Dr. Ficsor is right; Prof. Geist is wrong about the WIPO Internet Treaties

December 23rd, 2009 by Barry Sookman Leave a reply »

Earlier this week, Dr. Ficsor posted a blog inviting Canada to join the international community by ratifying the WIPO Internet Treaties. Dr. Ficsor is an internationally revered copyright scholar and professor and the former Assistant Director General of WIPO. As his posting pointed out, he was also responsible for organizing the preparatory work of the two Treaties, for the 1996 Diplomatic Conference adopting them, and for the first efforts to achieve their adequate implementation, There is no one on the planet who knows more about the treaties or what was intended by them than him.

In his post, Dr. Ficsor took issue with several assertions made by Prof. Geist about the treaties. Yesterday, Prof. Geist responded to Dr. Ficsor in another blog posting. Prof. Geist starts his new blog by attacking Dr. Ficsor trying to paint him as a lobbyist for rights holders. Anyone who follows Prof. Geist will know that he labels almost everyone he disagrees with as a lobbyist, attempting to demonize and discredit them by association rather than by the views they hold. Prof. Geist goes way over the line this time, however, when he tries to lead his readers to believe that Dr. Ficsor’s opinions about the WIPO Treaties are influenced by work he may do in the copyright area. Dr. Ficsor’s views about the requirements of the treaties have been well documented for over a decade. It is shameful that Prof. Geist would attempt to tarnish Dr. Ficsor’s reputation and iconic standing by asserting that he has “joined up with copyright lobby groups” thus suggesting that his views are not honestly held.

Now, let’s examine the substance of what Dr. Fiscor said and Prof. Geist’s responses.

1. Dr. Ficsor’s claim: Dr. Fiscor took issue with Prof. Geist’s assertions that Canada has not fallen behind the EU and Canada’s other trading partners by failing to implement the WIPO Treaties. Dr. Ficsor pointed out that such an inaccurate assertion could only be made by someone who is “ignorant about these facts” or “who intend to hide or drastically misinterpret them for some purpose”.

Response by Prof. Geist. Prof. Geist did not respond or take issue with this claim by Dr. Ficsor.

My Comment: Prof. Geist could not respond. Prof. Geist has consistently tried to confuse the concept of treaty ratification with enacting legislation to implement the treaties. When Prof. Geist says “for all the claims that Canada is years behind, the EU ratification arrived today” he wants his readers to believe that the EU member states only now just passed laws to implement the treaties. The fact is, however, that the EU member states had all implemented the treaties long ago to help foster a legal digital infrastructure for its citizens.

The EU enacted a Directive mandating implementation of the treaties in 2001. The member states enacted legislation implementing Directive 2001/29/EC on the dates set out below:

 

Country Implementation Date
Austria  July 1, 2003
Belgium May 22, 2005
Cyprus May 1 2004
Czech Republic December 1, 2000 (in part)
Denmark  December 22, 2002
Estonia October 29, 2004
Finland  October 14, 2005
France  August 4, 2006
Germany  September 13, 2003
Greece  October 10, 2002
Hungary May 1, 2004
Ireland  January 16, 2004
Italy  April 9, 2003
Latvia April 22, 2004
Lithuania January 1, 2004
Luxembourg  April 18, 2004
Malta September 2, 2003
Netherlands  September 1, 2004
Norway July 1, 2005
Poland April 1, 2004
Portugal  August 24, 2004
Slovakia January 1, 2004
Slovenia April 24, 2004
Spain  July 7, 2006
Sweden  July 1, 2005
United Kingdom  October 31, 2003

 

2. Dr. Ficsor’s claim: Dr. Fiscor took issue with Prof. Geist’s assertion that Canada has the flexibility to adopt a “made in Canada approach” to implementing the treaties which does not involve providing legal protection for anti-circumvention tools. Dr. Ficsor stated “the professor’s blog seems to suggest a kind of “made-in-Canada” way of implementation that would consist of not implementing certain obligations under the Treaties”, and in particular, not protecting against anti-circumvention tools.

Dr. Ficsor explained why legal protection for anti-circumvention tools was required under the treaties as follows:

“The allegation that the two Treaties do not require protection against the manufacture and distribution of unauthorized circumvention devices is completely groundless. The negotiation history of the Treaties clearly indicates that, although their anti-circumvention provisions finally used a more general language, they had been based on proposals extending to the prohibition of such activities. However, what is even more important is that the obligation to provide for such prohibition also follows from the text of the relevant provisions themselves of the Treaties. Under those provisions, Contracting Parties are obligated “to provide adequate legal protection and effective legal remedies” against the circumvention of technological protection measures. It could hardly be suggested seriously and without a big amount of cynicism that a Contracting Party is able to provide adequate protection and effective remedies if it only prohibits the very acts of circumvention and leave technological protection measures to their gloomy fate by that.  Such acts are normally performed in private homes or offices where, due to privacy considerations, it would be extremely difficult – or quasi impossible – to apply adequate protection. At the same time, it is possible to build adequate defense line if the manufacturing and distribution of unauthorized circumvention devices and services are also prohibited. Since this is possible and since this is needed for an adequate anti-circumvention protection, it follows from the treaty obligations that this should be applied by the Contracting Parties. The EU regulation is based on this recognition and the regulation is duly applied by the Member States.  The EU has not chosen an imaginary “WIPO-lite” implementation to fulfill certain obligations and neglect others, since there is no such way of implementing the Treaties; it would be equal not implementing them by adopting a ridiculous theory that for some mysterious reasons the basic principle serving as a basis of any serious agreement – pacta sunt servanda – does not apply to them.”

Response by Prof. Geist. Prof. Geist simply asserts that a proposal for expressly protecting anti-circumvention tools was not accepted into the wording of actual treaties at the Diplomatic Conference. As Dr. Ficsor had already pointed, the Diplomatic Conference adopted the requirement that legal protection be “adequate” and remedies be “effective”. Prof. Geist cites an article from Prof. Samulson which purports to describe the history behind the provisions adopted at WIPO. However, Prof. Geist does not attempt to contradict Dr. Ficsor’s assertion that the requirement for adequate legal protection and effective legal remedies for TPMs does not require legal protection for anti-circumvention tools.

My Comment: It is one thing to claim, as does Prof. Geist does, that a specific proposal for the wording of the treaties was rejected at the Diplomatic Conference. It is quite another thing to make the completely unsupported conclusion that Canada “can be compliant with the WIPO Internet treaties without implementing” protection for anti-circumvention tools. It is noteworthy, that Prof. Samulson, the only authority relied upon by Prof. Geist, does not even suggest in the article quoted that the WIPO treaties do not mandate legal protection for circumvention tools. In fact, she concluded “The inclusion of terms like “adequate” and “effective” protection in the treaty will mean that U.S. firms will be able to challenge national regulations that they deem deficient.”

It is telling that in the face of being directly confronted by Dr. Ficsor, the world authority on the interpretation of the WIPO Treaties, that Prof. Geist did not cite even a single authority that supports his position that Canada can implement the WIPO Treaties without providing legal protection for circumvention tools.

The authoritative texts which have interpreted the obligations imposed by the WIPO Treaties all agree that to be adequate and effective, anti-circumvention provisions must prohibit the trafficking in circumvention tools and the provision of services which can be used for circumvention purposes. For example, the WIPO Guide to the Copyright and Related Rights Treaties administered by WIPO[1] states the following in this regard:

“For these reasons, Contracting Parties may only be sure that they are able to fulfil their obligations under Article 11 of the Treaty if they provide the required protection and remedies: (i) against both unauthorized acts of circumvention, and the so-called “preparatory activities” rendering such acts possible (that is, against the manufacture, importation and distribution of circumvention tools and the offering of services for circumvention)… (iii) not only against those devices whose only – sole – purpose is circumvention, but also against those which are primarily designed and produced for such purposes, which only have a limited, commercially significant objective or use other than circumvention, or about which its is obvious that they are meant for circumvention since they are marketed (advertised, etc.) as such”.

Reinbothe and von Lewinski, in their book The WIPO Treaties, [2] are equally unequivocal about the need to include protection against trafficking of circumvention tools and the provision of services which are made available for the purpose of circumventing technological measures:

“…It may be held that legal protection against circumvention is only meaningful and adequate if it also covers circumvention devices and services, the so-called ‘preparatory acts’… the manufacturing and distribution of devices which permit or facilitate circumvention may potentially cause more important prejudice to rightholders than acts of circumvention. A ‘circumvention only’ approach appears, therefore, to be insufficient…The domestic law of Contracting Parties would have to proscribe devices, products, components or the provision of services which are produced or distributed for the purpose of circumventing protection technologies.”

Prof. Jane Ginsburg[3] comes to the same conclusion in rejecting the proposition that the WCT does not require protection against trafficking in circumvention tools:

“Such an inference seems unwarranted, because it would significantly diminish the effectiveness of the prohibition. First, limiting the prohibition to the act of circumvention would mean that copyright owners would need to discover and prove the commission of acts that may often occur in private, at the user’s home. This seems both difficult for copyright owners and undesirable to users. Second, outlawing the device as well as the activity is likely to have a greater impact on the provision of circumvention devices; without the device, less circumvention is likely to occur, and it is more effective to pursue a small number of device suppliers than the large numbers of their customers. Moreover, the formulation “the circumvention” should be read in the context of the sentence in which it appears. An interpretation that disfavors effective protection against circumvention by limiting the prohibited conduct to the sole act of circumvention, rather than encompassing the provision of devices as well, would be inconsistent with art. 11’s direction that member States “shall provide  adequate legal protection and effective legal remedies against the circumvention.”

In recognition of the need to provide rights and remedies against circumvention tools, the international norm of countries that have implemented the WIPO Treaties is to prohibit trafficking in circumvention tools. Countries and territories that have done so include the United States, Australia and Japan. As Dr. Ficsor pointed out, this requirement is also in the EU Directive which has been implemented by EU member states.

Glen Bloom, a well known Canadian copyright lawyer, and the vice-chair of the CBA’s Copyright Technical Committee, expressed the same opinion about the treaties after considering whether Bill c-60, which would not have provided legal protection for TPMs, could have complied with the WIPO treaties:

“‘A plain reading of Articles 11 and 18 of the WIPO Internet Treaties, the definition of “technological measure” and new section 34.02 inevitably raise questions about the adequacy of the protection for technological measures to enable Canada to ratify the WIPO Treaties. In fact, in view of persuasive commentary including in particular the WIPO Guide and legislative developments among Canada’s trading partners, the inevitable conclusion is that Canada’s legislation could not adequately implement its obligations regarding technological measures under the WIPO Internet Treaties without significant amendment to the definition and new section 34.02.”[4]

3. Dr. Ficsor’s claim: Dr. Fiscor took issue with Prof. Geist’s assertions that “the European national implementations show a wide range of exceptions, opening the door to a ‘made-in-Canada’ WIPO approach.”

Response by Prof. Geist. Prof. Geist did not respond or take issue with this claim by Dr. Ficsor.

Dr. Ficsor ends his posting by asserting that Prof. Geist’s views “about the obligations under two WIPO Treaties and about the way the EU Member States have implemented them are groundless and misleading.” There is nothing in Prof. Geist’s reply that should change anyone’s opinion’s on the substance of Dr. Ficsor’s rebukes of Prof. Geist.

For more information about the Copyright Modernization Act or Bill C-11 or copyright reform, see Change and the Copyright Modernization Act.


[1] WIPO Guide Geneva 2003 at para CT-11.16.

[2] Reinbothe and von Lewinski, The WIPO Treaties at  141, 144-145

[3] Ginsburg Legal Protection of TPMs  at  8.

[4] Technological Measures and Rights Management Information October 25, 2005

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