR) which was constituted as part of the reform process in WIPO. SCCR discussed audiovisual performances in three sessions; however, no consensus was reached, and the positions taken during the DipCon remained unchanged. As ever, free transferability of rights and irrebuttable presumption of transfer of rights continued to be a Gordian knot. There was also difference of opinion on whether protection for audio-visual performers should be provided through a Protocol to WPPT or through a standalone treaty. European countries, the African Group and GRULAC were in favour of a Protocol to WPPT as such a protocol would extend the provisions of the WPPT mutatis mutandis to audio-visual performers. The U.S. and several Asian countries including India were in favour of a standalone treaty so that key provisions such as those relating to moral rights, transfer of rights and national treatment can depart 1

Idris (2003, pp. 4–5, 9). WIPO Digital Agenda (1999), Annex to WIPO Digital Agenda (1999). 3 DG Internal Market (2005). 2

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significantly from the corresponding provisions in the WPPT. The WIPO General Assembly decided in April 2000 that a Diplomatic Conference should be convened from 7 to 20 December 2000 and that Jukka Liedes, Chairman of the SCCR, should draft the Basic Proposals to be considered by the Diplomatic Conference. The Basic Proposals had alternate proposals in respect of unresolved issues including the legal nature of the instrument. After publication of the Basic Proposals in September 2000, WIPO organised five regional consultations, one each for (i) Central European and Baltic States, (ii) Commonwealth of Independent States, (iii) African Group, (iv) Asia–Pacific Group and (v) GRULAC; representatives of the E.C., U.S. and Japan attended these consultations and presented their views. A special feature of the Diplomatic Conference was constitution of a Working Group with limited membership from each region to accelerate negotiations. Representatives of a region in the Working Committee had to continuously apprise other delegations of the region and elicit their views in order to arrive at a common position of the region. Considerable progress was made at the Diplomatic Conference; after heated discussions, a provisional compromise was reached on almost all substantive provisions (nineteen in number) along with some agreed statements. A compromise was reached even in respect of the article dealing with the highly controversial question of moral rights (see Sect. 2.3.2). It was also agreed that the instrument would be a standalone treaty called WIPO Audiovisual Performances Treaty. However, the Conference could not overcome a deadlock between the U.S. and India on one side and the EU on the other over the question of transfer of rights. The U.S. “with a strong work-madefor-hire doctrine to protect movie producers from fragmented demands by actors, scriptwriters and directors, argued that a transfer of rights provision was necessary to secure efficient global distribution of motion pictures”. The EU, “with a tradition weighing more heavily the rights of individual artists, opposed transfer of rights for producers”.4 Most EC countries felt that the U.S. proposal of a mandatory rebuttable presumption that once he consented to fixation a performer transferred all his rights to the producer would further weaken the as-it-is weak bargaining position of performers; in a lighter vein, it was said that if the transferability clause was accepted the WPPT would confer rights on the producer rather than the performers and strengthen the dominance of American film industry.5 All in all, there is truth in the saying of an American official after the failure of the 2000 Diplomatic Conference that continental Member States of EC were wary of reliance on laissez-faire methods (as the U.S. did) and preferred State regulation.6 A treaty could have been adopted by majority vote. However, with such an eventuality India and the U.S., the two leading producers of films in the world, would not have acceded to the Treaty as accession would have required far-reaching changes to be made in the long-standing practices of their film industries. Rather than have a treaty on audio-visual performances without the U.S., the Diplomatic Conference wound up adopting a resolution recommending 4

Fellmeth (2012, p. 1211). Bernard (2002, p. 1154). 6 WIPO members fail to agree on performers’ rights for audiovisual treaty. Patents, Trademarks and Copyright Journal, 61, 232. Cited in Bernard (2002, footnote 153 at p. 1154). 5

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to WIPO General Assembly that the Diplomatic Conference should be reconvened for the purpose of reaching an agreement on outstanding issues. The title of Silke von Lewinski’s article on the 2000 Diplomatic Conference, International Protection for Audiovisual Performers: A Never-Ending Story?,7 is very apt. A Diplomatic Conference could be convened only in 2012, not only because of the difficulties involved in arriving at a compromise with which the widely divergent practices of the film industries around the world could live with but also because about midway through Idris’s stint as DG, WIPO was figuratively transported on a Time Machine back to the period from 1960 to 1980s when discussions about the development needs of developing countries and the special consideration they should be given in the IPR regimes dominated the agenda of WIPO. As during the earlier phase of confrontation, revision to international patent law was a major battleground. WIPO’s mission of unequivocally promoting IPR protection was severely questioned with the introduction of a proposal submitted in August 2004 by Argentina and Brazil to establish a “Development Agenda for WIPO”. After WIPO began considering the development agenda, the policy environment turned adverse for development and adoption of new IP treaties and harmonisation of standards and at the same time became congenial for articulating the voices of user groups and civil society organisations.

12.2 TRIPs Agreement: Shift in Balance of Power External impulses contributed a great deal to the developments in WIPO. Even as almost everyone believed that with the opposition of the developing countries having been neutralised, the Uruguay Round would be followed by further rounds of trade liberalisation and expansion of the scope of the TRIPs agreement, the international policy environment for trade liberalisation and expansion and stringent enforcement of IP changed dramatically in 1999. After the TRIPs agreement was concluded, the bargaining power of the developing countries increased enormously because of the confluence of two steam of events, one specifically relating to pharmaceutical patents and the other relating to overall political events. The first stream emerged “from the crucible of the global HIV/AIDS pandemic”8 ; a strong civil society movement for affordable medicines bestirred itself to roll back the TRIPs provisions regarding pharmaceutical patents, which in its view would escalate the as-it-is high drug prices, and would curtail access to drugs, particularly retroviral drugs for the treatment of HIV/AIDS. The political stream of events began with the Seattle WTO Ministerial Conference (1999) which was wrecked by street demonstrations in protest against free trade and globalisation policies of WTO and the American government; after those protests, the developed countries were very keen that the next Ministerial Conference at Doha in 2001 would not be a repeat of Seattle but be a success by

7 8

von Lewinski (2001). Kapczynski (2010, p. 37).

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reviving the process of trade liberalisation. Just two months before the Doha Conference, the apocalyptic attack on the World Trade Towers, New York, (9/11) occurred triggering shockwaves that reverberated throughout the world economy. This unexpected turn of events made the success of the Doha Conference a vital necessity for the U.S. and other developed countries as they believed that a successful Doha conference and the commencement of a new round of trade negotiations would revive business confidence. As a result of these developments, the TRIPs provisions in respect of pharmaceutical patents and public health emerged, to quote Michael Moore, DG WTO, as “a deal-breaker for a new trade round”.9 As a result, the developed countries were willing to go more than halfway to concede the demand of developing countries that they should be allowed to issue compulsory licences for pharmaceutical products in order to meet public health emergencies. The Doha Ministerial Conference issued two declarations, the first being Doha Ministerial Declaration covering all aspects of the meeting and the second the Doha Declaration on the TRIPs agreement and Public Health more specific to pharmaceutical patents.Paragraph 19 of the Ministerial Declaration laid down the principle that the TRIPs Council should fully take into account the development dimension and be guided in its work by the objectives and principles set out in Articles 7 and 8 of the TRIPs agreement. In effect, these two articles ensured that some policy space was preserved for development and public interest, thereby ensuring the availability of built-in flexibilities to deal with exigencies like a public health emergency. Paragraph 5 of the Doha Declaration on the TRIPs agreement and Public Health highlighted “the right to grant compulsory licences and the freedom to determine the grounds upon which such licences are granted”, and to determine what constitutes a public health emergency. The title of an article by Peter Yu, TRIPs Wars: Developing Countries Strike Back, is very apt.10 Many developing countries, health and IPR activists were proud of the two Doha Declarations as a great victory and relied on the Doha Declarations as justification for some of the demands of the WIPO Development Agenda.

12.3 Doha Declaration Spurs A2K Movement The success of the Access to Medicines campaign at Doha encouraged activists to replicate that success in ‘other substantive areas where global intellectual property rules had a significant impact on public policy objectives of importance to developing countries such as access to educational material and scientific knowledge’.11 The movement of proximate relevance to this book is the A2K movement. A2K movement did not have an equivalent of the highly resonant slogan of the Access to Medicines Campaign, namely ‘Patients before Profit’. Yet what came in handy was the opposition to the anticircumvention provisions and attempts to curb P2P file 9

’t Hoen (2002, p. 42). Yu (2015a). 11 Latif (2010, p. 103). 10

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sharing. Corporate greed and the venality of governments were portrayed as coming in the way of ordinary users of Internet availing the enhanced access to information, knowledge and entertainment made possible by the progress of technology. James Love of Consumer Project on Technology (CPTech) played an important role in providing much-needed links between developing countries, civil society groups and academia based in the North.12 The A2K movement came to be a large coalition comprising (i) international civil society organisations like Consumers International, International Federation of Library Associations and Institutions (IFLA), Third World Network, TransAtlantic Consumer Dialogue and Oxfam, (ii) foundations with deep pockets like the Rockefeller Foundation and the Open Society Foundation of George Soros, (iii) national organisations as Creative Commons, EFF, Free and Open Source Software, Open Access Publication and (iv) academic copyright scholars in the U.S., Canada and the E.C. opposed to the strengthening of the exclusive rights of rightsowners to the detriment of public interest. As is customary with such broad coalitions, the members of coalition had divergent views on what was to be done. Thus, at one extreme were some A2K proponents who “wish to reorder IP law so that IP protection is the exception to an otherwise rather uninhibited exchange of knowledge” but many did not seek root and branch reform of IP laws, but favoured rendering “IP law more balanced in order to better facilitate a more open and efficient transfer of knowledge and information”.13 Among the proposals for reordering copyright law was introduction of binding rules that set maximum level of permissible protection in international law.14 The intellectual props for the A2K were provided by publications like the Report of the Commission on Intellectual Property (United Kingdom, 2002)15 and Multilateral Agreements and a TRIPs-Plus World: World Intellectual Property Organisation (WIPO) published by the Quaker United Nations Office, Geneva,16 and events like the Bellagio Dialogues (2002–2005) organised by the UNCTAD and International Centre for Trade and Sustainable Development (ICTSD) with the support of the Rockefeller Foundation,17 the United Nations-sponsored World Summit on Information Society (Geneva 2003 - Tunis 2005),18 and the meetings on the functioning of WIPO and global access to essential learning tools by the TransAtlantic Consumer Dialogue on IP (2004). 12

Latif (2010, pp. 105, 112). Williams (2012, pp. 1046–1047). 14 Ruse-Khan (2009), Kur & Ruse-Khan (2011). 15 U.K. IP Commission (2002). 16 Musungu and Dutfield (2003). 17 Karaganis (2012). A Geneva based network comprising the International Centre for Trade and Sustainable Development (ICTSD), the South Centre, the Centre for international Environmental Law and the Quaker United Nations Office played an important role in the organization and follow-up of the dialogues. 18 The World Summit on Information Society was held in two phases, the first in Geneva in December 2003 and the second in Tunis in November 2005. Geneva Information Summit Declaration (2003) was the first UN document to use the expression ‘access to information and knowledge’. 13

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12.4 WIPO Development Agenda Reflection over A2K movement and other cognate movements brought out very clearly that reinventing WIPO held the key to the future of all such movements. Critics of the functioning of WIPO faulted WIPO for conducting itself as if we are not a specialised UN agency. Each international organisation has a distinct operational style which is related to its Domestic Political Environment comprising the mandate of the organisation, its constituency and protagonists, organisational structure and sources of funding.19 Till WIPO became a UN specialised agency in 1974, its objective was “to promote the protection of intellectual property throughout the world through cooperation among States”.20 It was only after decolonisation and many newly independent countries joined it that BIRPI, WIPO’s predecessor, ceased to be a rich countries’ club. Even after developed countries ceased to be majority, WIPO had a large degree of autonomy because about 90% of its funding comes not from Member States (as with many UN agencies) but from the private sector by way of fees paid by patent applicants under the PCT (Patent Cooperation Treaty), effectively from the community of patentees. Therefore, rightsholders, particularly patent holders, were a major constituency of WIPO. After WIPO became a UN agency, its mandate was no longer limited to promoting the protection of intellectual property throughout the world through cooperation among States. The agreement between UN and WIPO (1974) recognises WIPO as a specialised agency “responsible for taking appropriate action in accordance with its basic instrument, treaties and agreements administered by it, inter alia for promoting creative intellectual activity” and “for facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate economic, social and cultural development”.21 Therefore, WIPO’s single-minded focus on strengthening IP in the belief that strong protection of IP would everywhere lead to development through the promotion of trade, investment and innovation was questioned by those who wished to effect a paradigm change in the conception of IP and the functioning of WIPO. IPR activists strongly argued that as a UN specialised agency WIPO was bound “to reflect and respond to priorities set up by the UN General Assembly” in regard to “promotion of economic development in the poorer member countries of the UN”.22 In other words, WIPO’s activities are bound to promote the various goals and objectives of development laid down by the UN General Assembly such as the Millennial Development Goals and the Sustainable Development Goals. That being so, WIPO should (i) “act to integrate development objectives into its approach to the promotion of IP protection in developing countries” and (ii) “give explicit recognition to both the benefits and costs of IP protection and the corresponding need to adjust domestic regimes in developing countries to ensure that the costs do not outweigh the benefits”. WIPO should also ensure that its advisory committees include representatives 19

Weiler (1984, p. 142). Article 3, Convention Establishing WIPO (1967). 21 Agreement between UN and WIPO (1974). 22 May (2007, pp. 161, 163). 20

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from a wide range of constituencies so that the voice of rightsholders was not the only voice heard in WIPO. Further, WIPO should seek closer cooperation with other relevant international organisations such as UNCTAD, UNESCO and WHO.23 There is voluminous literature on the A2K movement and the agenda for transforming WIPO into a development agency.24 In a manifesto he drew up for WIPO, James Boyle had suggested that WIPO should be required (i) to perform an ‘Intellectual Environmental Impact’ of each new proposal for the expansion of rights, detailing the effect of the proposal on the public domain, (ii) to furnish “formal, detailed and specific statement of costs and benefits” for any proposed action, (iii) “to be a counterforce to the tendency to impose ‘one size fits all’ solutions worldwide, not the place where ‘TRIPS-plus’ standards are to be pursued”, (iv) to adopt a more participatory and transparent procedure for all its activities, particularly norm setting, by involving civil society groups, (v) to be open to alternatives and additions and (vi) to embrace the Internet as an opportunity rather than a threat to IP.25 The Geneva Declaration on the Future of WIPO, which arose from a workshop organized by the TransAtlantic Consumer Dialogue and whose signatories included a galaxy of copyright-sceptic American, Canadian and European scholars called for “a moratorium on new treaties and harmonisation of standards that expand and strengthen monopolies and further restrict access to knowledge”. By stopping efforts “to adopt new treaties on substantive patent law, broadcasters’ rights and databases WIPO would create space to address far more urgent needs such as a treaty on access to knowledge and technology”.26 The proposal for the establishment of a Development Agenda for WIPO was formally submitted in August 2004 by Argentina and Brazil for the consideration of the forthcoming WIPO General Assembly; the proposal incorporated the various ideas articulated about WIPO being transformed into a development agency. The Argentine and Brazilian proposal had five key elements in regard to copyright and related rights; First, development concerns should be fully incorporated into all WIPO activities. WIPO Convention (1967) should be amended to ensure that the development dimension is an essential element of WIPO’s work programme. Secondly, new layers of IP protection in the digital environment should not be added as such layers would obstruct the free flow of information and scuttle efforts to set up new arrangements for promoting innovation and creativity through initiatives such as the Creative Commons. Thirdly, IP enforcement should be approached in the context of broader societal interests and development-related concerns; the rights of countries to implement their international obligations in accordance with their own legal systems and practice, as clearly foreseen by Article 1.1 of TRIPS, should be safeguarded. The Advisory Committee on Enforcement (ACE) set up by the WIPO in 2002 should be 23

U.K. IP Commission (2002, pp. 102–104, 157–159). See for example Menescal (2005), May (2007), Netanel (2009), de Beer (2009), Muzaka (2012), Halbert (2017). 25 Boyle (2004, pp. 8–10). 26 TransAtlantic Consumer Dialogue (2004). For the role of academics in the attempt to bring about a global paradigm shift see Morin (2014). 24

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guided by a balanced approach to intellectual property enforcement and not merely focus on protecting the interests of rightsholders and curbing infringement. Fourthly, WIPO’s technical assistance to its Member States for drafting IPR legislations should ensure that national laws on intellectual property are tailored to meet each country’s level of development and are fully responsive to the specific needs and problems of individual societies. Further, the technical assistance should assist developing countries to make full use of the flexibilities in existing IP agreements to promote important public policy objectives. Fifthly, WIPO should foster the active participation of public-interest NGOs in its subsidiary bodies to ensure that in IP norm setting a proper balance is struck between the producers and users of technological knowledge. WIPO should give up its practice of applying the term ‘NGO’ to any organisation that is independent from government, including private sector organisations. WIPO should distinguish between organisations representing the interests of IP right holders and NGOs representing the public interest.27 It is noteworthy that many of the issues included in the Argentina-Brazil proposal were “remarkably similar to the draft resolution on intellectual property that was put before the UN by Brazil in 1961”,28 a validation of Susan Sell’s aphorism that ‘everything old is new again’.29 Developing countries forcefully strove in UN and its agencies as well as BIRPI and its successor WIPO to ensure that the special needs of developing countries were recognised and addressed. In actuality, very little came out from the efforts made development countries during the period 1960s to 1980s to ensure that international IPR law factored in their developmental needs. While some progress was made (e.g. the Appendix to the Berne Convention), the agenda of developing countries received a huge setback with the adoption of the TRIPs agreement. Hence, advocates of WIPO Development Agenda strongly articulated the view that the “new development agenda” should not go the way of “old development agenda”. Be that as it may, there are significant differences between the “old development agenda” and the WIPO Development Agenda.30 First, during the period 1960s-1980s the North–South confrontation was not limited to IP and BIRPI; it spanned a vast range of issues and the whole UN system; in contrast, the twentyfirst century was a time of troubles only for IP and the multilateral organisations dealing with it, namely WIPO and WTO. Secondly, during the earlier confrontation, international forums were essentially state-centric and NGOs were not important players in national as well as international forums. This was not so in the new millennium after the Access to Health movement arose in response to the TRIPs agreement. Thirdly, the confrontations of the twenty-first century were not exactly North–South confrontations. The most trenchant critics of the emerging international copyrightrelated rights system as well as functioning of WIPO had been Northern academics like Michael Geist and Lawrence Lessig and digital and users’ rights organisations

27

May (2007, pp. 163–164); WIPO Argentina-Brazil Proposal (2004). Menescal (2005), May (2007, p. 22), Yu (2009). 29 Sell (2011). 30 Yu (2009, pp. 546–573), Bannerman (2016). 28

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of the U.S. and EU. An informal alliance between Northern academics and organisations and the more activist developing countries drove the WIPO Development Agenda, A2K movement and the demand for an international treaty on limitations and exceptions. Fourthly, in the 21st century 24/7 media greatly facilitated NGOs to reframe the public debate such that it is less favourable to corporate interests; as years rolled by and social media became more and more prominent political mobilisation, and fast exchange of information, online advocacy became easier thereby making it easier for NGOs to take on the might of the corporate interests, State and international organisations. After three years of intense and acrimonious negotiations over several alternative proposals, a pruned-down Development Agenda with six clusters and forty-five recommendations was adopted by WIPO General Assemblies in September 2007.31 Many of the ideas espoused by the Group of Friends of Development and the African Group found a place in the Development Agenda; these countries were successful in introducing in WIPO a new and parallel vocabulary of discourse on IP and development. To illustrate, the WIPO Development Agenda as approved by the WIPO General Assembly required the norm-setting activities of WIPO (i) to be inclusive and Member-driven, (ii) to take into account different levels of Development, (iii) to take into consideration a balance between costs and benefits, (iv) to be a participatory process, which takes into consideration the interests and priorities of all WIPO Member States and the viewpoints of other stakeholders, including accredited intergovernmental organisations (IGOs) and NGOs and (vi) be in line with the principle of neutrality of the WIPO Secretariat (Recommendation 15). Further, WIPO was required to consider the preservation of the public domain within WIPO’s normative processes and deepen the analysis of the implications and benefits of a rich and accessible public domain (Recommendation 16), take into account in its activities, including norm setting, the flexibilities in international intellectual property agreements, especially those which are of interest to developing countries and least developing countries (Recommendation 17). And further, WIPO’s norm-setting activities were to be supportive of the development goals agreed within the United Nations system, including those contained in the Millennium Declaration (Recommendation 22). Sara Bannerman had a point when she claimed that “one of the most important battles of the Development Agenda at WIPO—the battle over the inclusion of development in WIPO’s mandate—has already been won”.32 Hitherto, WIPO did not go beyond the remit laid down by the Convention establishing it; WIPO as well as developed countries were of the firm view that strengthening IP protection was inherently a pro-development activity because such protection fostered creativity and innovation, and thereby development. Other aspects of development and public policy lay beyond the realm of the WIPO. The UN did not need another development agency when it already had several such agencies, exclusively devoted to and with 31

For the 45 recommendations under the WIPO Development Agenda see WIPO Development Agenda (2007). Italics added in the points of the WIPO Development Agenda for the sake of emphasis. For a concise account of the evolution of the WIPO Development Agenda see de Beer (2009, pp. 1–23). 32 Should be Bannerman (2009b, p. 25).

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specific competence in development, such as UNCTAD and the UNDP. However, eventually developed countries went by consensus and did not object to the WIPO Development Agenda as recommended by the Provisional Committee and approved by the WIPO General Assembly. A cross-regional group of eighteen countries called Development Agenda Group in 2010 was formed to give a fresh impetus to the organisational transformation of WIPO from “a technical, treaty-administering body servicing primarily intellectual property right holders to a truly representative agency of the United Nations (UN) assisting Member States in achieving their development goals through a balanced and calibrated use of intellectual property”.33

12.4.1 Implementation of Development Agenda WIPO initially considered the Development Agenda to be ‘a distraction’34 ; according to Ficsor, after the DipCon WIPO continued its normal activities such as norm setting till a ‘sudden disruption’ took place in September–October 2004 “as a result of the parallel emergence of two agendas, (first)the agenda embodied in the ‘Declaration on the Future of WIPO’, and (secondly, the agenda in) the proposal for a Development Agenda”. Behind the Declaration was “a specific alliance of three groups combining their agendas: consumer organisations in the front line of the alliance, ‘copyleft’ academics who provided the ideological basis and Internet intermediaries with their big economic and lobbying power”. WIPO’s history and actual programmes did not justify the claim made in the Geneva Declaration that “WIPO was mainly paying attention to the interests of rightsholder” and “was neglecting public interest and the special needs of developing countries. The first proposals for the Development Agenda ‘seemed to be affected by badly founded allegations in the Declaration’”. “Fortunately,” the Agenda adopted by the WIPO General Assembly, “was a wellbalanced document reflecting the needs and expectations of developing countries” which “have always been taken into account by the Member States, and, in accordance with their instructions, the Secretariat of WIPO”. In 2012, the phase of disruption gave way to a period of consolidation with the adoption of the BTAP in 2014 and the Marrakesh Treaty in 2013.35 Silke von Lewinski offered a more nuanced view of the Development Agenda. The proposals put on the table were not revolutionary and “they refer to issues that have been among WIPO’s main concerns throughout its existence”. However, as a consequence of the Development Agenda WIPO was likely to address new issues such as competition practices. Developing countries “felt bullied to adopt the TRIPs agreement and even higher standards in regional and bilateral agreements”; 33

WIPO CDIP (2010, p. 2). The eighteen countries Algeria, Brazil, Cuba, Djibouti, Ecuador, Egypt, Guatemala, India, Indonesia, Iran, Malaysia, Pakistan, the Philippines, South Africa, Sri Lanka, Sudan, Uruguay and Yemen. 34 de Beer (2009, p. 2). 35 Ficsor (2020, pp. 84–5).

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the Development Agenda can be seen as “a reaction to these pressures, and a signal to other countries to stop this tendency”. The Development Agenda “may reflect the wish of Member States to redirect WIPO’s focus to development issues”, particularly in the area of norm setting.36 Willingly or unwillingly, WIPO could not but be seen to be implementing the Development Agenda because of the large number of its Member States swearing by the Agenda. Thus, in 2009, Francis Gurry who succeeded Idris in 2008 established a Global Challenges Division to address public policy issues. Commenting on that establishment, Gurry stated that “in the past, WIPO has not engaged in these issues, so we want to move from isolationism to engagement”. In July 2009, WIPO organised a major Conference on Intellectual Property and Public Policy Issues to address: “the interface of intellectual property with other areas of public policy, notably health, the environment, climate change … and serve as a global forum to discuss issues and solutions to some of the major challenges in relation to intellectual property the world faces today”.37 A tectonic shift in policy is of little consequence if implementation is incommensurate with the policy shift. Writing in 2009, just two years after the adoption of the Development Agenda Jeremy de Beer noticed that “so far WIPO and the CDIP38 are proceeding with (a) literalist interpretation and that “there is already a disjoint between the way that WIPO sees the agenda and the way it is described in much of the scholarly and policy literature”. As in any difficult multilateral instrument, the Development Agenda liberally resorted to constructive ambiguity. It makes “nine references to the need for ‘appropriate’ actions in different contexts, four to ‘balance’ and nearly twenty invocations of the concept of “development,” yet there had been no consensus on the connotation of these terms”.39 The Development Agenda has “no statement of objectives or principles or preambular language which could provide guidance for interpreting the recommendations” categorised under six clusters.40 Even after a decade after the adoption of the Development Agenda, polarisation of views about what development is and what the Development Agenda stands for came out in the session of the WIPO General Assembly in 2014. Developing countries like South Africa said that the mainstreaming of the Development Agenda remained a challenge, that with the adoption of the Development Agenda business cannot be as usual at WIPO, and that WIPO should function as a UN agency. The U.S. candidly observed that the Development Agenda was “used to block progress in a number of WIPO bodies”. WIPO was created to promote IP protection throughout the world through cooperation among states, and “this objective has not been changed by the Development Agenda”. The Development Agenda was intended to support development through the use, the protection and enforcement of IP, and not to obstruct the 36

von Lewinski (2008, paragraph 21.12, p. 547). Latif (2011, p. 37). 38 WIPO CDIP (2010). CDIP is the Committee on Development and Intellectual Property established by WIPO to oversee the implementation of the WIPO Development Agenda. 39 de Beer (2009, pp. 2, 9). 40 Syam (2019, pp. 32–33). 37

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substantive work of WIPO committees. It might be time “to collectively rethink the function of Development Agenda so that this organisation can continue carrying out its substantive work according to the mandate for the benefit of all Member States” (Italics added for emphasis).41 Implementation also fell short of what the Development Agenda called for because of complexity which “is manifested in a variety of ways, from the web of institutions affected by the agenda to the schizophrenic positions of WIPO Member States”.42 Since its establishment in 2007, CDIP approved thirty-six projects for implementing various recommendations of the Development Agenda, of which twenty-nine were completed and evaluated. Many of these projects did not depart from the traditional paradigm of IP and development. While WIPO continued to offer awards with the objective of generating publicity to promote wider understanding of how the IP system works to serve creativity and innovation, no awards were instituted for developing inventions or creations through open source models or for taking measures to enhance the public domain. The failure of WIPO and its Member States to agree on a normative agenda for strengthening the public domain as mandated by the Development Agenda Recommendation 20 was very glaring. Contrary to the expectations of many scholar-activists and developing countries saw the Development Agenda was not functioning as “a multi-pronged reform agenda for transforming the orientation of WIPO to development challenges in relation to the IP system”.43 Michael Blakeney’s assessment that the jury is still out on the effectiveness of Development Agenda is rather optimistic.44

12.5 Revisionist Perception of the Internet Treaties It was mentioned above (Sect. 2.4.2) that strong critics of the Lehman Report and the initial U.S. stand at the DipCon were appreciative of the WCT and that Pamela Samuelson opined WCT is “about as balanced and sensible a copyright agreement as it was conceivable to get” and that “someday, the Geneva conference may be seen as a turning point—the time when copyright law began to take its place as one of the fundamental building blocks of a new world economy”.45 In contrast to the nuanced judgments soon after the Internet Treaties came into being, the narratives which propped up the A2K movement and the WIPO Development Agenda were critical of the WCT without any qualification and viewing the WCT solely through the prism of access to knowledge and users’ rights. In this New Speak, the TRIPs agreement was itself an abomination, and any international or regional or bilateral instrument which expanded the scope and level of protection of copyright beyond 41

Saez (2014). de Beer (2009, pp. 12–14). 43 Syam (2019), pp. 39, 60, 65, 73. 44 Blakeney (2020, pp. xviii, 208). 45 Samuelson and Browning (1997). 42

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what the TRIPs agreement provided was TRIPs-plus and per se worse than the abomination of a TRIPs agreement.46 The developing countries were cautioned against giving in to pressure “to accede to the WIPO Copyright treaty, or even to adopt stricter prohibitions against circumvention of technological protection systems and effectively thereby reducing the scope of traditional ‘fair use’ in digital media”.47 It would appear that the revisionist perception did slow down many developing countries from becoming parties to the Internet Treaties. Thus, as of August 2021, Brazil, which along with Argentina spearheaded the proposal for a Development Agenda for WIPO, is not a Contracting Party; Kenya48 and South Africa49 were signatories to the Internet Treaties but to date had not ratified the Treaties. Significantly, at the Diplomatic Conference on the Protection of Audiovisual Performances held in Beijing (June 2012), many developing countries “wanted to be sure that there would not be an obligation to adhere to the WPPT, even if a country wanted to adhere to the BTAP. They wanted to clearly establish the BTAP as a separate, self-standing treaty, though this may seem unnecessary”.50 The demand for such an agreed statement was accepted. The agreed statement concerning Article 1 (dealing with the relationship of the BTAP to other conventions and treaties) made it clear that “nothing in this Treaty affects any rights or obligations under the WIPO Performances and Phonograms Treaty (WPPT) or their interpretation and it is further understood that paragraph 3 does not create any obligations for a Contracting Party to this Treaty to ratify or accede to the WPPT or to comply with any of its provisions”. The agreed statement concerning Article 5 (4) of the Marrakesh Treaty is similar except that it refers to the WCT in place of the WPPT.

12.6 Treatymaking Stalemated The attempt to effect a shift in global IP paradigm from a focus on rights to a focus on a greater access to content impacted on the norm-setting activity of WIPO. As the discussions in the SCCR were not going anywhere because of the strong opposition of many developing countries such as India and Brazil, the Substantive Patent Law Treaty (SPLT) was put on hold in 2006; while other treaties long under consideration were not abandoned progress, figuratively, ground to a halt, the broadcasting treaty being a good example.

46

UNCTAD (2003, p. 2). U.K. IP Commission (2002, pp. 106–107, 109). See also Tellez and Musungu (2010, pp. 186–187). 48 Ironically, the President of DipCon was Ms. Ms. Esther Mshai Tolle from Kenya. 49 Significantly, while the South African Copyright Act was not amended so as to be WCT compliant the circumvention of access control as well as trafficking in devices that are “designed primarily” for circumventing access control is proscribed. Visser (2006, p. 62). 50 von Lewinski (2012, p. 10). 47

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12.6.1 Broadcasting Treaty Even though some experts pressed for the inclusion of the rights of broadcasting organisations in the remit of the Committee of Experts on a New Instrument (1993), WIPO did not concede that request because of the apprehension that the inclusion of broadcasting rights would slow down, perhaps even undermine, the conclusion of the New Instrument. That apprehension was reinforced by the experience with TRIPs negotiations where it was found not possible to reach a truly substantive common provision regarding broadcasting right (Sect. 2.2.1, 2.4.3). After the DipCon, the WIPO SCCR began consideration of a possible treaty which would make the rights of broadcasting rights more precise than the Rome Convention, adapt those rights to the digital era and address challenges like signal piracy. As indicated at the DipCon, WIPO organised an international symposium on broadcasting, new communication technologies and copyright in Manila (1997)51 ; this was followed by another such symposium at Cancun, Mexico (1998).52 While the symposia did not reach particular conclusions, there was intense brainstorming on all the issues which need to be considered in a treaty of broadcasters’ rights. The issues discussed included protection of broadcasting organisations in the existing international law, new challenges for broadcasters as owners of neighbouring rights, broadcasters as users of works and other material, the rights of satellite broadcasting, cable redistribution and communication to the public by cable as well as Internet transmission. At the Manila and Cancun symposia, there was also a strong demand for a treaty updating the rights of broadcasters.53 However, it was only from 2001 that serious discussion began in the SCCR as the audio-visual treaty received higher priority.54 There were sharp differences of views in the SCCR. The U.S. did not support a treaty which did not cover webcasting while many others considered it was too premature to consider webcasting. There were also sharp differences in regard to the scope of protection. Some proposed extensive lists of exclusive rights while many others preferred a more restricted scope of protection in order to prevent conflict of interest between those who own rights in the content broadcasted and the broadcasters. The minimalists preferred protection of signals (or conversely piracy of signals) and not the content carried by broadcasters which are already protected by the rights of authors, performers and phonogram producers. Certain developing countries, particularly those from Africa, opposed any protection of broadcasters because not respecting copyright and related rights was a widespread practice among broadcasters. Desiring progress towards a Diplomatic Conference, the Chairman, Jukka Liedes, tried to streamline discussions through a consolidated text which showed areas of agreement and disagreement. India, Brazil and some other countries questioned provisions like obligations 51

WIPO Broadcasting Symposium, Manila (1998). WIPO Broadcasting Symposium, Cancun (1998). 53 For an elaboration and critique of the discussions at the Manila Symposium see Ogawa (2007, pp. 113–136). 54 For developments in the WIPO SCCR 2007 see von Lewinski (2008, paragraphs 19.01–19.37 at pp. 511–25). 52

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regarding technological measures on the lines of the Internet Treaties, and a fifty-year term of protection; they also demanded adapting protection to the levels of development of the Contracting Parties. In the meeting of the SCCR in November 2005, Brazil and Chile and a few other developing countries put forth new proposals including (i) public-interest clauses, (ii) primacy of the UNESCO Convention of Cultural Diversity, (iii) detailed provisions on limitations and exceptions and (iv) abuse of IP with adverse effect on competition. In 2006, the WIPO General Assembly decided to convene a Diplomatic Conference in November/December 2007 to consider a treaty that would be limited to (i) protection of broadcasting and cablecasting organisations in respect of signals subject to an agreement in two special sessions of the SCCR. A formidable alliance of groups was formed to stop the proposed treaty in view of “its potential negative impact on access to information and knowledge and on technological innovation”; the members of the alliance included performer groups, library associations, development activists, public-interest groups, consumers groups, industry groups representing information technology, electronics and telecommunications industries and corporations like AT&T, Dell, Intel, Verizon Communications and Sony.55 That alliance claimed that there was no justification for a treaty, that only signals need be protected and for that purpose broad, new IP are not warranted. As the treaty would enable the Contracting Parties to create broader protection or rights than what is necessary to prevent signal theft, it should have a mandatory set of limitations and exceptions to ensure that uses of broadcast content that are lawful under copyright law are not inhibited by the provisions of the treaty. Fixations, transmissions or retransmissions across a home or personal network should be beyond the purview of the treaty, and intermediaries (e.g. AT&T, Verizon Communications) should be exempt from secondary liability.56 In brief, the coalition partners shared “the vision of the Internet as a competitive and innovative communications space where bits can flow as freely as possible”.57 Despite “major efforts and transition to informal sessions” delegations could not agree to a text of the treaty even at the Second Session of the SCCR; “it seems a general unwillingness rather than substantive issues was decisive for this outcome”. Leading developing countries such as Brazil and India “deployed different strategies as, for example, the submissions of proposals that would dilute discussions and likely meet opposition of leading industrialised countries, and that would result in controversies between them and the U.S. in particular”. Given the lack of an agreement, the idea of a Diplomatic Conference sunk, and protection of broadcasting organisations moved back to the agenda of the SCCR.58 The adoption of the Development Agenda by outflanking opponents of that Agenda and the defeat of the move to convene a Diplomatic Conference and have a treaty on protection of broadcasting organisations

55

Tellez and Musungu (2010, p. 189). CPTech (2004, 2007), Creative Commons et al. (2006). 57 Franz (2010, p. 523). 58 von Lewinski (2008, paragraph 19 10, pp. 516–517). 56

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were hailed as “a defeat of intellectual property absolutism” at WIPO brought out by A2K activists and their allies.59 The passage of time had made the issues more complex. Technical developments of the past decade “have brought upon more changes to broadcast media and their consumption than in the 50 years following the 1961 Rome Convention”.The new platforms for signal distribution include not only cable and satellite services, but also digital and online services, broadband networks, connected TVs, USB sticks, smart phones and tablets.60 In respect of broadcasters, the Rome Convention is hopelessly out of date protecting broadcasters only against wireless transmission of their signals, not even against cable casting or satellite transmission, not to speak of the variety of transmissions through Internet. The proliferation of modes of transmission and platforms for receiving signals had made the definition of broadcasting very complex. In the digital environment, “where wired and wireless technologies converge, broadcasting has become a very fluid notion”, and “with every year that brings us yet newer technologies, the drafting becomes even more complex, and the notion of ‘broadcasting’ ever more fleeting”. Unsurprisingly, “much of the intellectual energy and debate in drafting the Broadcasting Treaty has gone into its definitions”. In short, the definitions constitute a “conceptual conundrum”.61 There had been divergent approaches to the crafting of a Broadcasting Treaty, the most important approaches being (i) updating the Rome Convention to factor in the technological developments since then and (ii) alternately craft a new treaty around a technologically neutral broadcasters’ neighbouring right.62 The Broadcasting Treaty is still a work in progress, and it would take quite a while for consensus to be reached. It had been suggested that an easy way out of the conceptual conundrum would be abandoning “work on the Broadcasting Treaty, and moving on to other, more pressing issues in IP”.63 Choosing such an easy way would be patently unfair to a very important mode of cultural communication and a major contributor to economy.

12.6.2 A2K Treaty The proponents of the A2K movement and the WIPO Development Agenda were successful in stalling the SPLT and the Broadcasting Treaty; however, they did not succeed putting in place an A2K Treaty which would remove barriers to accessing knowledge and technology all over the world because any negotiation, including international negotiations, requires a spirit of give and take, and sans that spirit no agreement is possible. Such a spirit was lacking in the confrontational policy environment in WIPO from the mid-2000s. One would expect that no one would be 59

Krikorian and Kapczynski (2010, p. 11). Ruijsenaars (2018, p. 1). See also Schötz (2019). 61 Hugenholtz (2018). 62 Ruijsenaars (2018, p. 17). 63 Hugenholtz (2018). 60

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against the blind but even in regard to the Marrakesh Treaty the deliberations were marked by a sharp division between those who believed that copyright had run its course and lost its way, and those who believed to the contrary and were hopeful that copyright could be made to serve public policy goals if only agreement could be reached on what those goals were. A sharp division of views was not limited to policy negotiations; it permeated academic policy discourse also. On the one side of the sharp divide were those who believed that the existing combination of limitations and exceptions permitted by international copyright law for the public interest cannot meaningfully advance development objectives or special needs of disadvantaged like the visually impaired and that the Berne Convention’s framework should be retooled to support development-centric and need-centric limitations and exceptions.64 In other words, treaty making should focus on limitations and exceptions which should be put in place to serve public policy goals and developmental needs. All in all, this was an age of limitations and exceptions to which traditional copyright doctrine and treaty making had to adapt. On the other side of the divide were traditionalists like Ficsor and Ginsburg. Ginsburg, for example, strongly argued that “mandatory exceptions treaties are profoundly inconsistent with the history and spirit of the Berne Convention because they would, for the first time, create an international instrument whose sole purpose is to diminish the rights of authors (italics in original). International instruments on copyright and related rights always took into account not only rights but countervailing considerations of free expression and access to culture”. It would be a fateful step “to adopt international norms conceived not merely for the primary purpose, but for the single objective of cutting back on the protection of authors”.65 Being a novelty, a treaty on limitations and exceptions took quite some time for conceptualisation. Before a concrete proposal was placed for consideration of the Member States of WIPO, it was necessary to resolve a few issues: What would be the conceptual underpinnings of such a treaty? God being in details, what would be the specifics of an A2K Treaty? What would be the relationship between such a treaty and other international instruments like the Berne Convention, the TRIPs agreement and the Internet Treaties? Would such a treaty violate international copyright norms? It was inevitable that developed countries would put up strong resistance to an A2K Treaty analogous to the resistance the developing countries put up to stall SPLT and the Broadcasting Treaty. That being so, should like-minded developing countries enter into a treaty among themselves, and if so, what would be the usefulness of such a treaty? If a treaty which would be confined to only developing countries is considered to be suboptimal a key question that arises would be what are the sops which could be given to the developed countries to enlist their acquiescence, if not approval, without reducing the treaty to a charade. Turning to the conceptualisation of a treaty, Peter Drahos suggested the formulation of an A2K treaty as an alternate framework to the current international copyright 64

Okediji (2019). Part IV of this article highlights possible ways of retooling the Berne Convention’s framework in support of development-centric limitations and exceptions. 65 Ginsburg (2012).

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and related rights instruments. Drahos elaborated an approach that differentiated the task of establishing general principles from the task of detailed rule-setting that would be ongoing as technologies and markets changed. The general principles would be elaborated in a framework treaty that would clearly set out the subordinate and instrumental nature of IP and declare explicitly the basic rights (e.g. health and education) which would be fostered by the IP covered by the treaty. The framework treaty would also lay down a procedural test to ensure that a new right proposed would subserve the objective of advancing the right to education or health. In order to make it more concrete, the procedural test would include a few prohibitions and presumptions. Thus, a very important prohibition was that an IP provision could not contradict or undermine a basic human right. The presumptions could be (i) a presumption against the criminalisation of infringement of IP, (ii) a presumption against the creation of new areas of IP, (iii) a presumption against the extension of existing privileges of rightsholders and (iv) a presumption against extending the duration of IP, and so on. The laying down of actual rules within the framework set out by the treaty would be done by a committee of experts.66 It would be fair to say that the international norm setting proposed by Drahos implicitly presumed that norm setting was a technocratic exercise and glosses over the challenge of getting the developed countries accepted a framework which turns topsy-turvy the extant international copyright law. In May 2005, a coalition of civil society organisations came up, with a draft of an A2K Treaty.67 The objective of the treaty was “to protect and enhance [expand] access to knowledge, and to facilitate the transfer of technology to developing countries”. The treaty was envisaged to be a standalone treaty which would in no way “limit the rights of the public to access and use information or knowledge that are defined in other treaties or national legislation”. The treaty also categorically laid down that “public policy goals set out in this Agreement should not be overridden by private contract”. The administrative arrangements for the treaty were similar to those for WIPO treaties. The section on copyright and limitations comprised three parts, the first provided a long list of general limitations and exceptions, the second covered limitations and exceptions for distance education and the third spelt out the rights of persons with physical disabilities. The draft was very comprehensive covering (i) copyright limitations and exceptions, (ii) patents, (iii) building up of Knowledge Commons, (iv) control of anticompetitive practices and (v) transfer of technology. Brazil and Argentina made a reference to an A2K Treaty in the proposal they made in October 2004 for the establishment of a WIPO Development Agenda. A month later, Chile proposed that the SCCR should take up analysis of limitation and exceptions. A year later, Chile submitted a more detailed proposal for studies which would lead to an agreement on mandatory exceptions and limitations for purposes of public interest. However, as the SCCR was focused on the Broadcasting Treaty it was only in 2008 that the Committee could turn its attention to the proposal of Chile. Brazil, Chile, Nicaragua and Uruguay proposed to the SCCR a work plan for exceptions and limitations. However, the proposal ran into stiff resistance from the 66 67

Drahos (2005, pp. 54–58, 61–63, 65). CPTech (2005).

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EU and the U.S. One of the concerns of the U.S. was that the Chilean proposal of 2005 linked limitations and exceptions to creativity while traditionally copyright was perceived to be the driver of creativity.68 Whatever, it became clear that a treaty on limitations and exceptions would not fly, and even if it did it would be only after a long, long time. At that juncture, the World Blind Union decided to press for a narrower treaty designed to enhance the access of the visually impaired persons to reading material. That was a politically astute move as compassion could trump strong opposition in a way that logic and forceful arguments would not; after all, who can say no to help the blind have better access to reading material. Slogans developed and propagated by the World Blind Union and similar organisations like a ‘book famine’ afflicting the visually impaired persons were as evocative as the ‘Patients before Profits’ slogan of the Access to Medicine campaign. In spite of the advantages, a treaty addressing the needs of visually impaired persons had over a general treaty it took four years of hard negotiations before the Marrakesh Treaty could be adopted. Before moving on, it should be said that even though the A2K Treaty had not yet been enacted the idea of a treaty on limitations and exceptions continued to be pursued in the academia. Thus, a comprehensive report by Hugenhotlz and Okediji (2008) contended that “nothing in the international acquis would prevent parties to the Berne Union, the WCT or the WTO from entering into a special agreement listing in an exhaustive or enumerative manner those copyright limitations that are permitted within the confines of the Three-Step test”.69 The Report outlined the contours of a possible treaty on limitations and exceptions and also outlined the options. In principle, the treaty could have several categories or clusters of limitations and exceptions each designed to foster an objective, examples of objectives being promotion of innovation, facilitating reverse-engineering and interoperability, fundamental freedoms such as freedom of speech, addressing the needs of discrete, vulnerable members of society, such as those who are visually impaired, and safeguarding the role of institutions charged with the provision of public goods such as educational institutions and libraries. The Report also discussed elaborately the merits and disadvantages of different approaches such as a binding legal instrument and soft law which does not have a legally binding force, examples being a recommendation, resolution, declaration, guideline, code of conduct and so on. The binding legal instrument could be multilateral, bilateral and so on.70 The latest among the proposals is an International Instrument on Permitted Uses of Copyright (2021) drawn up by a group of fifteen copyright experts.71 The Group preferred to use the term “permitted uses” instead of “exceptions and limitations” and “users’ rights”. The term “exceptions and limitations” was avoided as it is generally 68

New (2008). International acquis is accumulated body of international law. 70 Hugenholtz and Okediji (2008). 71 The Introductory Notes of Hilty et al. (2021a, pp. 3–7) provides a rationale for developing the instrument, the Group’s choice of terms and the structure of the International Instrument; see also Hilty and Moscon (2021). 69

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understood “as tools correcting copyright exclusivity and therefore not standing on the same level as the exclusive right”; such an understanding is inconsistent with the belief of the Group that “right holders’ protection and permitted uses are both equally essential in ensuring that copyright will have positive effects on the information economy and society in general”. The term “user’s rights” was also not preferred because of two reasons. First, even though the CJEU and the Canadian Supreme Court used the term “users’ rights”, “no legislature has yet explicitly implemented this wording in its copyright statutes”. Secondly, “it is doctrinally disputed whether user’s rights standing on an equal level as the exclusive right really exist”. Therefore, the Group decided to apply a terminology that does not confuse prospective contracting parties, but simply requires them to implement permitted uses in their national laws. The proposed instrument has three parts. Part A comprises five groups of permitted uses including those already known in international law such as Arti cle 10(2) Berne Convention and the Marrakesh Treaty and in national laws. The five permitted groups are (i) freedom of expression and information, (ii) social, political and cultural objectives, (iii) uses of software, (iv) use with minimal significance and (v) free circulation. Each group of permitted uses is organised around the objectives pursued. Part B compromises define general principles aimed at guiding Contracting Parties in the implementation of the Instrument in their national legal orders. The instrument abandons the traditional approach of the limitations and exceptions being no more than the minimum required to further the objectives of the five permitted groups. Part C deals with competition law as an external limit on copyright right, and is based on a doctrinally innovative approach which views competition law and copyright law as complementary legal fields pursuing the common objective of increasing the market offer of creative works. It clarifies that there is no per se exemption of copyright from the general rules of competition law.

12.7 Forum Shifting Again: The ACTA Fiasco As years rolled by, the great expectations aroused by the TRIPs enforcement provisions among rightsholders of developed countries turned sour; the provisions displayed the characteristics of a difficult compromise reached during the Uruguay Round negotiations.72 Development of enforcement provisions applicable to all countries was a very challenging task, all the more so because a conscious choice was taken to take up the negotiation of the controversial nature of enforcement provisions towards the very end of the negotiations.73 The shortage of time for dotting the i’s and crossing the t’s along with the skilful and subtle negotiation tactics deployed by a few developing countries like Brazil and India resulted in a text which was not ironclad. In game theory terms, the negotiation and enforcement of the TRIPS agreement is a two-stage game. Developed countries won the first-stage negotiation 72 73

Matthews (2002, p. 66). Yu (2011a, p. 496).

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game decisively; however, that was no guarantee that they would decisively win the second-stage implementation.74 Credit should be given to Reichman and Lange for swimming against the tide of the predominant opinion and presciently predicting that “the level of enforcement under the TRIPS Agreement will greatly disappoint rightsholders in the developed countries” because “enforcement provisions are crafted as broad legal standards, rather than as narrow rules, and their inherent ambiguity will make it harder for mediators or dispute-settlement panels to pin down clear-cut violations of international law”.75 A cause célèbre which highlighted the weakness of the enforcement provisions is the case brought up by the U.S. against China in 2007 for failing, among others, to provide for adequate criminal penalties in its national legislation for the infringement of copyright on a commercial scale, thereby failing to comply with Article 61 of the TRIPs Agreement.76 It was alleged that the Chinese IPR laws laid down a high threshold for criminal procedures and penalties so much so that many accused of copyright infringement were subject only to administrative procedures and escaped criminal proceedings. In its defence, China contended that due to limited resources and a vastly different socio-legal tradition, public security authorities in China handle serious cases (cases above the thresholds), while administrative copyright and commerce authorities tackle infringements below the thresholds. Thus, instead of providing a safe harbour for those who infringe IP, Chinese law subjects “infringement on any scale” to enforcement. Further, the U.S. demand was violative of Article 41(5) of the TRIPs agreement77 whereby Member Countries are not obligated to create a judicial system for the enforcement of IP distinct from that for the enforcement of law in general; nor are they obligated to prioritise IP enforcement and devote more resources to IP enforcement than to other areas of law enforcement. In its report delivered in January 2009, the WTO Panel took the view that what constituted commercial scale depended on the nature of the product, the market in question as well as on the scale of the infringements. In other words, there was no universal norm to decide what constituted commercial scale; the logical corollary of the proposition of the Panel was that no one could be a better judge of the local conditions than the Member Country concerned, and that its assessment of what constituted infringement on a commercial scale and how to penalise infringement were of higher value than the assessment of others. All in all, the WTO panel found that the United States had failed to substantiate its claim.78 The disappointment with the manner in which enforcement provisions of the TRIPs agreement turned out was compounded by the fact that the TRIPs agreement did not consider the digital agenda, and consequently, the enforcement provisions of the TRIPs had no relevance to the increasing menace of online copyright infringement. 74

Okediji (2003, p. 823). Reichman and Lange (1998, pp. 37–38). 76 Yu (2011b). For a very detailed commentary see Yu (2011c). 77 Introduced at the behest of India and a few other developing countries. 78 Yu (2011b, 727–734). For a very detailed account of the arguments put forth and the panel report see Yu (2011c, pp. 1052–80). 75

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Back in the years immediately following the entry into force of the TRIPs agreement, it was the developing countries which were deeply discontented with the TRIPs agreement79 ; ironically within a decade, the discontented of 1990s became the contented of the 2000s,80 and in synch with this dénouement, the mood of the developed countries changed from that of triumphalism to that of discontent. As in the 1980s, infringement of copyright and poor enforcement once again emerged as a pivotal issue in the 2000s. Developing countries became more and more assertive in the TRIPs Council during 2006 and 2007, and repeated efforts by the E.C., the U.S., Japan and Switzerland to get the TRIPs Council address enforcement issues made no headway in the face of opposition from Brazil, China, India and other developing countries.81 The developed countries fared no better in WIPO, for the new institutional setting of WIPO was uncongenial for the attempts by the developed countries to strengthen enforcement.82 Frustrated by their failure to get WTO and WIPO address their concerns about enforcement, two weeks after the WIPO General Assemblies adopted the Development Agenda, the U.S., EU and Japan announced their intention to negotiate an anticounterfeiting trade agreement (ACTA) outside multilateral forums like WIPO and WTO. The negotiation of ACTA began in earnest in June 2008, and the parties to negotiation were Australia, the U.S., Japan, the EU and its twenty-seven Member States, Switzerland, Canada, Singapore, South Korea, New Zealand, Morocco and Mexico. After 11 formal negotiating rounds, negotiations were concluded in December 2010, and ACTA was finally adopted on April 15, 2011. ACTA intended to build on the standards of IPR protection and enforcement set forth in the TRIPs agreement and to address emerging IPR issues which the parties to negotiation believed to be not addressed adequately in the TRIPS Agreement such as IPR infringement in the digital environment. ACTA was a free-standing, self-reinforcing agreement (i) with a governing body, the ACTA Committee, independent of multilateral organisations like WIPO and WTO and (ii) with “a new architecture that would help facilitate the future evolution and reinforcement of the Agreement”.83 Negotiating parties of ACTA or any other Member of WTO had time until May 1, 2013, to sign the agreement. WTO Members who had not signed the agreement before May 1, 2013 could join ACTA subject to approval by the ACTA Committee. ACTA was envisaged to enter into force thirty days after the sixth instrument of ratification was deposited by the signatories of ACTA. Eventually, only Japan ratified the agreement, and ACTA was abandoned mainly due to widespread protests in EU and the impact of the protests on governments of EU Member States.84 Even in Mexico, fledgling Internet activism 79

Yu (2006). The shifting perceptions about the TRIPs agreement are brought out by Yu (2006, 2011a, 2015a, 2020). 81 Yu (2011d, pp. 988–998), Blakeney (2013, pp. 89–97). 82 Kaminski (2011, p. 3), Yu (2011d, p. 1080). 83 Yu (2015b, p. 146). 84 For details of post-negotiations official developments in different countries which participated in the ACTA negotiations see Blakeney (2013, pp. 109–114). 80

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led to the Senate rejecting ACTA in July 2011.85 In the U.S., ACTA did not stir up the protests it did in the EU because the Internet activists and organisations committed to digital user rights and protection of public domain were all engrossed in the struggle to stop SOPA/PIPA. The protests against ACTA in the EU were almost back-to-back with the great Internet Blackout in the U.S. on January 18, 2012 (see Sect. 4.6). Two days after the Internet Blackout protests erupted in Poland against the decision of the government to sign ACTA; on January 25, 2012 the protests spread like wildfire when the EU and its Member States signed ACTA. Turning to the protests against ACTA in the Member States of EU, a solid activist base was in existence in many countries of EU by the time ACTA due to the deep penetration of high speed Internet. Even in normal circumstances, any move to curb online infringement by imposing technological or legal restrictions would have raised hackles of Internet and privacy activists as well as of online intermediaries including the new technological giants like Google, YouTube, Yahoo, Facebook, Twitter, Reddit and Tumblr, and online merchandise firms like Amazon and eBay. What made matters worse was the extreme secrecy of the ACTA negotiations. It was, only on April 10, 2010, after the conclusion of the eight rounds of negotiations, that the first consolidated text of the draft agreement was officially released; even then, the negotiating parties, most notably, the U.S., refused to provide further disclosure of ongoing discussions until the end of the negotiations. Secretiveness is not unusual in international negotiations; at the Versailles Peace Conference (1919), even President Woodrow Wilson did not abide by his maxim ‘open covenants, openly arrived at’. As set out above (see Sect. 1.3.1), informal negotiations, from which interest groups were excluded, make negotiations smoother as delegates could exchange views in confidence, and similarly engage in the process of give and take so necessary to reach agreement on complex issues. And further, in contrast to the more open approach in multilateral fora like WHO and WIPO “negotiations at the bilateral and plurilateral levels have indeed been kept secret in the past”.86 Even in multilateral negotiations, differences over sensitive issues are resolved and agreements are reached through informal negotiations in informal settings from which representatives of interest groups are excluded, TRIPs negotiations and DipCon being good examples. However, when carried far, too far secrecy would turn out to be counterproductive as it did with ACTA. The cloak of secrecy and the continual leakage of documents fuelled rumours, allegations and paranoia; the widely accessed Internet and social groups turned out to be a huge whispering gallery and an instrument for mobilisation and organisation of protests..87 Rumours were afloat that border guards would search and confiscate travellers’ iPods, DVD players and laptops, that far too intrusive surveillance of Internet use would be put in place and that it would be mandatory for countries which join ACTA to put in place and stringently enforce “three strikes and you’re 85

For details of the growth of Internet activism and Stop ACTA movement, and the manner in which the movement could prevail upon the Senate to reject ACTA see Haggart (2014). 86 Yu (2011d, p. 1005). 87 For analytical studies of protests see Losey (2014), Crespy and Parks (2017).

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out” type of laws.88 ACTA came to be criticised on every conceivable ground: lack of transparency, abandoning multilateralism for a “country-club” approach to treaty making, jeopardising privacy,89 “enlisting the public sector in enforcing private rights… ratchet up enforcement without a complementary ratcheting up of due process”, creating “an additional international intellectual property governance layer atop an already remarkably complex and increasingly incoherent intellectual property regime”,90 jeopardising access to medicines,91 inflicting collateral damage for the world’s poorest people92 and expanding the scope of secondary copyright liability for Internet intermediaries, consumer device manufacturers and software developers.93 Because of the unremitting fusillade of criticism as one leaked text after another surfaced in the public domain, the provisions of ACTA were toned down so considerably as to create, what commentators called, ACTA Lite.94 Apart from the lack of transparency, another major ground on which ACTA came in for criticism was that “the decision to abandon established fora for the negotiation of IP agreements and negotiate a plurilateral agreement among a select and unrepresentative group of developed nations with already-strong IP enforcement systems”. Developing countries apprehended that ACTA standards would make their way into bilateral trade deals and hence would be imposed on countries which were not involved in the negotiations. In forums like WIPO and WTO, developing countries like Brazil, China and India criticised the abandonment of multilateral fora and expressed concern about conflict between ACTA and the TRIPs agreement. There was yet another cause for the concern of developing countries. They feared that successful completion and entry into force of the ACTA negotiations would undermine the WIPO Development Agenda, since countries such as the U.S. and E.U. would have little incentive to advance the agenda, and worse ACTA, because of the extensive infrastructure proposed for it, may effectively replace WIPO in many respects.95 It would be fair to say that it was domestic politics, particularly politics in the EU and its Member States and not the opposition of developing countries, that aborted ACTA.

88

Bridy (2011b). Silva (2011). 90 Sell (2017, pp. 457–458). 91 Baker (2011). 92 Rens (2011). 93 Hinze (2010). 94 Ermert (2010). For an outline of the manner in which ‘ACTA steps back from the strongest standards’ see Weatherall (2011a, pp. 859–876). Weatherall (2011b, p. 229) opined that ACTA provisions were rudimentary in comparison to other plurilateral enforcement-related treaties such as the Convention on Cybercrime, a plurilateral instrument negotiated under the aegis of the Council of Europe, and that as a result, ACTA perhaps stands as an object lesson in how not to negotiate an agreement on international cooperation in law enforcement. 95 Geist (2010). 89

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As if ACTA were not enough, an expanded Trans-Pacific Partnership (TPP) agreement began to be negotiated from March 2010 in parallel to the ACTA negotiations..96 Unlike ACTA which was a trade agreement only in name (its title had the word ‘trade’), the TPP agreement was similar to the bilateral trade agreements entered into by the EU and the U.S. agreements or the Uruguay Round trade negotiations of which IP were an important point. Be that as it may, the deep-rooted suspicion of ACTA by digital and users’ rights activist was automatically extended to the TPP negotiations; as is usual with trade negotiations, TPP negotiations were conducted in secrecy, and secrecy unleashed rumours, allegations, speculations and paranoia. TPP was dubbed as ‘the son of ACTA’, ‘ACTA-plus’ and ‘the next secret copyright treaty’.97 In February 2016, the negotiations were completed and the TPP agreement was signed by the parties to negotiation. Apart from trade benefits, the TPP agreement would have conferred strategic advantages, mainly redressing the imbalance that favoured China in South-West Pacific.98 However, the incoming President Trump had different ideas, and within a few days of his assuming office, the U.S. withdrew as a signatory of the TPP leading to the collapse of TPP. For WIPO, the collapse of ACTA and TPP was a great relief. In 2010, while the ACTA negotiations were heading towards an agreement Gurry, DG, WIPO, observed that ACTA and such other regional agreements were “a bad development” for multilateral agencies and are examples of “the difficulty the United Nations and the rest of the multilateral system have in providing swift answers to international problems”. When “a number of countries feel [there is] an important area of public policy they are not able to address in a multilateral forum”, they go “outside the multilateral framework to satisfy their desire for creating some form of ‘international’ cooperation”. The challenge was to “make the multilateral system relevant”.99 As would come out in the narrative in this Chapter, it was not easy to make multilateralism work in a polarised environment where Member States of WIPO had radically different views on what the international copyright and related rights system ought to be, and how WIPO should function.

12.8 Beijing Treaty on Audiovisual Performances, 2012 The adoption of the BTAP is a landmark in the institutional history of WIPO for it brought to an end the seemingly never-ending story of the full recognition of performer’s rights in international copyright and related rights law; that recognition had eluded the diplomatic conferences which concluded the Rome Convention (1961) and the DipCon (1996), and the Diplomatic Conference convened in 2000 to secure 96

For detailed accounts of the negotiations which led to TPP as well as the content of TPP see Yu (2012), Flynn et al. (2013), Yu (2017). 97 Sell (2017, pp. 464–465), Lewis (2011). 98 Yu (2017, p. 98). 99 Saez (2010).

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that recognition ended in failure. It is a landmark for yet another reason; it was the first multilateral norm-taking undertaken by WIPO after the adoption of the WIPO Development Agenda; it would be interesting to know whether the Development Agenda made any difference to norm setting by WIPO and if so how. To briefly outline the negotiation history of BTAP, as mentioned above, (see Sect. 12.1) even though the Diplomatic Conference (2000) failed to adopt a treaty, a provisional compromise was reached on nineteen articles which, among others, deal with (i) minimum rights of audio-visual performers (moral rights, exclusive rights in unfixed performances {rights of fixation, broadcasting and communication to the public}, rights of reproduction, distribution, rental and making available, broadcasting and communication to the public), (ii) limitations and exceptions, (iii) term of protection, (iv)technological measures, (v) rights management information and (vi) enforcement. A Contracting Party may, if it so chose, provide statutory equitable remuneration to the performers for any use of audio-visual performance. All these articles were modelled after the corresponding provisions of WPPT; the only noteworthy deviation from the WPPT was in respect of the integrity right of performers, understandable given that moral rights were anathema to Hollywood (see Sect. 2.3.2). Like a performer under the WPPT, an audio-visual performer was proposed to be vested with the right to “object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation”. However, an audiovisual performer’s right would be qualified by the clause “taking due account of the nature of audio-visual fixations”. The import of that clause was elaborated through an agreed statement. The only substantive provision which could not be resolved in the 2000 Diplomatic Conference was the key question of transfer of the rights of performers to producers which was unique to audio-visual performances. Unless the question of transfer of rights was resolved to the satisfaction of all parties, there was no way that a Diplomatic Conference could adopt by consensus a treaty. In November 2003, the prospects for a treaty brightened when the U.S. Screen Actors Guild broke ranks with the Hollywood producers and reported that it would support the demand of actors in many other countries for the adoption of a treaty without a provision for transfer of rights to producers. However, seven more years passed by before negotiations began between the representatives of performers and producers as well as between various governments. On the ticklish question of transfer of rights, the U.S., India and Mexico could finally work out a compromise with the EU in 2010 whereby “parties may provide by law that, after a performer has consented to the recordation (in BTAP parlance, “audio-visual fixation”) of his work, it is the producer who owns and exercises the exclusive authorisation rights, subject to any contrary contract between the performer and producer”. The compromise allowed Contracting Parties “to maintain divergent provisions on whether exclusive authorisation rights vest by default in performers or producers”.100 That compromise paved the way for a Diplomatic Conference to be reconvened. Before a Diplomatic Conference could be convened, it was necessary to resolve the question whether the provisional compromise on the nineteen articles arrived at the Diplomatic Conference 100

Fellmeth (2012, p. 1212).

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should be adopted “as it is” or renegotiated.101 Brazil and a few other developing countries demanded renegotiation in view of the Development Agenda; they also demanded a new recital in the Preamble to the Treaty referring to the recommendations of the Development Agenda so that reference would act as a precedent to future work of WIPO in the area of norm setting. The EU was also initially in favour of the renegotiation but had second thoughts in view of the new ambience at WIPO. EU apprehended that renegotiation would “result in claims for considerable reduction of minimum protection versus claims for the level of protection reflected in the provisionally adopted articles of 2000” and that such claims “would have brought about the realistic possibility of another failure of the Diplomatic Conference”.102 After negotiations over the demand of Brazil and a few others, a compromise was reached whereby it was agreed (i) to add a new recital to the Preamble referring to the Development Agenda and (ii) to negotiate three additional agreed statements relating to Articles 1, 2 and 15, regarding the relationship of BTAP to the WPPT and to the WPPT, and the relationship between TPMs and limitations and exceptions. It took quite a while for appropriate language to be settled for the new recital of the Preamble and the agreed statements. There were differences over the question as to whether the recital should refer to the Development Agenda in general, or whether it should list out the 45 recommendations of the Agenda, or whether it should mention only the relevant recommendations. As a compromise, it was agreed that (i) a recital in the Preamble would recall “the importance of the Development Agenda recommendations, adopted in 2007 by the General Assembly … which aim to ensure that development considerations form an integral part of the Organization’s work” and (ii) that recital was inserted not at the end of the Preamble but as the second recital. The recital by itself is of little consequence.103 Article 1 has two agreed statements, the first makes it explicit that the fact that the BTAP does not cast an obligation on a Contracting Party of the Treaty to accede to the WPPT. The second agreed statement of Article 1 deals with the relationship between the BTAP and the TRIPs agreement. Even though the BTAP had no connection with the TRIPs agreement and in no way prejudices the rights and obligations under TRIPs agreement Brazil and India wanted an agreed statement to Article 1(3) which would highlight the TRIPS obligations regarding objectives, principles and competition policy (Articles 7, 8 and 40 of the TRIPS Agreement), the rationale being that Articles 7 and 8 came in handy during the negotiations of the Doha Declarations and a reference to competition policy could be used as an argument that grant of IP is an exception to freedom of competition that must be economically justified, and that excessive rights would promote monopolistic behaviour. The U.S. and EU did not want a reference only to those obligations in the TRIPs agreement which 101

For greater details about the controversial issues which had to be resolved during the runup to DipCon see von Lewinski (2012), Ficsor (2012). 102 von Lewinski (2012, p. 4). 103 von Lewinski (2012, p. 4). Ficsor (2012, pp. 18–21) elaborates this point at quite some length why the Recital is only of a descriptive nature about the general importance of the Development Agenda.

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restrict protection of IP. Eventually, a compromise was reached at the Diplomatic Conference after “cumbersome but fair negotiations”.104 The agreed statement so arrived at had the Contracting Parties acknowledge all the principles and objectives of the TRIPs agreement and not just Articles 7 and 8. Further, the agreed statement made it explicit that nothing in the BTAP would affect the provisions of the TRIPs agreement, including, but not limited to, the provisions relating to anticompetitive practices. The comment of Silke von Lewinski that “the agreed statement again states the obvious, and the controversy about its language was mainly politically motivated rather than reflecting any legal meaning”105 is apt. The agreed statement concerning Article 2 related to the definition of performers clarifies that “not only those who perform existing literary or artistic works (or expressions of folklore) qualify as performers but also those who create (improvise) such works in the course of their performances”.106 Article 12 of BTAP explicitly left open the possibility of a Contracting Party to regulate in its national law the relationship between a performer and a film producer in respect of the exclusive rights under the Treaty.107 In a sense, this was in keeping with an element of the U.S. proposal in the DipCon, namely that a Contracting Party would have flexibility to implement the treaty obligations in a manner that would be consistent with its own existing system. Article 5 of BTAP dealing with moral rights sought to address the concerns of film producers. The right to be identified as the performer of a performance granted under Article 5 (1) (i) was qualified by the exception that the right could not be claimed “where omission is dictated by the manner of the use of the performance”. Similarly, the right to object “to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation” granted by Article 5 (1) (ii) was qualified by the clause “taking due account of the nature of audio-visual fixations”. An agreed statement concerning Article 5 clarified what taking due account of the nature of audio-visual fixations would imply; (i) modifications of a performance that are made in the normal course of exploitation of the performance, such as editing, compression, dubbing or formatting, in existing or new media or formats, and that are made in the course of a use authorised by the performer, would not in themselves amount to modifications, (ii) the right of integrity is concerned only with changes that are objectively prejudicial to the performer’s reputation in a substantial way and (iii) mere use of new or changed technology or media, as such, does not amount to modification. Of the agreed statements introduced at the behest of some developing countries, the most controversial as well as the most significant was that concerning the relationship between Article 15 (obligations regarding technological measures) and Article 13 (limitations and exceptions). Articles 15 and 13 (and its agreed statement) are mutatis mutandis identical to the corresponding provisions of the WCT and 104

von Lewinski (2012, p. 11). von Lewinski (2012, p. 12). 106 For elaboration of the alternative proposals, negotiations and outcome see von Lewinski (2012), Ficsor (2012, p. 4). 107 von Lewinski (2012, p. 5). 105

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the WPPT. The provisions dealing with obligations regarding technological measures in the WCT and the WPPT do not have an agreed statement while that of BTAP has an agreed statement. That agreed statement has two parts: the first makes it clear that a Contracting Party is entitled to adopt effective and necessary measures to ensure that a beneficiary of a limitation or exception is not denied access to the performance concerned through a technological measure, and the second reiterates that the obligation under Article 15 does not extend to audio-visual performances which are unprotected or whose term of protection had expired. Regarding the first part, the entitlement of a Contracting Party to adopt such effective and necessary measures was not per se questioned; however, the whole controversy resolved round the question whether resort to such measures should be subjected to the condition that the rightsholder and the beneficiary of limitation or exemption had failed to reach a voluntary agreement on access to the performance. Recital 51 and Article 6(4) of the EUCD, for example, impose such a condition (see Sect. 5.4). Eventually, “after long discussions, a somewhat ambiguous compromise was adopted” which leaves the Contracting Party the flexibility to decide the circumstances under which it could adopt effective and adequate measures to ensure that beneficiary of a limitation or exception has access to the performance concerned when such a performance is protected by a technological measure. On the whole, Ficsor’s assessment that BTAP “confirms that the principles and standards adopted in 1996 continue being completely valid”, and that “the adoption of the new preamble paragraph and of the four new agreed statements has not changed this nature of the new Treaty” is apt.108 While the Development Agenda had not made much difference to the substance of the BTAP, it did impact the negotiation process.

12.9 Marrakesh Treaty, 2013 Visually impaired persons cannot read printed material directly; they require accessible formats of the printed material such as Braille, “talking books” and audio formats created by software that converts print materials into audio. A WIPO study (2007) reported that there were about 180 million blind and partially sighted people in the world and that no more than about 5% of the books published were currently available in accessible formats.109 The highly evocative term “book famine” was coined to describe the pathetic non-availability of books for the visually impaired. The book famine is more severe in developing countries where the bulk of the world’s

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Ficsor (2012, p. 3). WIPO Study (2007, p. 14). While this study focussed on the visually impaired, two earlier studies on limitations and exceptions commissioned by WIPO did touch upon limitations and exceptions for the visually impaired. See WIPO Study (2003) and WIPO Study (2006). The 2006 Study (pp. 29–33) provides a useful outline about the contribution technology can make to improve the accessibility of works to the visually impaired.

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visually impaired population lives; in such countries, it is estimated that no more than 1% of the books published are in accessible formats.110 Copyright has a bearing on the preparation and distribution of works in accessible format in two respects. First, a work in an accessible format is a derived work of the original work from which the work in an accessible format is obtained; consequently, the preparation of work in an accessible format requires an authorisation from the owner of the original work. The conversion of the original into each type of accessible format would require a separate authorisation. Even in many developed countries, not-for-profit non-governmental organisations play an important role in the preparation and distribution of accessible formats; as such organisations depend mostly on charities and government support for funding costs of licensing can be burdensome. The WIPO-UNESCO Model Provisions (1982) clarified that subject to the Three-Step test provided in Article 9(2) of the Berne Convention the Berne Convention allowed the introduction of limitations (in the form of compulsory licences) and exceptions (in the form of free uses) to facilitate the visually impaired to gain to access to works in special formats.111 By 2007, fifty-seven countries, mostly developed countries, had provided limitations and exceptions in regard to making and supplying of accessible copies to the visually impaired. The second area where copyright has a bearing on the preparation and distribution of works in accessible format is the export of works in accessible format from one country to another. Many countries share a common language, e.g. Spanish-speaking countries, Francophone countries and so on. However, copyright could be a barrier to the flow of accessible works among such countries as “international treaties and conventions relating to intellectual property generally permit countries to decide for themselves what provision to make on cross-border movement of copies of copyright works made under exceptions”.112 To give an example, Spain had approximately 100,000 accessible books while Argentina had only about 25,000, and yet Spain’s accessible books could not be exported legally to Argentina or to other Spanish-speaking countries.113 Beneficial cross-border movement is facilitated if the copyright laws of all countries are harmonised to provide for limitations and exceptions in respect of the preparation and distribution of works in accessible format. Beginning from 1985, suggestions for an international instrument that would permit Contracting Parties to produce “special media material and services” and would also permit “free circulation of these materials and services among the Contracting parties” were mooted.114 However, it was only in 2009 that such suggestions became an idea whose time had come. 110

World Blind Union (2013). For a detailed account of the Working Group on Access by the Visually and Auditory Handicapped to Material Reproducing Works Protected by Copyright (1982) set up jointly by UNESCO and WIPO see Ficsor (2013a). Ficsor’s article contains the report of the Working Group and a record of its consideration by joint sessions of the Executive Committee of the Berne Convention and the UNESCO Intergovernmental Copyright Committee. 112 WIPO Study (2007, pp. 9–10). 113 World Blind Union Guide (2017, p. 13). 114 WIPO Noel (1985); Mann (2001, paragraph 8.3.3, p. 6). 111

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In the meeting of the SCCR (2009), Brazil, Ecuador and Paraguay submitted a proposal for consideration of a treaty drafted by the World Blind Union (WBU) for facilitating and enhancing access to protected works for the blind, visually impaired and other reading disabled persons. In the next session of the SCCR, the U.S. expressed its support in principle. EU expressed reservations and wanted to ascertain whether copyright was indeed limiting access of the visually impaired persons to reading material. The African Group did not want limitations and exceptions for the visually impaired to edge out consideration of a larger package of exceptions and limitations, such as for library, archives, education and research. In spite of the support in principle by the U.S., it took four long years of intense negotiations which appeared on a couple of occasions to be on the verge of collapse so much so that the conclusion of the Marrakesh Treaty was labelled the “Miracle at Marrakesh”. Justin Hughes, a copyright scholar who was the lead negotiator for the U.S., learnt “that the positions of people in the area of IP are ‘more strident and more entrenched’ than he realised”; in his view, Marrakesh negotiations were “far, far more difficult” than the BTAP negotiations.115 “During the long winding road to the Marrakesh Treaty”, Ruth Okediji, a copyright scholar who was a member of the Nigerian delegation and one of the leading technical experts of the African Group, came to know of “the trenchant note of the global debate over the role of copyright in promoting public interest”.116 As the DipCon example had illustrated, a multilateral negotiation is usually a battleground for conflicting interest groups. Compounding the complexity of a multilateral negotiation was the fact that issues related to the providing access to the visually impaired got enmeshed with the larger issues of reforming the copyright system. Most parties to the negotiations had larger agendas than merely the issues under consideration. Developing countries and civil society organisations who wanted to usher a new copyright paradigm and reinvent WIPO saw the Marrakesh negotiations as the entry point for the transformation they wished to bring it. Precisely, for that reason, developed countries and rightsholders saw the Marrakesh negotiations “as the tip of an iceberg”,117 and that a treaty providing exceptions for visually impaired people “could become a Trojan horse for a future weakening of copyright protection through international treaties”,118 was “the thin edge of the wedge for the users” right movement”,119 and lead to “a slippery slope of continual undermining of IP rights”.120 Because of the fear that a treaty would lead to a shift to a regime which would place more limits on rights121 many business groups like MPAA which had no stake in the negotiations became involved and argued that there were other ways of addressing the problem on hand than through a treaty. Even General Electric, Exxon, Monsanto, Patten Caterpillar with large patent 115

New (2013b). Okediji (2017, p. xi). 117 Senftleben (2017). 118 Trimble (2015, p. 354). 119 Scheinwald (2012, pp. 497, 500). 120 Williams (2012, pp. 1064–1066). 121 For fears of business groups see Harpur and Suzor (2013, pp. 766–768). 116

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portfolios entered the fray. Some of the issues which had a vital bearing on the extant copyright system and which were ferociously fought were (i) should a limitation or exception be permitted only if it passed the Three-Step test, (ii) the interpretation of the Three-Step test (see 10.3.3), (iii) confining limitations and exceptions to works that cannot be obtained on reasonable terms in an accessible format, (iv) covering the right of translation under limitations and exceptions so that a work could be translated and converted into an accessible format without the authorisation of the rightsholder and (v) whether an organisation which converted a work into an accessible format making use of a limitation or exception should be allowed to distribute that format to individuals in other Contracting States. These “long-standing, pugnacious issues” were resolved only towards the very end of the Marrakesh Diplomatic Conference.122 Negotiations over the Three-Step test went on and on so much so that an Indian delegate was said to have asked in exasperation, “Is this a WIPO treaty on access to published works for [visually impaired persons], or a WIPO treaty on the protection of the 3-step test?”.123 The bitter contest over the Three-Step test is understandable given that the rightsholders strongly believe that the Test is a ‘limit to limitations’124 and that the Test strikes a fair balance between the rights so essential to foster sustained creation of works on the one hand and public interest on the other. In contrast, for those who wish to usher in a new copyright paradigm the traditional interpretation of the Three-Step test is a ‘triple gauntlet’125 and few limitations and exceptions can survive running through such a gauntlet. Some hold that “read in a constructive and dynamic fashion”, the Three-Step test “becomes a clause not merely limiting limitations”, but also empower Contracting States to enact appropriate limitations.126 The stand-off over the right of translation was reminiscent of the bitter contest in the runup to the Berne Convention so bitter as to cause concern that that issue might undermine the adoption of the Berne Convention127 In order to ensure that the treaty being negotiated was not caught up in the crossfire of the combatants, the World Blind Union “stuck with its basic message throughout the talks, refusing to allow what it saw as distractions”. Strange bedfellows like the U.S. National Blind Federation and the MPAA strongly made the point that “this important Treaty must not be a vehicle for extraneous agendas” and called upon “the negotiators to stick to the core message”, and “avoid addressing extraneous copyright issues not directly related to creating greater access to published works for the blind and print disabled”.128 To turn to the negotiating history, in addition to the proposal of the World Blind Union sponsored by Brazil, Ecuador and Paraguay, three more proposals (by the

122

Saez (2013). New (2013a). 124 Hugenholtz and Okediji (2008, p. 18). 125 Vaver (2007, p. 735). 126 Hugenholtz and Okediji (2008, p. 25). 127 Hemmungs (2011, pp. 17–27). 128 Joint Statement (2013). 123

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African Group, EU and the U.S.) were submitted between 2009 and 2011.129 To illustrate, the works covered by the proposal of the World Blind Union proposal were not limited to printed books; they included musical and artistic works, databases and films. The proposal spelt out the scope of the limitations on and exceptions to exclusive rights for making an accessible format of a work, and supplying that accessible format, or copies of that format, to a visually impaired person subject to stipulated limitation. The scope of ‘supplying’ an accessible format was again vast and included supplying by any means, including by non-commercial lending or by electronic communication by wire or wireless means, and undertaking any intermediate steps to achieve these objectives. The proposal permitted circumvention of TPMs, if needed, to secure access to the work which was sought to be converted into accessible formats. The proposal also permitted import and export of accessible versions of books without copyright holders’ permission. The proposal prohibited the use of contracts to override its provisions. Article 15 (b) of the proposal permitted Contracting Parties to extend the provisions of this Treaty to persons with any other disability “who, due to that disability, need an accessible format in order to access a copyright work to substantially the same degree as a person without a disability” (italics added). This article gave rise to the legitimate apprehension among developed countries and business groups that the scope of the treaty might extend beyond visually impaired persons. Also worrisome from the perspective of the developed countries and business groups were broad statements in the treaty to the effect that the treaty would further the goals of A2K and the WIPO Development Agenda. The proposal of the African Group was similar to that of the World Blind Union; however, its scope was not limited to disabled persons, and it covered educational and research institutions, libraries and archive centres also. The scope of the EU proposal was narrow compared to those of the World Blind Union and the African Group. The proposal insisted that an exception should comply with the Three-Step test, that compensation should be paid to copyright holders for distribution of accessible written works and that dissemination of accessible written works should occur only through a “trusted intermediary”. The Three-Step test and the concept of a trusted intermediary eventually found their way to the text of the Marrakesh Treaty. The EU proposal also prohibited a copyright exception where there are sufficient and adequate market solutions for persons with a print disability. The U.S. proposal was broadly like that of the EU. The legal instrument that EU proposed was not a binding treaty but a Joint Recommendation. By mid-2011, a consolidated proposal of Latin American countries, the U.S., the EU and other Delegations was floated. Very importantly, the Consolidated Proposal was a non-binding soft law and not a binding treaty. The proposal did not fly as both the proponents of a far-reaching treaty as well as many business groups felt that the proposal went too far to placate the opposite side. Considerable time and effort were spent on considering the relative merits and demerits of alternatives such 129

For details and analysis of the four proposals as well as of the consolidated proposal of Latin America, the United States, the European Union, and other Delegations (2011) see Williams (2012, pp. 1052–1063).

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as a soft law, hard law and voluntary arrangements for the making and distribution of accessible works based on agreements between rightsowners and organisations representing visually impaired persons.130 A negotiating text was prepared in 2012, and sufficient progress was made in its November 2012 meeting for the SCCR to recommend to the WIPO General Assembly the convening of a Diplomatic Conference. In December 2012, the WIPO General Body approved the convening of the Diplomatic Conference which took place from June 17 to 28, 2013. As during the DipCon, informal negotiations among delegations contributed immensely to agreements being reached on crucial and contentious issues; however, a major difference between the Internet Treaties and the Marrakesh Treaty is that while with the Internet Treaties negotiations took place only during the DipCon with Marrakesh Treaty informal negotiations took place not only during the Diplomatic Conference but before the Conference, during an informal and special session of the SCCR and Preparatory Committee in April 2013. The Marrakesh Treaty has the distinction of being the first IPR treaty to make a reference in its Preamble to the principles of non-discrimination, equal opportunity, accessibility and full and effective participation and inclusion in society; these principles were proclaimed in the Universal Declaration of Human Rights and the United Nations Convention on the Rights of Persons with Disabilities. Through its recitals, the Preamble did a fine act of balancing the competing viewpoints of the Member States of WIPO. The definitions provided in the Marrakesh Treaty provide clarity on (i) who will be able to enjoy the limitations and exceptions outlined in the Treaty (‘beneficiaries’), (ii) what can be made accessible (‘works’) and (iii) formats into which such works can be adapted (accessible formats). The broad definition of a ‘beneficiary’ included persons who are visually impaired as well those who might not be visually impaired but have a physical disability that prevents them from holding and manipulating a book. The term ‘print-disabled’ used by The World Blind Union Guide to the Marrakesh Treaty is apt and covers all the intended beneficiaries of the Marrakesh Treaty. However, in the absence of a provision analogous to Article 15 (b) the World Blind Union proposal sponsored by Brazil, Ecuador and Paraguay (2009), the provisions of the treaty cannot be extended to people with disabilities other than print disability.131 The definition of ‘works’ is limited to materials in the form of text, notation and/or related illustration, and an agreed statement to Article 2(a) clarifies that this also includes audiobooks. Thus, musical and artistic works, databases and films, which were proposed to be included by the World Blind Union, stood excluded. The definition of ‘accessible format copy’ was fairly broad and covered any format that permits a print-disabled person to have access to the content as feasibly and comfortably as a person without such a disability, including digital formats. The Marrakesh Treaty requires that Contracting Parties fulfil two main obligations when implementing the Treaty at the national level, although they may do so 130

Kaminski and Yanisky-Ravid (2014). The Obama administration came in for criticism for limiting the scope of the Marrakesh Treaty to the print disabled and for bowing in to the MPAA lobbying and excluding deaf persons and audio-visual works from the scope of the Treaty. Love (2013).

131

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according to their own legal systems. The first (Article 4(1)) is to provide for a limitation on or an exception to copyright in order to allow beneficiaries and “authorised entities” to undertake any changes needed to make a copy of a work in an accessible format for persons with a print disability. The rights covered are the right of reproduction, the right of distribution and the right of making available to the public. In addition to these rights, a Contracting Party may, if it so choses, provide a limitation or exception in regard to public recitation. The second obligation (Articles 5 and 6) is to allow the exchange across borders of those accessible copies produced according to the limitations and exceptions provided in the Marrakesh Treaty, or in accordance with the operation of law. Importation and exportation of accessible format copies are subject to the conditions stipulated in the Treaty. The Marrakesh Treaty gives Contracting Parties considerable flexibility to give effect to Article 4(1) in their respective national legal systems. Two principal modes of implementation are outlined: the safe harbour mode (Article 4(2)) and the sui generis mode (4(3)).132 With the safe harbour model the Contracting Party need only transpose the provisions of Article 4(2) to fulfil its obligations under the Marrakesh Treaty. In contrast, with the sui generis model a Contracting Party has significant discretion to tailor national implementing legislation to its specific policy goals and the needs of domestic beneficiaries; however, flexibility comes with the burden of proving that it had fulfilled its obligations under the Marrakesh Treaty and other instruments like say the TRIPs agreement. Article 4(2) identifies the limitations and exceptions that national legislation should create for authorised entities and beneficiaries. Authorised entities are assigned an important role by the Marrakesh Treaty; they could be either governmental organisations or non-governmental organisations specifically authorised or recognised by the government as entities that provide many functions including education and information access to beneficiary persons. A Contracting Party may, if it chooses, create procedures for securing recognition as an authorised entity. By virtue of the limitations and exceptions provided to them by Article 4(2) (a) authorised entities may, without the authorisation of the copyright rightsholder, make accessible format copies and supply those copies to beneficiary persons by any means including non-commercial lending or by electronic communication subject to four conditions: (i) the authorised entity should have lawful access to the work or a copy of that work, (ii) the authorised entity should introduce only those changes needed to make the work accessible, (iii) the copies should be supplied only for use by beneficiary persons and (iv) making of accessible format copies and supplying them to beneficiaries persons should be undertaken on a non-profit basis. At the domestic level, countries can confine limitations or exceptions to those works that cannot be “obtained commercially under reasonable terms for beneficiary persons in that market”. Use of this possibility requires notification to the WIPO Director General. By virtue of the limitations and exceptions granted to them under Article 4(2) (b), it 132

For details as to (i) why the model dealt with Article 4(1) is called safe harbour model and (ii) details of the sui generis model, and for the rationale of subjecting limitations and exceptions mandated by the Marrakesh Treaty see World Blind Union Guide (2017, pp. 112, 116–7, 157–70).

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would be lawful for both a print-disabled individual and someone acting on his or her behalf—such as a caregiver, teacher or librarian—to make an accessible format copy of a work subject to two cumulative conditions: the copy must be for the personal use of the beneficiary, and the beneficiary must have lawful access to the work or a copy thereof. The Marrakesh Treaty aims to strike a balance between upholding legal rules that prevent the circumvention of TPMs on the one hand and ensuring that such rules do not deter or impede print-disabled individuals and authorised entities from accessing, creating and sharing accessible format copies on the other. These issues are addressed in Article 7 of the Treaty. The Marrakesh Treaty is a standalone treaty and has the standard article that “nothing in this Treaty shall derogate from any obligations that Contracting Parties have to each other under any other treaties, nor shall it prejudice any rights that a Contracting Party has under any other treaties”. There is no requirement that to join the Marrakesh Treaty a country has to be a member of any other international copyright treaty; membership is open to Member States of WIPO and to the EU. However, Article 5(4) requires that Contracting Parties that receive accessible format copies and do not have obligations to comply with the Three-Step test under Article 9 of the Berne Convention must ensure that accessible format copies are not redistributed outside their jurisdictions. Further, cross-border transfer by authorised entities is not permitted unless the Contracting Party in which the copy is made is a party to the WCT or otherwise applies the Three-Step test to the limitations and exceptions enacted for implementing the Marrakesh Treaty. An agreed statement to Article 5(4) makes it clear that “nothing in this Treaty creates any obligations for a Contracting Party to ratify or accede to the WCT or to comply with any of its provisions and nothing in this Treaty prejudices any rights, limitations and exceptions contained in the WCT”.133 The Marrakesh Treaty was adopted on June 27, 2013, and entered into force on September 30, 2016. A few exceptions apart,134 the Marrakesh Treaty had been universally hailed in rapturous terms as historic, unique and exceptional; however, opinions differ on the characterisation of the Treaty and about its impact on the future of copyright and related rights. No one can dispute the contention that the Marrakesh is unique in that it was the first international copyright treaty which did not touch rights at all but limited itself to limitations and exceptions. And further, with the possible exception of the exception for quotations which Article 10 (1) of the Berne Convention provides,135 the Marrakesh Treaty was the first international copyright treaty which laid down mandatory limitations and exceptions; however, as Ficsor had 133

The agreed statement to Article 1 of BTAP is similar to this agreed statement except that it refers to the WPPT instead of the WCT. 134 Senftleben (2017, pp. 1–2), for example, put forth the view that “as a result of treaty architecture (particularly, copyright limitations in favour of blind and print-disabled persons being subject to thorough scrutiny of the Three-Step test), the objective to offer maximum legal certainty in respect of use privileges for blind, visually impaired and print-disabled persons is compromised”. 135 Some commentaries, but not all, consider Article 10(1) of Berne Convention to be a mandatory exception. See Ficsor (2013a, 2013b, footnote 32 at p. 97), WIPO Guide (2003), paragraph BC-10.3, p. 61.

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observed that the Marrakesh Treaty “provides for access to accessible format copies through those kinds of exceptions and/or limitations which were already applicable under …the Berne Convention”.136 In one respect, however, the Marrakesh treaty was totally novel; it was the first international IP treaty to address the problem of cross-border access to copyrighted works. Even though international IP treaties had existed for about one hundred and years prior to the Marrakesh Treaty, they always conformed to the principle of territoriality of IP protection and enforcement. The Marrakesh Treaty broke that tradition by providing for cross-border movement of works in accessible formats subject to the provisions of Articles 5 and 6.137 For the votaries of a new copyright paradigm and a new WIPO, the Marrakesh Treaty was historic and exceptional not for technical reasons such as the being first international copyright treaty to provide for mandatory limitations and exceptions and address the problem of cross-border movement of works. It was historic for substantive reasons. The Marrakesh Treaty marked the beginning of a new paradigm wherein “the needs of people with disabilities and their human rights were recognised on the international policy-making stage as being at least of equal weight to the interests of copyright right holders”.138 In brief, the Marrakesh Treaty was an international instrument that uses copyright tools to achieve human rights ends.139 The Marrakesh Treaty had also been described as “representing a change in culture at WIPO”.140 For human rights activists, “the Marrakesh Treaty is a start and not an end”, and “the momentum created at Marrakech needs to be built upon to recognise and support all types of disabilities and all forms of culture within the copyright/human rights framework”.141 For those activists who want to usher in a new copyright paradigm, the Marrakesh Treaty is seen to be a “small step”, a prelude to taking “the giant leap of discussing ceilings of copyright protection and establishing a general Copyright Limitations and Exceptions Treaty”.142 The above characterisation of the Marrakesh was refuted by scholars who were committed to the traditional conceptualisation of copyright. Thus, Graeme Austin observed that the “placement of international human rights obligations front-andcentre” in the Preamble “does not represent any radical repositioning of human rights in the international intellectual property law architecture”. The role of human rights is limited to being a catalyst and justification for crafting limitations on the rights of IP owners. Austin also made the vital point that to treat “human rights only as a source of limitations overlooks salient aspects of human rights jurisprudence”; international human right instruments express their “commitment to protect authors’ 136

Ficsor (2012, p. 85). Trimble, (2014, pp. 4–5). 138 Brown and Waelde (2015, p. 602). Also see Danielle Conway (2014), Harpur and Suzor (2013, pp. 745, 747), Ayoubi (2019, p. 285). 139 Saez (2017). 140 Conway (2015, p. 57). 141 Brown and Waelde (2015, p. 602). 142 Senftleben (2017). 137

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moral and material interests in their work”.143 Ficsor put forth a view similar to that of Austin. While “respect and service for the human rights of the visually impaired is a key objective” of the Marrakesh Treaty that “does not change the basic nature of the instrument”. The basic structure of the Marrakesh Treaty “is the same as in the case of other copyright treaties”; the Three-Step test plays a key role in the Treaty. The “flexibilities” allowed by that test “makes it possible to foresee generous limitations and exceptions, and the three conditions of the test also determine those limits of the “flexibilities” which are needed to ensure sustainable creation and availability of works”.144 Jingyi Li and Niloufer Selvadurai noted that the Preamble to the Treaty mentioned about the need to provide both “effective protection of the rights of authors” and the need to ensure “effective and timely access to works for the benefit of persons with visual impairments”, and concluded that “this dual objective has been largely achieved by the Marrakesh Treaty”.145 In his closing speech at the Marrakesh Diplomatic Conference, Francis Gurry, DG WIPO, echoed a view similar to those of Austin and Ficsor. He complimented the delegations for negotiating and adopting a treaty which provided a simple, workable and effective framework for addressing the problem faced by the visually impaired and went on to say that “in providing that enabling framework, the Treaty respects the architecture of the international copyright system, thus achieving what so many of the delegations have described as a fair balance”.146

12.10 Happy Days Here Again? International intellectual property developments … ‘are influenced by the repeated swings of an invisible pendulum’ back and forth between non-multilateralism and multilateralism, and as this pendulum swings back and forth, history will repeat itself’… It remains unclear whether these developments swing back and forth at the same pace or whether the swings come with pauses and accelerations.147

The successful conclusion of two Diplomatic Conferences, Beijing and Marrakesh, within just a year and the rejection of ACTA by the European Parliament 143

Austin (2017, pp. 407, 411, 429). Authors’ rights are referred to in Article 27(2) of the Universal Declaration of Human Rights and Article 15 (c) of the International Covenant on Economic, Social and Cultural Rights. 144 Ficsor (2013b, pp. 8–9). 145 Li and Selvadurai (2014, p. 662). 146 WIPO DG Closing Speech (2013). 147 Yu (2014, pp. 115, 120).

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buoyed the spirits of the WIPO functionaries. After the conclusion of the Marrakesh Diplomatic Conference, Gurry declared that “this treaty is a victory for the blind, visually impaired and print disabled, but also for the multilateral system”.148 Does the victory for the multilateral system mean that multilateral norm setting can be resumed, and if so what type of norm setting? Ficsor put forth the view that with the adoption of the Beijing and Marrakesh Treaties, “a quite troubled historical period of the international copyright relations seems to have ended …with a more or less happy ending”, and international copyright relations entered a “period of consolidation”. The troubled period was marked by disruption of WIPO’s activities and ill-informed criticism of WIPO’s activities. WIPO was wrongly faulted for not balancing interests, for concentrating on the protection of rights, for not allowing the application of adequate exceptions and limitations in recognition of important public interests and for being an obstacle to due access to works. Gradually, the period of disruption gave way for a period of consolidation. The WIPO Development Agenda in 2007 smoothly integrated “new development-oriented emphases” into the activities of WIPO “in a well-balanced and intelligent manner avoiding ideology-based exaggerations” (see Sect. 12.4.1). The successful adoption of BTAP and the Marrakesh Treaty within a year was “due exactly to the neutralisation of—hopefully, it can be said: the elimination—of the unnecessary extraneous agendas based on the above-mentioned badly founded legends about the international copyright system”. BTAP and Marrakesh Treaties had confirmed and maintained the principles and basic provisions of the Internet Treaties which were attacked by the Geneva Declaration on the Future of WIPO and the proposal on WIPO Development Agenda sponsored by Argentina and Brazil. The Three-Step test and provision regarding TPMs were the most important of the principles and provisions so confirmed and maintained.149 After entering a caveat about predictions being fallible, Ficsor expressed the hope that the Broadcasting Treaty, the missing link of WCT, WPPT and BTAP, would be adopted “in the relatively near future” and that thereafter “it would be, to use the language of football, advisable ‘to calm the match down’…and go in for a new period of guided development with possible soft law solutions”. A period of guided development is desirable even in respect of the pending issues of limitations and exceptions. This was because Marrakesh Treaty was exceptional and unique, and some of the factors responsible for its success do not exist with a treaty on limitations and exceptions for education, research or library services. The Marrakesh Treaty took care of “(an) extremely specific problem where the differences in levels of development and legal traditions are not so relevant” so much so that “it was not just an exception and limitations treaty it is a format-based treaty”. In contrast, with education, research and library services, differences in levels of development and legal traditions are decisive, and “a fit-for-all solution would not help”. Ficsor indicated a few other issues which might come up for consideration during the next period of guided development: obligations of intermediaries, contractual guarantees, 148 149

WIPO Press Article (2013b). Ficsor (2013b, pp. 1–5). Also see Ficsor, WIPO (2020, pp. 84–85).

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collective management and possibly private law questions. Of these questions, the only issue which is connected with the Internet Treaties is the obligation of online intermediaries. It is possible to read the successful conclusion of the Beijing and Marrakesh Treaties in a way different from the way Ficsor did. Back in 2011, Sara Bannerman wrote that WIPO “is a policy space where social policy advocates have gained ground, influencing WIPO’s direction and operations, and where new expansions of intellectual property and enforcement initiatives have been, for the time being, blocked”.150 The conclusion of the Beijing and Marrakesh Treaties do not signify that the policy space in WIPO was fully recovered from social policy advocates. The Marrakesh Treaty does retain some of the key provisions of the post-TRIPS international copyright system; however, the Marrakesh Treaty belongs to the genre of limitations and exceptions treaties, though with a limited but focussed coverage, and its objective was to enhance access to content of a group with disabilities; further, it is an example of intellectual property law being made to subserve the social policy objective of eliminating unjust discrimination; even BTAP is no different. BTAP, no doubt, created new rights, the rights of performers of audio-visual performances. However, these rights were long overdue; as the IFA Guide to BTAP put it BTAP was “a landmark achievement…that officially ends a discrimination dating from the early 60 s and resulting, until recently, in the sole protection of audio performances in most of the countries around the world”.151 In his closing speech to the Marrakesh Diplomatic Conference, DG,WIPO, Gurry spoke of the Beijing and Marrakesh treaties in the same vein: to quote, “last year, the consensus formed around the injustice of the exclusion of actors and audio-visual performances from the international copyright framework. This year political will be crystallised around the exclusion of the visually impaired from the full enjoyment of our literary culture”.152 In short, like the Marrakesh Treaty BTAP is a treaty to put an end to unjust discrimination. One cannot be sure whether the failure to conclude a Broadcasting Treaty can be framed as perpetuation of discrimination; on the contrary, the Report of the Second Session of the Bellagio Dialogues opposed the Broadcasting treaty as part of a TRIPs-Plus agenda seeking an unwarranted expansion of rights,153 and as outlined above (see Sect. 12.6.1), a formidable alliance of groups opposed the proposed Broadcasting Treaty in view of “its potential negative impact on access to information and knowledge and on technological innovation”. The conclusion of a Broadcasting Treaty would be a litmus test to check whether an era of multilateral norm setting had returned, and the period of “disruption” had ended. Seven years had passed after the conclusion of the Marrakesh Treaty, and yet the Broadcasting Treaty is still a work in progress. That being so, BTAP and the Marrakesh Treaty should be seen as international instruments which subserve the social policy objective of eliminating unjust discrimination (discrimination against audio-visual performers in the case of 150

Bannerman (2011, p. 44). FIA Guide (2012). 152 WIPO DG Closing Speech (2013). 153 UNCTAD (2003). 151

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BTAP and the print disabled in the case of the Marrakesh Treaty) rather than a signal notifying the end of a period of disruption. From a historical overview of WIPO, Peter Yu concluded that whenever it feared that norm-setting activities outside its forum would marginalise it WIPO managed to reinvent itself, a very significant example being its ability to re-emerge as the preeminent norm-setting organisation very soon after the TRIPs agreement seemed to have reduced WIPO as a poor cousin of WTO. In his view, the Beijing and Marrakesh Treaties might be “a reminder of WIPO’s strong ability to persevere in a rapidly changing international norm-setting environment” rather than a return to multilateral norm-setting activities.154 Even if the prognosis of a phase of guided development after the adoption of a Broadcasting Treaty turns to be accurate, that phase would be very different from the previous phase of guided development. The very fact that both the BTAP and the Marrakesh Treaties had to recall the importance of recommendations of the WIPO Development Agenda and of ensuring that development considerations form an integral part of the work of WIPO makes it abundantly clear that there is no way for WIPO to return to the position before 2004 when the ‘disruption’ took place. After Marrakesh, an uneasy equilibrium exists in WIPO between (i) a subset of developing countries which wish to push through an agenda of bringing about a new WIPO and ushering a new copyright paradigm with ceilings on rights and an international treaty on limitations and exceptions and (ii) developed countries which are committed to the conventional copyright paradigm. Prediction is hazardous, and one cannot be certain how long that equilibrium lasts and how it impacts the working of WIPO. However, what is clear is that the period from September 1989 when opposition to the consideration of IP in the Uruguay Round ceased to the end of the twentieth century a narrow window of opportunity was open, permitting the adoption of TRIPs and the Internet Treaties. Reinbothe, Ficsor and many other experts who participated at a panel discussion on 23rd April 2003 at the 11th International Intellectual Property Law and Policy Conference at Fordham Law School, New York are reported to have opined that in the changed policy environment “it might have been difficult, if not impossible to adopt treaties with the contents of the WIPO Treaties of 1996”.155 Their assessment seems to be right on the dot.

Bibliography A. Articles and Books Austin, G. W. (2017). Authors’ human rights and copyright policy. Columbia Journal of Law and the Arts, 40(4), 405–429.

154 155

Yu (2014, p. 124). von Lewinski (2008), paragraph 17.168, p. 492).

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