In the press conference announcing the Bill at the Ottawa office of software producer bitHeads Inc., Minister Paradis added “With the reintroduction of today’s legislation, Canadians will soon have a modern and responsive copyright law for the digital age that protects and helps create jobs, promotes innovation and attracts new investment to Canada”. In the House of Commons Minister Moore also said “we introduced a bill that is fair to everyone, both creators and consumers. What artists across the country need right now is copyright legislation that will make piracy illegal in Canada. That is what Bill C-11 will do.”

Bill C-11 is the fourth attempt to amend the Copyright Act since 2005 — to bring the Act into the digital age. The Bill will likely make good the promise made in the Conservative Party Platform on Copyright that, “A Stephen Harper-led majority Government will also reintroduce and pass the Copyright Modernization Act, a key pillar in our commitment to make Canada a leader in the global digital economy.” It will also likely deliver on the commitment made in the Throne Speech to swiftly pass “copyright legislation that balances the needs of creators and users.”

Bill C-11 contains the same proposed amendments as its predecessor, Bill C-32.  This was anticipated based on statements made by Minister Moore and others prior to its introduction. According to a press release announcing that Canada had signed the Anti-Counterfeiting Trade Agreement (ACTA), the “bill informed and guided Canada’s approach to the ACTA negotiations.”

Along with Bill C-11, the Government released Fact Sheets, an FAQ, and a Backgrounder.[1] These are all available on the Government`s website: www.balancedcopyright.gc.ca.

The FAQ describe certain aspects of the Bill including the following summary that says the Copyright Modernization Act will:

• implement the rights and protections of the World Intellectual Property Organization (WIPO) Internet treaties;
• give copyright owners the tools they need to combat piracy;
• clarify the roles and responsibilities of ISPs and search engines;
• promote creativity and new methods of teaching in the classroom by providing greatly expanded exceptions for education;
• encourage innovation in the private sector through exceptions for technical computer processes;
• provide legal protection for businesses that choose to use technological protection measures or “digital locks” to protect their work as part of their business models; and,
• give consumers the ability to, among other things, record their favourite TV shows for later viewing, transfer music from a CD to a digital device, and create a mash-up to post via social media.

I previous provided an overview of the Bill`s key provisions. See, Some thoughts on Bill-C-32: An Act to Modernize Canada’s copyright laws.

As I noted in My C-32 opening remarks to the Legislative Committee that studied Bill C-32, I support the government’s objectives. There are, however, areas where the Bill would have significant unintended consequences if passed without amendments consistent with those objectives. Many of these are technical. Perrin Beatty, President and CEO, Canadian Chamber of Commerce, referred to this in a press release when Bill C-11 was introduced on Sept. 29th:

While the Canadian Chamber supports the principles behind this copyright legislation, improvements still need to be made to the bill. As currently drafted, the bill still contains some possible unintended consequences that could prove problematic for business. We look forward to a rigorous review of the bill at committee stage that will make sure that it achieves the purposes for which it is designed.

In the Government background documents the Government stated that it will refer the Bill to a House of Commons committee and that the “work and testimony from the previous Parliament will be carefully considered and taken into account.” Minister Paradis also confirmed at the press conference that the Government “…will make any technical fixes necessary to achieve our objectives of taking meaningful action on copyright piracy, protecting right owners and promoting creativity, innovation and legitimate business models for the benefit of the consumers.” The Government`s objective remains to have the Bill passed by Christmas.

There has been considerable debate concerning some of proposed amendments. Some of the main issues that will be debated as the Bill winds its way through a House of Commons committee and, ultimately, into law are the following:

• Technological Protection Measures
• The Enablement Right
• The Non-Commercial User-Generated Content (UGC) Exception
• Statutory damages
• The Internet Service Provider and Search Engine Exceptions and Responsibilities
• The Fair Dealing for Education Exception
• The Copyright Exceptions to Encourage Innovation

Technological Protection Measures (aka digital locks or TPMs)

Bill C-11 will prohibit circumventing (hacking) of TPMs that control access to a work. It will also prohibit trafficking of tools or provision of services that can be used for this purpose. The Government background documents explained the TPM provisions and the rationale for protecting TPMs as follows:

Innovative companies, such as video game developers, will have the legal tools to protect the investments they have made in order to reinvest in future innovation and jobs.

Protecting digital locks gives copyright industries the certainty they need to roll out new products and services, such as online subscription services, software and video games, if they choose to use this technology. Not only will this promote investment and growth in Canada’s digital economy, it will also encourage the introduction of innovative online services that offer access to content. Such services are increasingly available in other countries.

The Bill recognizes that certain protections, such as restricted content on news websites or locked video games, are important tools for copyright owners to protect their digital works and are often an important part of online and digital business models.

Opponents of legal protection for TPMs — such as Michael Geist — have made inaccurate statements about the legal protection for TPMs. Michael Geist’s relentless misinformation campaign[2] against them makes it difficult and confusing for many Canadians to form informed views about the Bill’s TPM provisions. Michael Geist repeated some of the inaccurate or misleading statements in a blog post and in the media after the Bill was introduced. For example:

• He continues to suggest that “digital lock rules trump education rights”. However, since Bill C-11 does not prohibit circumventing copy control TPMs, it would be legal to hack a copy control TPM for an educational or any other purpose. Once hacked, a person would be able to make copies of the unprotected work under the new fair dealing for education exception, as long as the dealing is “fair”. However, a person could not bypass a technical control that protects a work against access the person is not entitled to in the first place.[3] The prohibition against hacking access control TPMs is not about “trumping education rights”. It is about ensuring that people who want to make copies of a work for an educational purpose obtain legal access to the work such as by purchasing or licensing a copy in order that the creator or other rights holder may be compensated.
• He also continues to argue that “digital lock rules extend far beyond those required for compliance with the WIPO Internet treaties”; that Canada can properly implement the WIPO Treaties by limiting the prohibition on circumvention to an infringing purpose; that the WIPO Treaties would permit hacking TPMs for the purpose of format shifting; that many of our trading partners have implemented the WIPO Treaties in these ways; and that “many of our trading partners have adopted more balanced digital lock rules”. He makes these arguments although they have been found to be completely inconsistent with the minimum requirements of the Treaties by the leading international expert , Dr. Mihaly Ficscor here, here, here, and here. Michael Geist’s proposals would, essentially, eviscerate the business and policy reasons for protecting TPMs.
• Further, he suggests that the U.S. DMCA’s TPM provisions “offer more flexibility than Canada”.  This statement is misleading as I have shown here, here, and here.

There is also considerable misunderstanding about the TPM provisions within the general public. For example,

• the National Post, Vancouver Sun, Winnipeg Free Press, Calgary Herald, and other newspapers just published an article stating that the TPM “provisions would make consumers liable for thousands of dollars in legal damages if they break the digital encryption on a purchased DVD or video game to make a backup copy for themselves.”
• the Montreal Gazette published an article stating that Bill C-11 contains a “blanket provision against breaking digital locks, even for purposes of personal use; The bill provides for $5,000 fines for even the smallest such violations. This provision was apparently included as a result of heavy pressure from U.S. authorities and in the interest of maintaining cross-border trade and exemption from protectionist measures that would prevent Canadian firms from bidding on U.S. government procurement contracts.”

These statements are just plain wrong. The Bill does not prohibit hacking copy control digital locks for any purpose and there are multiple exceptions that permit circumventing access control TPMs. Moreover, Section 41.1(3) of the Bill expressly precludes an award of statutory damages against an individual who circumvents a TPM for his or her own private purposes. Accordingly, it is flat out wrong to claim that an individual could be liable for “thousands of dollars in legal damages” for hacking a TPM for personal purposes. Further, even if statutory damages did apply, which they do not, the Bill would limit such damages to a range, the maximum of which would be $5,000 for the most egregious case.

In my blog post, An FAQ on TPMs, Copyright and Bill C-32, I tried to set the record straight on the following questions about the legal protection for TPMs to enable the public to make their own assessment of the TPM provisions in Bill C-32 based on correct information:

• Whether Bill C-32 properly implements the WIPO Treaties consistent with the practices of our trading partners
• Whether the Bill permits copying for fair dealing, educational, and other purposes
• Whether the circumvention exceptions in the Bill are flexible enough to deal with unforeseen or unintended consequences
• Whether Canada can properly implement the WIPO Treaties by limiting the prohibition on circumvention to an infringing purpose
• Whether other jurisdictions limit protection of TPMs to circumvention for an infringing purpose
• Whether circumvention of TPMs for the purposes of format shifting, time shifting, and making back-up copies for private purposes (private copying) ought to be permitted
• (Given that one of the legislative goals is to follow international standards) whether other jurisdictions permit exceptions for private copying to trump TPMs
• Whether an exception for private copying that permits circumvention of TPMs for such purpose would comply with the Berne Three Step Test
• Whether the WIPO Treaties which Canada has committed to ratify permit circumventing TPMs for private copying
• Whether Michael Geist`s two proposals for amending the TPM provisions in Bill C-32 (now Bill C-11) have international precedents.

Other posts such as the ones set out below also correct inaccurate statements made about legal protection for TPMs.

• Separating copyright fiction from facts about C-32’s TPM provisions
• Separating facts from hype about C-32
• Are the TPM provisions in C-32 more restrictive than those in the DMCA
• C-32 and the BlackBerry PlayBook: A reply to Michael Geist
• Dr. Ficsor TPMs and Flexibility (’The Ability of Bending Without Breaking’) – Why Should the TPM Provisions of Bill C-32 Protect Access Controls and Prohibit ‘Preparatory Acts”,
• Dr. Ficsor is right; Prof. Geist is wrong about the WIPO Internet Treaties
• Dr. Ficsor: An invitation to Canada to join the international community by ratifying the WIPO Internet Treaties
• Dr Ficsor Legends and reality about the 1996 WIPO Treaties in the light of certain comments on Bill C-32
• Dr Ficsor Only once more – and then Marry Christmas and Happy New Year to everybody, including Professor Geist and his devoted followers: the 1996 WIPO Diplomatic Conference, the WIPO Treaties and the balance of interests
• Reflections on the liberal roundtable on the digital economy
• FACEBOOK FAIR FOR COPYRIGHT OF CANADA: REPLIES TO PROFESSOR GEIST
• ‘TPMs’’: A Perfect Storm for Consumers: Replies to Professor Geist

The Enablement Right

Section 27(2.3) of Bill C-11 would create a new cause of action referred to in the Bill as “enablement”. The Government background documents describe this new right and the rationale for it as follows:

The Bill gives copyright owners the tools to pursue those who wilfully and knowingly enable copyright infringement online, such as operators of websites that facilitate illegal file-sharing.

It recognizes that the most effective way to stop online copyright infringement is to target those who enable and profit from the infringements of others. By allowing copyright owners to pursue these “enablers”, such as illegal peer-to-peer file sharing sites, this Bill supports the development of significant legitimate markets for downloading and streaming in Canada. This supplements existing criminal punishments for those who aid and abet infringement.

The Government background documents also state that the “proposed legislation will ensure that services that enable infringement will not benefit from the liability limitations afforded to ISPs and search engines.”

From the appearances and submissions to the Legislative Committee that studied C-32, there is a consensus supporting the enablement provision. Michael Geist, however, opposes giving rights holders tools to go after pirate sites and services like IsoHunt calling into question the need for an enablement amendment. I responded to his contradictory posts on the state of Canadian secondary liability law in a blog post, Are Canada’s copyright laws friendly or unfriendly towards wealth destroyers according to Prof. Geist? I concluded that:

It is clear that Prof. Geist’s objective in this recent spate of activity is to persuade policy makers and the public that the new proposed enablement cause of action is not needed because Canada’s copyright laws are already robust enough to deal with what Minister Clement calls “the wealth destroyers” like IsoHunt. However, for years Prof. Geist has consistently and repeatedly been writing and telling the public that Canada’s laws related to authorization might not be effective against pirate sites and services and that Canada does not have contributory liability laws that can be used against these sites and services…

The only conclusion that can be drawn from a review of his writings is that he has either changed his long standing opinion about the state of Canadian law – now believing it is effective enough to shut down the wealth destroyers like IsoHunt- or that he is inaccurately describing what he believes Canadian law to be to oppose the amendments in Bill C-32 that are intended to give rights holders the tools needed to close down wealth destroyers.

While the new enablement right could be a very useful tool in fighting online pirate sites and services, it has some technical drafting deficiencies that need to be fixed to ensure that the new cause of action can be used as intended. Perrin Beatty of the Canadian Chamber of Commerce noted this in the Q&A at the press conference in Ottawa where he stated that the concept of “designed primarily to enable infringement” needed to be clarified and that this clarification is an “essential technical amendment to ensure that the bill in fact achieves the purpose for which it was intended.”

I addressed the drafting problems in My C-32 opening remarks to the Legislative Committee and in an article co-written with Dan Glover titled C-32 enablement remedy targets secondary copyright infringement. There we noted three of the technical amendments that are needed to ensure the Government`s objectives of targeting the “wealth destroyers” are met.

• First, Parliament must recognize that pirate sites and services often are “not designed primarily to enable” acts of copyright infringement. The design is very often neutral, but the site or service is operated to induce, aid or abet infringing activities, or is primarily operated or used for infringing purposes.
• Second, Parliament must ensure that this provision clearly trumps all of the online service provider exceptions to avoid a circumstance in which enablers like wealth destroying pirate hosting sites can avoid liability for enablement.
• Third, to provide an adequate and effective remedy against enablement, Parliament should confirm that rightsholders may rely on the full scale of statutory damages against those who are liable for enablement, regardless of whether such persons were operating for commercial purposes or not.

The Non-Commercial User-Generated Content (UGC) Exception

Bill C-11 contains a new exception that would permit individuals to use existing content to create new ‘user generated content’. The Government background documents describe this amendment and its objective as follows:

The Bill permits the use of legitimately acquired material in user-generated content created for non-commercial purposes. This applies only to creations that do not affect the market for the original material. Examples could include making a home video of your friends and family dancing to a popular song and posting it online, or creating a “mash-up” of video clips.

The Government background documents also state that the changes proposed are in “conformity with Canada’s international obligations”.

In My C-32 opening remarks to the Legislative Committee studying Bill C-32 I pointed out some of the unintended consequences of the draft wording in the UGC amendment stating the following:

This is an exception that, to my knowledge, does not exist anywhere else in the world.

From a technical drafting perspective, the exception is so widely cast that it would most likely violate Canada’s WTO TRIPS obligations. TRIPs mandates that exceptions must be subject to what is known internationally as the 3 step test.

The exception, as drafted, would permit individuals to do almost anything that the author could do with his/her work including creating translations, sequels, or other derivative works and publish them on the internet.

They could also create a “collective work” or “compilation” of works such as “the best” of a TV series or artists’ works, or iPod playlist and post those on the internet.

They can also do a lot more.

The result is that the author loses significant control over the uses of his/her work.

But, over and above this, there could be significant economic consequences to the author. The intention is to permit uses which have no effect on the market for the work. However, the drafting permits aggregate effects on the market for the work that could be very substantial.

Also, the individual’s use of the new UGC work must be non-commercial. But a web site operator can charge for disseminating the UGC work. But, the author gets none of that. They would however in other countries which don’t have this exception and which have let the market solve the problem.

I also highlighted some of the potential problems with the draft language of the UGC, format shifting, time shifting, and back-up copying exceptions in a speech on Bill C-32’s fair dealing and other new copyright exceptions at Osgoode Hall Law School’s professional development program on understanding Bill C-32.

Statutory damages

Bill C-11 would cap statutory damages against individuals who infringe copyright for non-commercial purposes to a range of between $100 and $5,000 for all works involved in the proceeding. It also specifically exempts persons who are liable under the new enablement provision from any statutory damages. The Government background documents describe this amendment and its objective as follows:

This Bill ensures that Canadians will not face disproportionate penalties for minor infringements of copyright by distinguishing between commercial and non-commercial infringement.

The Bill ensures that Canadians are not subject to unreasonable penalties by significantly reducing statutory damages for infringement for non-commercial purposes by individuals, providing the courts with the flexibility to award between $100 and $5,000 in total damages. Using the same example of five illegally downloaded songs, the individual would only be liable for a penalty of between $100 and $5,000 under the proposed changes. The Bill will ensure that courts take proportionality into account in awarding damages.

It appears that the rationale for capping statutory damages against individuals is to preclude large judgements against them when they engage in unauthorized downloading of copyright content over the internet. The underlying concern seems to stem from a fear that a Canadian court would award large damages such as have been awarded in the United States.

The existing Canadian and U.S. regimes are very different, however. In the U.S., the statutory damages per work infringed range from $750 to $30,000 for non-wilful infringements. This range can be increased to $750 to $150,000 for wilful infringements. Canada’s statutory damages range is lower- from $500 to $20,000- and cannot be increased even if the infringement is wilful. However, they can be reduced to a range of between $200 to $500 where a person, such as an individual, had no reasonable grounds to believe he or she was infringing. A Canadian Court also has the discretion to lower the damages to zero where there is multiple copying onto a single medium and the award would be grossly out of proportion to the infringement. The Canadian statutory damages regime, unlike the regime in the U.S., therefore already reflects a proportionality principle. Moreover, there has never been a case in Canada where a copyright owner has been awarded anything close to the maximum statutory damages against an individual who downloaded copies of copyright content from file sharing networks.

This Bill would accomplish the Government’s objectives of ensuring that Canadians will not face “disproportionate penalties for minor infringements of copyright by distinguishing between commercial and non-commercial infringement.” However, it does so in a way that undermines the Government’s objectives of deterring wide scale infringements and providing effective remedies against those infringements that can cause significant economic harm. For example:

• the proposal would cap the recovery of statutory damages against infringements undertaken by organized groups like those who trade in Warez – pirated copyrighted works distributed without fees or royalties and without any commercial purpose – in violation of copyright law.[4] This would effectively cap statutory damages at $5,000 for persons who cause large scale commercial damage, but who do so for reasons other than profit. Some of the most notorious pirates and pirate sites are operated for reputational rather than profit motives.
• the proposal would preclude recovery of statutory damages against any pirate site or service that was liable under the new enablement cause of action. If the site was operated for a non-commercial e.g. reputational, purpose statutory damages could be not be recovered. However, statutory damages would still not be recoverable even against a for profit pirate site or service because of the special exception for statutory damages according to such sites.[5] Ironically, under Bill C-11 a person who is liable for enablement – a “wealth destroyer” to use the words of former Industry Minister Tony Clement- would be subject to no statutory damages while an individual who causes minimal damage and who infringes for a non-commercial purpose would be.
• the proposal would cap statutory damages at $5,000 even though a person might copy, distribute, and make available over the internet hundreds of software, video games, e-books, movies, music and other copyright content that are downloaded by thousands of other individuals as long as these acts are done for “non-commercial purposes”; for example, it would enable individuals to copy and store entire libraries of works and to distribute them to all of the person’s friends, including all of the person’s friends on social networks, high school, university or work colleagues, and over file sharing networks like IsoHunt  to millions of potential downloaders, and the maximum statutory damages would still be $5,000.

In amending the statutory damages regime, the Government should not inadvertently undermine the usefulness of statutory damages which are necessary to ensure there are effective remedies against infringers, discourage infringement, reduce the costs of litigation, and encourage parties to settle litigation. When the statutory damages regime was enacted by the Government in 1997 (the same year Canada signed the WIPO Treaties), it explained the rationale for them as follows:

A copyright owner who commences proceedings for infringement must prove not only the infringement, but also the losses suffered as a result. However, it is often difficult, sometimes impossible, to prove such losses because evidence as to the extent of infringement is usually difficult and/or expensive to find. Statutory damages alleviate this difficulty by guaranteeing a minimum award of damages once infringement is established. They also ease the evidentiary burden on the plaintiff in proceedings for infringement, deter future infringements, reduce the cost of litigation and encourage the parties to settle matters out of court.

The above rationale for statutory damages is still valid.

The Internet Service Provider and Search Engine Exceptions and Responsibilities

Bill C-11 contains four new exceptions referred to as the network service, caching, hosting, and information location tool (aka search engine or ILT) exceptions. The object of these exceptions is explained in the Government background documents as follows:

The Bill ensures that ISPs and search engines will not be held liable for the copyright infringements of their subscribers, to the extent that they are acting as neutral intermediaries (e.g., when they provide Internet access, allow users to download material they have stored in online personal storage space they control, or make temporary cached copies for network efficiency).

The bill will clarify that Internet service providers (ISPs) and search engines are exempt from liability when they act strictly as intermediaries in communication, caching, and hosting activities. The proposed legislation will ensure that services that enable infringement will not benefit from the liability limitations afforded to ISPs and search engines.

These provisions also require technical amendments to ensure the Government`s objectives are met. On March 22, 2010, TELUS, Bell and Rogers appeared before the Legislative Committee studying Bill C-32. who appeared for TELUS acknowledged that some technical amendments are needed to the ISP and ILT exceptions stating the following:

TELUS would support amendments that would give rights holders more powerful tools to go after those who actively enable infringement, and also amendments that would prevent the bad guys from taking advantage of the legal safe harbours intended to protect only the good guys…

TELUS does have some recommendations, but they’re relatively minor. They’re focused on making the notice and notice system work better, more efficiently, and more fairly for all the stakeholders involved. As I have also indicated, we recognize the concerns on the part of some rights holders that the provisions designed to protect innocent intermediaries may be drafted too broadly. They may allow not-so-innocent intermediaries to slip in underneath them. That’s not a desirable result, so we would certainly be open to amendments designed to tighten those up.

The Bill would also create a notice and notice regime. The process and its rationale are described in the Government background documents as follows:

The Bill formalizes the voluntary “notice and notice” regime currently used by Canadian ISPs. Under this system, when an ISP receives a notice from a copyright holder that a subscriber might be infringing copyright, it forwards a notice to the subscriber. The identity of the subscriber may then be released with a court order. This uniquely Canadian approach has been effective at discouraging infringement and is consistent with Canadian values.

A notice and notice process is somewhat useful in dealing with infringing activity across P2P networks and other transitory network communications. It should become part of Canadian law. Notice and notice is not effective, however, in permanently stopping online file sharing by users unless the individuals receiving the notices believe that sanctions could be imposed unless they stop such activity. We have had a de facto notice and notice system in Canada for many years and there is no empirical evidence that it materially changes people’s behaviour to stop illicit file sharing and purchase creative products from legitimate services. Research by our trading partners shows that while a simple notice may have a temporary effect in reducing online file sharing, only notices that have a threat of some sanction operate as an effective deterrent. I dealt with this issue in my submission to the Copyright Consultation in 2009 and in other blog posts including here and here.

Given the Government`s statements about copyright reform, it does not appear that any graduated response system will be put in place under any amendments to Bill C-11. However, as noted above in the testimony of Craig McTaggart some technical amendments are required to make the notice and notice system work as intended.

The Fair Dealing for Education Exception

Bill C-11 proposes to add education to the current list of fair dealing purposes. The Government background documents describe the proposed amendment and its objective as follows:

The Bill enables the use of copyrighted materials for the purpose of education, provided the use is “fair” (i.e., it does not harm the market for a work).

It expands fair dealing to recognize education in a structured context as a legitimate purpose.

As drafted, the proposed wording of the amendment would not accomplish the Government’s objective. The proposed amendment is not clearly limited to only enabling the use of copyrighted materials for the purpose of education “in a structured context”. Unlike all of the current educational purpose exceptions, the proposed amendment is not expressly limited to specific institutional beneficiaries. As well, the term “education” conveys a meaning that appears to go beyond any structured context.

Limiting the exception to dealings that are “fair” will also not ensure that the dealings do “not harm the market for a work. “Fairness” does not provide any assurance against this harm to rights holders. The courts in Canada have developed a list of six non-exclusive factors to assist in determining whether a dealing is fair. Of these six, the effect of the dealing on the work is only one factor to be considered. The Supreme Court in the CCH case stated that while the effect of the dealing on the market of the copyright owner is an important factor, “it is neither the only factor nor the most important factor that a court must consider in deciding if the dealing is fair.” This means that a court may be able to conclude that a dealing is fair even if it harms the market for a work. In contrast, in the United States, the effect of the use upon the potential market for, or value of, the copyrighted work is “the most important, and indeed, the central fair use factor”. Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, (1985), Bouchat v. Baltimore Ravens LP, (4th Cir. Sept. 2, 2010)

Prof. Giuseppina D’Agostino, a professor of Intellectual Property at Osgoode Hall Law School, in her testimony before the Legislative Committee stated the following in relation to the proposed new fair dealing exception:

This new purpose is too broad and invites years of litigation to clarify it, which will lead to access-to-justice issues and will force the courts to resolve matters that are for the government to legislate with confidence in so doing…

On fair dealing, one thing I haven’t talked about is my own analysis of the six factors. When you line up Canada with respect to the U.K. and the U.S., you see that the court says there are more or less six factors, and there could be more. At the same time, in terms of the effect of the dealing on the works–meaning the actual market considerations, the market substitute–the Supreme Court of Canada says that it’s not the only factor, nor the most important.

We know that this is not the case in the U.K. and not the case in the U.S. What we have in Canada with CCH is a broad and liberal interpretation of both the actual purposes and the fairness factor. Left unchecked, the way it’s configured now means that when you compound education plus CCH, you will have something broad, unless we are able to itemize exactly what we mean.

Ysolde Gendreau a professor of law at the University of Montreal and the President of Association Littéraire et Artistique Internationale (ALAI Canada) in her testimony before the Legislative Committee stated the following:

I would like to submit a few examples of this found in Bill C-32, which, in ALAI’s view, undermines the three-step principle, because these exceptions are too broad, because they are based on unrealistic conditions that, once again, make them too broad. Here we’re talking about fair dealing for the purpose of education, the new section 29. We’re talking about non-commercial user-generated content, private copying under section 29.22…

In a law review article on the subject of the proposed fair dealing exception Professor Gendreau also expressed the opinion that the term “education” would not be read to mean “education in a structured context” and that the proposed exception would likely not meet any of the steps in the Berne Three Step Test.[6]

Michael Geist published a series of blog posts commenting on the scope of this new exception including one entitled “Clearing Up the Copyright Confusion: Fair Dealing and Bill C-32”. He concluded that this amendment would not affect the balance between creators of educational materials and the users of such materials or negatively impact the market for publications. My colleague Dan Glover wrote a series of blog posts responding to the incorrect assertions made by Michael Geist and others and demonstrating the need for amendments to the new exception in order to meet Government’s objectives. The posts are:

• A Response to Professor Michael Geist’s Clearing Up the Copyright Confusion
• En réponse à Pour démêler la confusion à l’égard du droit d’auteur, du Professeur Michael Geist
• Clearing Up the Copyright Confusion (Part II)

The Copyright Exceptions to Encourage Innovation

Bill C-11 would create news exceptions for developing interoperable computer programs, encryption research, network security testing, and technological processes. The rationale for these exceptions is explained in the Government background documents as follows:

The Copyright Modernization Act aims to eliminate some of the uncertainty facing innovative businesses. Provisions aimed at the software industry permit the reproduction of software and the hacking of digital locks in order to engage in reverse engineering, security testing and encryption research. Such provisions support, for example, companies that test software for security flaws and then develop and sell patches. Where copyright owners believe these tools have been misused, they will have recourse to deal with any infringement or inappropriate hacking of digital locks. The Bill also clarifies that companies do not face any copyright liability for technical copies that are essential but incidental to a product or service they offer.

These amendments also need technical fixes to ensure that the Government`s objectives are met. The need for this was addressed by John Manley, the President and CEO of the Canadian Council of Chief Executives, in his testimony before the Legislative Committee. After stating that he strongly endorsed “the overall thrust of this legislation” he said:

Having said that, I believe the committee may wish to consider certain technical changes to the bill so as to avoid unintended consequences. For example, important concerns have been raised with respect to the impact on Canada’s software industry of provisions dealing with encryption research, network security, reverse engineering and copying for interoperability purposes.

In addition, some of the language dealing with user-generated content and copying for private purposes may be too broad.

I also canvassed these amendments in a speech to the 14^th Annual IT.Can Conference titled Bill C-32’s impacts on the IT community.

Conclusion

After many failed attempts to modernize Canada’s copyright laws, it now appears there is a Bill before Parliament that will do this. The Copyright Modernization Act, however, still requires careful scrutiny to ensure that appropriate technical amendments are made so that the Government’s objectives are met and to avoid significant inadvertent consequences inconsistent with the Government’s objectives.

[2] Michael Geist accuses the book publishers of engaging in “a relentless misinformation campaign” against the fair dealing for education exception. His assertion is ironic since it is he that has engaged in this behaviour on copyright reform issues.

[3] See, James Gannon, TPMs: A comprehensive guide for Canadian copyright law

[4] See, Wikipedia, Warez http://en.wikipedia.org/wiki/Warez

[5] Section 38.1(6)(d)

[6] Ysolde Gendreau Canada and the Three Step test: A Step in Which Direction? 15 Intellectual Property L. Rev. 309 (2011). In the article she said:

The purpose of education is introduced within the context of an exception, fair dealing, that does not have a statutory list of criteria for its evaluation. The fair dealing exception also entails that it applies to all categories of works and to all rights, reproduction rights as well as performing rights. Moreover, its application is not limited to educational institutions because of the following a contrario argument: the wording of the specific educational exceptions shows that they are intended for educational institutions while that of the fair dealing for the purpose of education makes no such mention. Consequently, the notion of education extends the application of this exception beyond educational institutions. Government representatives say that the exception is to be a test ground for exceptions that may eventually give rise to specific exceptions. However, they still maintain that it refers to education in a structured context.

It is easy to doubt such a statement because educational institutions do represent a structured context. Courts are likely to say that, in the absence of a specific reference to such institutions, the reference to “education” is not limited to structured contexts. So this new exception would introduce a very broad notion of education in a statute that does not include criteria for the appreciation of fair use either.

After discussing why the proposed exception would have difficulty passing all three of the three steps she concluded by saying:

Generally speaking, since the three-step test has become the standard by which to judge exceptions, I would say there is a fairly strong case for stating that the proposed provision on fair dealing for the purpose of education is so broadly drafted that it goes against the three-step test of the Berne Convention and of the TRIPS Agreement.

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Welcome. I hope everyone is having a good day so far. Michael Geist and I are going to talk about the legal protection of technological protection measures (TPMs).

I am going to explain how the TPM provisions in Bill C-32 work and highlight some of the areas where there has been confusion in interpreting them. I will also address some of the proposals being made for amending C-32 as it relates to TPMs. In particular, I will provide my views on the merits of Michael’s two main proposals for amending the Bill’s TPM provisions.

Michael says the Bill should only prohibit circumventing TPMs when the purpose is for infringement. He also says a person should be able to hack a TPM to make private copies and that rights holders should not be compensated for such copying such as through a private copying levy. I do not agree with his proposals and will tell you why.

It is interesting that I am speaking before Michael today. I will be anticipating some of the things he might say based on his blogs and our recent appearance before the legislative committee reviewing Bill C-32 on December 1, 2010. If I get Michael’s positions wrong, I am sure he will tell us.

Frequently asked questions about legal protection for TPMs

The topics I will canvass are set out in my slides in more detail. They are organized by a series of questions that people who are involved in the debate about TPMs need to consider. They are:

• Whether Bill C-32 properly implements the WIPO Treaties consistent with the practices of our trading partners.
• Whether the Bill permits copying for fair dealing, educational, and other purposes.
• Whether the circumvention exceptions in the Bill are flexible enough to deal with unforeseen or unintended consequences.
• Whether Canada can properly implement the WIPO Treaties by limiting the prohibition on circumvention to an infringing purpose.
• Whether other jurisdictions limit protection of TPMs to circumvention for an infringing purpose.
• Whether circumvention of TPMs for the purposes of format shifting, time shifting, and making back-up copies for private purposes (private copying) ought to be permitted. Related to this question is the notion of “user rights”; what that term means; whether “user rights” trump authors’ rights; and whether “user rights” should trump legal protection for TPMs.
• Given that one of the goals behind the Bill is to follow international standards, whether other jurisdictions permit exceptions for private copying to trump TPMs.
• Whether an exception for private copying that permits circumvention of TPMs for such purpose would comply with the Berne Three Step Test?
• Do the WIPO Treaties which Canada is committed to ratifying permit circumventing TPMs for private copying?
• My last topic is whether Michael’s two proposals for amending the TPM provisions in Bill C-32 have any precedents internationally. Michael points to Bill C-60, New Zealand and Switzerland as precedents. But are they really precedents we can or should follow? They are not and I will tell you why.

Does C-32 properly implement the WIPO Treaties?

Let me begin with the question as to whether Bill C-32 properly implements the WIPO Treaties. If you look at my slides you will see a quote from the WIPO Guide which sets out what the treaties require. WIPO itself says that to implement the treaties a contracting party must put in place several measures. The first are measures that prohibit acts of circumvention including prohibiting acts of access control circumvention. The second are measures that prohibit providing circumvention services and trafficking in circumvention tools.

Bill C-32 meets these requirements. The Bill has a definition of “technological protection measure”. It describes two types of TPMs.  Paragraph (a) defines access control TPMs; paragraph (b) defines copy control TPMs.  There is a definition of “circumvent”.  The actual prohibition against circumvention which is in Section 41.1(1) only apply to access control TPMs within the meaning of paragraph (a). There is no general prohibition against circumventing copy control TPMs. The provisions dealing with trafficking in circumvention tools or offering services to circumvent apply to both access control and copy control measures.

Does C-32 have exceptions that permit circumvention of TPMs and is there a flexible means of adding to them if needed?

The Bill has a number of exceptions, some of which are misunderstood or have been inaccurately described. There are, for example, exceptions for law enforcement, interoperability, encryption research, personal information and network security testing. There are also exceptions that permit trafficking in tools and providing circumvention services to facilitate the exercise of these exceptions.

Michael has said there are no exceptions for the blind. He is wrong. There is one that permits circumvention by or for persons with perceptual disabilities such as the blind. He also says that the exception for the blind does not include an exception that permits providing circumvention tools or services to enable people to circumvent TPMs for the blind. This too is wrong. Section 41.16(2) has an exception for this.

Michael also says there is no exception that permits jail breaking phones to use them on other networks. That is dealt with in radio apparatus exception. He also says there is no ability to jail brake a smartphone for the purpose of application interoperability. That also is wrong. To the extent a person needs to circumvent a TPM to make an application work with a phone’s operating system e.g., Apple’s iPhone OS, that is permissible under the general exception that enables people to circumvent TPMs for interoperability purposes.

If you compare the circumvention prohibitions in Bill C-32 with what exists internationally, you will see that they are less protective of TPMs than in the EU under the Copyright Directive. That directive requires Member States to prohibit the circumvention of access and copy control TPMs. Bill C-32 only prohibits circumvention of access control TPMs. Under C-32 it is permissible to circumvent a copy control TPM for a fair dealing or other purpose including education. Statements made by Michael to the effect that the TPM provisions in C-32 are more strict than in the U.S or that they completely trump fair dealing and education are not, therefore, true.

Michael has also challenged the processes in the Bill to establish new exceptions to address unintended consequences and new technologies. He claims the Bill is inflexible in this respect. However, if you look at the Bill you will see that the government has the power to enact regulations in three categories of situations to deal with unintended consequences and new technologies.

Under  S.41.21(1) there is a power to make regulations in the event TPMs are used to restrict competition in the aftermarket sector. This power was intended to deal with the few cases in the U.S. where entities tried, unsuccessfully, to use TPMs to stop competition in interoperable products such as garage door openers and printer cartridges.

The Governor in Council also has a broad power to make regulations to deal with other situations in Section 41.21(2) having regard to specific open ended criteria set out in the subsection. Subsection (i), takes into account a situation where a TPM could adversely affect the use a person may make of a work. This is very broad factor and would cover regional coding and other potential impediments to the use of a work. Subsection (iii) takes into account a situation where a TPM could adversely affect fair dealings for criticism, review, news reporting, commentary, parody, satire, teaching, scholarship or research. Accordingly, if TPMs hamper fair dealings including a dealing for educational purposes, a regulation could address the problem. Subsection (v) takes into account a situation in which a work is not commercially available in a form that is appropriate for educational uses. Last, the subsection requires taking into account any other relevant factor.

Section 41.21(2)(b) also gives the government the power by regulation to require the owner of a copyright to provide access to people who are entitled to the benefit of an exception, where for some reason the copyright owner is not making it possible to exercise the exception.

As my slides show, these processes provide mechanisms to address unintended consequences and new technologies in a broader and more flexible way than what exists internationally. For example, the U.S. has only one process to expand the scope of the exceptions. It is one that Michael has criticised. The U.S. has a tri-annual review process before the U.S. Copyright Office to exclude classes of works for certain purposes. The Canadian regulation power is broader. It applies at any time and is not subject to the same standard of proof. In the EU under Article 6(4) the EU Copyright Directive, Member States have to take appropriate measures, in the absence of voluntary agreements with rights holders, to make the exercise of certain exceptions possible.

Can a prohibition on circumvention that is limited to an infringing purpose comply with the WIPO Treaties?

I would like now to turn to the question of whether the WIPO Treaties can be implemented by limiting protection to circumvention for the purposes of infringement. I raise this because Michael has said on numerous occasions, most recently before the legislative committee examining Bill C-32, that Canada can implement protection for TPMs in this way and comply with the minimum requirements of the WIPO Treaties.

There has been an exchange of views across the Atlantic between Michael and Dr. Ficsor concerning the minimum requirements of the WIPO Treaties. Last December Dr. Ficsor published several papers in which he disagreed with Michael’s views about the WIPO Treaties. After C-32 was tabled Michael published a paper in a book edited by him, which I am sure he will show you as he did to the legislative committee. In the paper Michael took issue with Dr. Ficsor’s views about the WIPO Treaties. Dr. Ficsor read the paper and wrote a major rebuttal to Michael’s paper which he published on IP Osgoode’s blog. He thoroughly and meticulously examined every argument and conclusion that Michael made and found them wanting.

Dr. Ficsor agrees that there is certain flexibility as to how the treaties can be implemented. But he disagrees with Michael’s opinion that the treaties mean “whatever you want them to mean”.  Dr. Ficsor provides a detailed analysis of what the treaties do require. He shows that the treaties cannot be properly implemented by linking the prohibition against circumvention to an infringing purpose, as Michael contends. I recommend you read Dr. Ficsor’s paper.

Dr. Ficsor knows something about the WIPO Treaties. He was the Assistant Deputy General of WIPO at the time the WIPO Treaties were negotiated. There is probably no one who knows more about the requirements of the WIPO Treaties than he does.

Do other countries link circumvention of TPMs to an infringing purpose?

No, our trading partners do not prohibit circumventing TPMs only if the purpose of the circumvention is for an infringing purpose. There would be no point to such limited protection and it could hardly be argued that such protection provides “adequate legal protection” for TPMs, as the WIPO Treaties require.

Michael points to Bill C-60, New Zealand, and Switzerland as precedents for limiting protection for TPMs to circumvention for the purposes of infringement. He repeated that claim again before the legislative committee. Let us look at these supposed precedents.

At the time Bill C-60 was being considered, there were many people who believed that its TPM provisions would not have complied with the WIPO Treaties. An example, is Glen Bloom who expressed this view in a paper referred to in my slides. Mr. Bloom is the Chair of the IPIC Copyright Technical Committee. In this capacity he recently testified before the legislative committee about Bill C-32. He knows his copyright. Mr. Bloom states in his paper, quoted in my slides, that Bill C-60’s TPM provisions would not have met Canada’s obligations under the WIPO Treaties.

Michael also relies on New Zealand as a precedent. New Zealand permits circumvention of TPMs unless it is for an infringing purpose. Michael says that shows that the treaties can be implemented in this way. But, New Zealand has not ratified the WIPO Treaties and is hardly a country that can evidence what the treaties require.

Michael also refers to Switzerland as a precedent because Switzerland links a prohibition on circumventing TPMs to an infringing purpose. But, Switzerland is a known case of a Contracting Party that simply did not do it right. Dr. Ficsor says, “it does happen time and again that certain Contracting Parties do not fulfil their treaty obligations. Switzerland is such a country.”  Of the 88 countries that have ratified the WCT and the 87 countries that have ratified the WPPT, Michael picks as a model a country that has failed to provide adequate legal protection against the circumvention of TPMs. He does not pick any of Canada’s major trading partners as examples for Canada to follow.

Moreover, although Michael refers to Switzerland as a model, he hasn’t, to my knowledge, pointed out that Switzerland has a private copying levy to compensate rights holders for unauthorized copying. Michael told the legislative committee last week that he does not support a levy to compensate authors for unauthorized copying. So even Switzerland is not a precedent for the overall form of implementation Michael proposes.

Should circumvention of TPMs for private copying be permitted?

I now want to address whether circumvention of TPMs should be permitted for private copying. Bill C-32 has exceptions for format shifting, time shifting and making backup copies. These exceptions only apply where TPMs are not hacked to do these acts.

In my view, the conditions against hacking TPMs in the new private copying exceptions are important. TPMs support new business models that would be undermined if people could hack TPMs to make private copies. The conditions are also important because Bill C-32 permits private copying without any compensation to rights holders. Removing these conditions would undermine legitimate markets for the legal sale of copyright content and further increase uncompensated copying.

Michael says we should drop these conditions. He says we should permit people to hack TPMs to copy for format shifting, time shifting and back-up copying purposes. But, doing so could undermine many current and future service offerings which depend on protecting copy and access control TPMs. These include subscription, rental, and rent to own services.** Examples of these services are music streaming subscription services such as Napster and Spotify; video streaming subscription services like Netflix; ad supported music; internet radio; certain digital downloads services, and digital movies rentals from Blockbuster. My slides depict how these and other models could be detrimentally affected by a legal right to hack a TPM for private copying purposes.

Here are just a couple of examples of the problems:

• On demand rent or buy models: If you rent, you pay (say) $3.99 and if you buy, you pay (say) $17.99. If a person could circumvent the TPM that protects the rent/buy model, wouldn’t some people just pay the rental fee and make permanent copies without paying for them?
• A music or movie subscription service that has copy controls that prevents copying: If a person could stream the sound recording or movie and legally circumvent the TPM to make a permanent copy, wouldn’t some people pay a monthly subscription fee and make permanent copies without paying for them?
• Music downloads like iTunes where you buy a song today for $0.99, its TPM free: A person could subscribe to a monthly subscription service and legally circumvent the copy control TPM that prevents copying to make permanent copies. Wouldn’t some people make permanent copies without paying for them?
• Software and gaming: A person could obtain a 5 day trial with an option to buy if the person likes the software or game. However, if a person can legally hack the TPM that limits access for the trial period and which prevents other copying, wouldn’t some people hack the TPM and avoid paying the purchase price to obtain permanent copies?

All of these things could be done without infringing copyright under Michael’s proposals.

Michael said to the legislative committee that private copying is a “user right”. He says if a user acquires content the user ought to have the right and does have the right to hack the TPM to make copies for format shifting and other purposes without the consent of the owner of the copyright – and without paying for the copies.

Michael is wrong that people have or should have a reasonable expectation that they can obtain content for free, or on a limited basis for some reduced consideration, hack the protections rights holders place on the content, and make copies or obtain access they had not bargained or paid for. If a person pays a rental fee, the person should not expect a right to obtain a permanent copy without paying for the permanent copy. If a person pays a monthly subscription fee for temporary access to content streams, the person cannot reasonably expect the right to make permanent copies without paying for them.

If C-32 is amended as proposed by Michael, once a person has legal access to a work, the person could legally hack the TPM protecting the work, legally make permanent copies, and effectively avoid paying for what is purchased. This is an unreasonable proposal. No person could reasonably ask for this broad right. It is unjustifiable and unsupportable. It would reduce investment in digital products and new distribution models. It would result in the loss of revenues and jobs in the digital sector. It would also substantially undermine the Government’s stated goal of enabling e-commerce in digital products in Canada.

Michael’s views about “user rights” confuses the rights a person has in the tangible thing her or she buys with the copyright in the thing. When you buy a song, you do not buy the label. When you buy a movie, you do not buy the studio. When you buy a video game or book, you are not buying the publisher. A person acquires a right to use an object he or she buys. But, the person does not acquire any legal right to make copies that have not been expressly or implicitly authorized by the copyright owner.

The metaphor of “user rights” expressed by the Supreme Court in the CCH case makes clear that copyright rights, and exceptions like fair dealing, are of paramount importance in construing the Copyright Act. But, as the Supreme Court made clear in CCH, fair dealing is only an affirmative defence to a claim of copyright infringement. It is not a concept that provides legal rights that can be asserted against copyright owners or be used to trump authors’ legal rights. “User rights” under copyright provide no basis for claiming that a person who rents copyright content such as a movie or game, or who merely subscribes to view it, has a right to hack a TPM in order to make permanent copies without authorization and payment.

A number of European decisions, in examining the legal inter-relationship between private copying and the use of TPMs, have similarly concluded that exceptions for private copying do not trump author’s rights in their works. In particular, in Europe there have been claims brought against copyright owners of content such as music and movies alleging they have a legal duty to remove TPMs to enable individuals to make private copies. These claims have been rejected in the cases referred to in my slides.

Would an exception for circumventing TPMs for private copying comply with the Three Step Test?

I now turn to the question of whether Canada could create an exception for private copying that permits circumvention of TPMs for such purposes and comply with our obligations under the Berne Convention and WTO TRIPS. These agreements, as you know, require that the Three Step Test be applied to copyright exceptions and limitations. The Three Step Test requires that an exception be a certain special case; that it not undermine the market or potential market for a work; and that it not unreasonably prejudice authors or copyright owners.

The interrelationship between private copying and protection for TPMs was considered by the French Supreme Court in the Mulholland case. A key question in the case was whether French copyright law could allow circumvention of a TPM for private copying. The French Supreme Court stated it could not. It held that a law that prevents rights holders from using TPMs on their products in the digital environment would violate the Three Step Test. Central to its decision was the concern that TPM-free products would promote unlicensed copying. That is a precedent of pretty high authority. The Paris Commercial Court in the Henry v. Warner Bros case expressed similar statements about the need for TPMs in the digital environment.

Would an exception for circumventing TPMs for private copying comply with the WIPO Treaties?

Another question is whether the WIPO Treaties can be complied with by permitting circumvention of TPMs for private copying? Dr. Ficsor also deals with this in his paper that is posted on IP Osgoode’s web site. He suggests that an adequate level of protection cannot take the form of allowing circumvention of TPMs so as to permit everyone to make private copies. The WIPO Treaties require an adequate level of protection. But, how can legal protection for TPMs be adequate if a right to circumvent TPMs for private copying would violate the Berne Three Step Test as the Mulholland case suggests?

Are there international precedents for an exception for private copying, that permits circumventing TPMs, where authors receive no compensation for the unauthorized copying?

I will now address the question of international practice and standards. In particular, I want to challenge Michael’s assertions that there are international precedents for what he proposes. I have already addressed whether there are international precedents for limiting the prohibition on circumventing TPMs to an infringing purpose. I now ask whether any of our trading partners that have private coping exceptions permit private copying to trump TPMs as is being proposed by Michael?

In the EU the answer is no. In the EU private copying is permitted only if it is subject to fair compensation. The scope of any private copying exception must be subject to the Berne Three Step Test. Moreover, Member States have no right to permit circumvention of TPMs to enable private copying. Member states may take measures to enable certain private copying where voluntary measures by rights holders are not in place. Importantly, however, even these measures do not apply to works that are available on demand through an online subscription basis. They essentially apply to CDs and other physical media.

As I already mentioned, Michael says we should look to Switzerland and New Zealand as examples. But neither of them are precedents for what is being proposed. New Zealand, to my knowledge, does not even have a broad exception for private copying. Switzerland permits circumvention of TPMs for private copying. It is a country, which as pointed out before, did not properly implement its treaty obligations. But, even putting that aside, Switzerland compensates its authors and other creators for private copying through a levy. So it is no precedent for Canada given the clear direction that the existing private copying levy on audio-recording media will not be expanded to digital audio recorders (DARs) like iPods and other devices.

Michael has not pointed to any other country that has broad rights of private copying such as those in Bill C-32, a right to hack TPMs for this purpose, and which does not provide authors and other rights holders with compensation for such copying. His proposals, essentially, ask Canadians to chart a new course in violation of our convention and treaty obligations in a way that, when properly understood by Canadians, would be viewed as unreasonable and unjustifiable, and which would seriously undermine the rights of authors and other creators and their ability to exploit and to be compensated for their creative endeavours.

Thank you.

* The talk was edited and augmented for this blog.

** I use the word “rent” in the colloquial sense. The format shift exception does not permit making a private copy where the source copy has been borrowed or rented.  It is unclear whether a download that may be viewed for a limited period is a  “rental” in the legal sense.

For convenience my slides are set out below.

Insight_Slides_on C-32 and TPMs

The questions I discussed were the following:

• Does Bill C-32 properly implement the WIPO Treaties consistent with approaches used by Canada’s trading partners?
• Does Bill C-32 permit circumvention of TPMs to permit copying for fair dealing, educational and other purposes?
• Does Bill C-32 have a flexible framework to permit new exceptions to be made by regulation?
• Can the WIPO Treaties be implemented by limiting protection to circumvention for the purposes of infringement?
• Should circumvention of TPMs for private copying purposes be permitted?
• Are private copying exceptions “user rights” that trump legal protection for TPMs?
• Do other jurisdictions permit an exception for private copying to trump TPMs?
• Would an exception for private copying that permits circumventing TPMs violate the Berne Three Step Test?
• Can the WIPO Treaties be complied with by permitting circumvention of TPMs for private copying?
• Does Canada have any trading partners that have private copying, no levy, and permit circumventing a TPM for private copying?

My slides are set out below.

Insight_Slides_on C-32 and TPMs

Unfortunately, Prof. Geist himself fails to accurately separate fact from fiction when it comes to explaining Bill C-32. As examples are his assertions about legal protection for TPMs. Prof. Geist continues to contend that the legal protection of TPMs in Bill C-32 is not required by international law and in particular the WIPO Internet Treaties. In particular, he repeatedly and inaccurately asserts that:  

• The legislative history and international practice related to the WIPO Treaties demonstrates that Bill C-32  is more stringent than what the WIPO Treaties require because (i) there is no treaty obligation to protect access-control TPMs; (ii) there is no treaty obligation to prohibit the manufacture and distribution of circumvention tools; and (iii) the treaties can be complied with by prohibiting circumvention only when it is for an infringing purpose and by permitting circumvention of TPMs and trafficking in circumvetion tools for any other purpose including making private copies and to engage in other “consumer rights”.
• The “Bill C-32 model is one of the most restrictive approaches in the world” .
• Most of the world does not protect TPMs in the robust way C-32 does.
• Bill C-32 provides more extensive  protection for TPMs than does the DMCA.
• A leaked EU document related to ACTA shows that access control TPMs do not need to be protected and are not protected in the EU.

I previously pointed out Prof. Geist’s inaccuracies on the subject of TPMs including the inaccurate assertions made above in various blog postings including here, here, here, here, here, here, and here. I have not been the only person to do so, however. Dr. Mihaly Ficsor, the Assistant Director General of WIPO at the time the treaties were negotiated, has also written several papers criticizing Prof. Geist’s opinions on the minimum requirements necessary to comply with the WIPO Treaties. Prof. Geist disagreed with Dr. Ficsor’s views in his paper “The Case for Flexibility in Implementing the WIPO Internet Treaties” published in From ‘Radical Extremism’ to ’Balanced Copyright:’ Canadian Copyright and the Digital Agenda .

In a comprehensive paper just published entitled “TPMs and Flexibility (’The Ability of Bending Without Breaking’) – Why Should the TPM Provisions of Bill C-32  Protect Access Controls and Prohibit ‘Preparatory Acts”, Dr. Ficsor responded to Prof. Geist, fully rebutting all of the assertions summarized above as well as other claims made by Prof. Geist about the WIPO Treaties including its history and the international practices concerning its implementation.  Prof. David Vaver, in introducing Dr. Ficsor’s paper on IP Osgoode, says, “The paper restates Dr Ficsor’s views that Bill C-32 correctly includes both forms of control in its TPM provisions and deals comprehensively with Professor Geist’s criticisms.”

Dr. Ficsor’s paper, contains a summary of his conclusions in which he highlights the reasons that Prof. Geist’s claims about the WIPO Treaties and Bill C-32 are not accurate:

(1)   Prof. Geist does not pay sufficient attention to the key interpretation source of any treaty provisions; namely to their plain language (the ordinary meaning of their terms). . . .[I]t may be deduced from this key source of interpretation alone that

(i)     the Internet Treaties’ TPM provisions cover all categories of TPMs and not only some of them; thus, they apply to both access-control and copy-control measures – contrary to M. Geist’s allegation that they do not apply for access-control measures;

(ii)   no adequate protection may be provided for TPMs as prescribed in the Treaties without establishing a defense line already in the stage of so-called “preparatory acts” – contrary to M. Geist’s allegation according to which it is sufficient to simply prohibit the very acts of circumvention (in the stage of which alone there is no real hope anymore for such protection);

(iii)  an adequate, rather than more than sufficient, level of protection requires appropriate norms to guarantee the applicability of exceptions to copyright justified by relevant public interests; this, however, requires cautious regulation duly balancing between the various interests and it cannot take the form of simply providing direct free access for any beneficiaries of any exceptions in any possible format by eliminating the applicability of any kind of TPM – contrary to Prof. Geist’s allegation according to which the purpose of the application and protection of TPMs, and through it, the adequate protection and normal exploitation of copyright, could be achieved also by allowing the circumvention of TPMs for anybody in order to directly enjoy any exception (for example, a “private copy” exception by each member of the huge Internet population, and in fact anybody who wants at all a copy) or to get access to works otherwise (for example, in order to receive freely any online communication of works citing the fact that such acts are not directly controlled by copyright).

(2)    Prof. Geist insists on flexible interpretation and implementation of the TPM provisions, and alleges that those who do not agree with him – such as me – are the advocates of inflexible interpretation and implementation. The truth is that everybody – including myself, as I have clearly stated – is of the view that the TPM provisions offer flexibility. The difference between us is only that, while Prof. Geist – as he quite clearly states – is in favor of an unlimited flexibility, myself and others are of the view that the requirement of adequate protection sets limits in this respect.

(3)   The “preparatory work” (“negotiation history”) of the Treaties confirms the interpretation reached on the basis of the plain language of the TPM provisions in the sense indicated above. During the preparation of the Treaties, there were animated debates, in certain stages of which there were some delegations which had doubts about the need and justification of TPM provisions. However, contrary to Prof. Geist’s suggestion, it is irrelevant from the viewpoint of the interpretation of a unanimously adopted text requiring adequate protection of TPMs that previously there were some delegations which at that time were not yet ready to support such protection by the Treaties. More importantly, in the debates, again contrary to what Prof. Geist suggests, no delegation made any proposal or comment to the effect that access-control TPMs should be excluded from protection (the comments aimed at taking care of the applicability of certain exceptions, but it is a different thing than just allowing general and direct free access to digital contents by denying protection for the measures controlling regulated access that is also normal in the traditional analogue world). Furthermore, it also transpires from the preparatory documents and the reports that, where there were debates regarding “preparatory acts” (circumvention-defeating devices, etc.), those debates mainly – nearly exclusively – concerned the definition of devices to be prohibited and not the general scope of protection in the sense that it should also extend to the protection against certain “preparatory acts.” Thus, Prof. Geist’s allegation is unfounded regarding the general scope of the requirement of adequate protection; there was no understanding whatsoever according to which access-control TPMs would be excluded from the treaty obligations or that adequate protection was regarded possible without providing it already in the stage of “preparatory acts.”

(4)   The “subsequent practice” of countries party to the two Treaties implementing the TPM provisions indicates that Canada’s major trading partners have duly implemented the treaty obligations as outlined above (not limiting protection to copy-control TPMs, but equally applying it to access-control TPMs and also prohibiting relevant “preparatory acts”). Prof. Geist suggests the contrary. His examples covering certain developing and “transition” countries and countries which have not acceded yet to the Treaties, along with extremely few isolated other cases, are not suitable to justify his position.

(5)   The consistently applied international provisions on the interpretation of treaties do not list views expressed in legal literature as relevant separate sources of interpretation. Nevertheless, all the authoritative sources of legal literature based on a truly thorough analysis do agree that the Treaties’ TPM provisions cover both access-control and copy-control TPMs and that in order to provide adequate protection it is necessary to prohibit “preparatory acts.” Prof. Geist tries to present some other literary views collected from all kinds of sources about which he believes that they may support his contentions. In connection with this, two comments are justified. First, not all of those literary sources are truly suitable to serve as “witnesses of prosecution” against Bill C-32, since they do not necessarily state what M. Geist would like to prove. Secondly, with minimum efforts, one can collect and present a number of scholarly views to support any kind of legal position – and also a number of scholarly views to support exactly the opposite position. Therefore, what may only be relevant at all is what follows from truly authoritative sources and – in close connection with this – what kinds of legal analyses and arguments the views expressed are based.

Dr. Ficsor also demonstrates that the so-called “leaked” EU document relied on by Prof. Geist erroneously describes EU law as it relates to protecting TPMs. Dr. Ficsor says: “Very briefly: if such an analysis were “leaked” let us say to the European Court of Justice… it would declare it to be completely groundless and being in head-on crash with the acquis communautaire”.

Prof. Geist consistently misinterprets the WIPO Treaties to support his policy views that Canadian copyright reform should provide virtually no legal protection for TPMs. His policy proposals on TPMs provide  illusory protection for artists or creators. His proposals would not fulfill the policy objective of enabling artists and creators to protect their works in a way that supports innovative business models and allows them to be paid for their creative efforts and investments. Not surprisingly, as Dr. Ficsor authoritatively documents, Prof. Geist’s proposals do not provide adequate legal protection or effective legal remedies against the circumvention of TPMs and clearly would not comply with the requirements of the WIPO Treaties or the practices of Canada’s trading partners.

Paragraph 4 of the draft treaty states:

Each Party shall provide adequate legal protection and effective legal remedies [US: at least] against the circumvention of effective technological measures that [US: are used by, or at the direction of, ] authors, and [NZ: performers] performers and producers of phonograms [US: use] use in connection with the exercise of their rights that restrict acts in respect of their works, [NZ: performances] performances, and phonograms, which are not authorized by the authors, the [NZ: performers] performers or the producers of phonograms concerned or permitted by law. [US: In order to provide such adequate legal protection and effective legal remedies, each Party shall provide protection at least against:] Adequate legal protection shall be provided, in appropriate cases, at least against:

(a)    …the unauthorized circumvention of an effective technological measure [US: that restricts acts not authorized by the right holder and is] carried out knowingly or with reasonable grounds to know; and

(b)   the manufacture, importation, or distribution [US: of, or offer to distribute, a device or product, that circumvents an effective technological measure and is either:]  of a device that has predominant function of circumventing an effective technological measure and that is any of the following:

i. … marketed for the purpose of circumventing an effective technological measure;

ii. primarily designed or produced for the purpose of circumventing an effective technological measure; or

iii. has only a limited commercially significant purpose other than  circumventing an effective technological measure.

These provisions reflect the internationally accepted interpretation of the Internet Treaties, which requires protection against acts of circumvention as well as trafficking in circumvention devices.[1] A footnote to the above paragraph clarifies that the contracting parties are not obligated to prohibit acts of circumvention of copy control TPMs. Accordingly, the draft treaty would require protection against circumventing access control TPMs and against trafficking in access and copy control TPMs.

The internationally accepted interpretation of the Internet Treaties also does not tie any requirement for liability for circumvention activities or trafficking in circumvention devices to any infringing purpose.[2] The Internet Treaties could not be implemented properly by limiting the prohibited acts to be for an infringing purpose.[3] The draft treaty makes clear that the remedies or prohibitions against circumvention are independent from acts of infringement in Paragraph 5. The two options under consideration are the following:

Option 1

5.         Each Party shall provide that effective legal remedies [EU: adequate legal protection] against a violation of a measure implementing paragraph (4) is independent of any [J: other unlawful activities] infringement of copyright or related rights.

Option 2

5.         [US/sing/NZ/Aus?: each party shall provide that a violation of a measure implementing paragraph (4) is independent of any [J: other unlawful activities] infringement of copyright or related rights.

The draft treaty would also enable contracting parties to adopt and maintain exceptions or limitations to measures “so long as they do not significantly impair the adequacy of legal protection of those [Can: technological] measures or the effectiveness of legal remedies for violation of those measures.”

It is clear from the forgoing that the draft treaty provides some limited flexibility in how the ACTA can be implemented. However, just like the Internet Treaties, there are minimum standards. These minimum standards require:

• Protection against acts of circumventing access control TPMs;
• Protection against trafficking in copy control and access control circumvention tools;
• Protection cannot be restricted to acts that have an infringing purpose nor can acts carried out for a fair dealing purpose be excluded from protection; and
• Limitations and exceptions to the prohibitions are permitted; however, they cannot significantly impair the adequacy or effectiveness of the legal protection or legal remedies e.g., they cannot be tied to circumvention for an infringing purpose, or to a fair dealing purpose; such exceptions would not only conflict with Paragraph 5, but would also significantly affect their adequacy and effectiveness.

It has been suggested that Bill C-32’s TPM provisions go beyond ACTA’s draft provisions and can be watered down to permit an exception to cover circumvention for the purposes of fair dealing. However, neither the Internet Treaties nor ACTA would permit any such exception or limitation.

[2] ibid

[3] See, Legends and reality about the 1996 WIPO Treaties where Dr. Ficsor, the former Assistant Director General of WIPO, disagreed with the assertion by Prof. Geist that Bill C-32 could be amended to limit protection for circumvention to an infringing purpose, or alternatively “for any unlawful purpose” and still comply with the WIPO Treaties: “It should be clear from my commentary that these proposals would not provide adequate legal protection for TPMs and would not result in a Bill that would comply with the Internet Treaties.”

Minister Moore stressed the contribution that the copyright industries make to Canada’s economy noting that they “cannot be underestimated, both in terms of stimulating investment and creating jobs”.

He emphasized throughout the speech that the proposed legislation represents a balanced approach, an approach that the Government believes protects the works of creators while recognizing the interests of consumers and Canadians. It is intended to reflect a variety of views expressed during the consultation on copyright policy that was held in last summer.

The Bill is intended to be principle-based, flexible and adaptable to any changes to technology, while ensuring appropriate protections for both creators and users. The modernized legislation is intended to support Canada as it faces the challenges of the digital environment and to enable Canada to take a leadership role in the global digital economy. It is supposed to contribute to an environment that gives Canadians the tools we need to remain creative, innovative, and competitive internationally. It was created to do so in accordance with international standards.

The Bill recognizes that the best way to fight piracy is by targeting those who knowingly enable online infringement. It therefore is intended to give copyright owners new tools to seek damages from these “enablers.” It is also designed to provide tools to creators to protect their investments, to encourage new business models, and to provide certainty for artists and creators to engage in the global digital marketplace with confidence. This includes providing protections for technological measures which are subject to a specific list of exceptions such as encryption research and security testing.

The Bill including the legal protection for TPMs and the making available right are intended to implement the rights and protections of the WIPO Internet Treaties and to bring Canada in line with these international standards. They will allow creators and copyright-based industries to better compete on the international stage. The Bill is also designed to enable Canada to fulfill the Government’s commitment to bring Canada’s copyright in line with those of our G8 trade partners.

The Government decided not to include a graduated response regime similar to what is being implemented in France, UK, New Zealand and elsewhere.

The Bill is also designed to legitimize commonplace private and/or non-commercial uses of copyright material that are currently not allowed or where their status is not clear under the Copyright Act. These uses include posting mash ups on the web or time shifting television programs. It is also intended to expand the existing uses allowed as ‘fair dealing’ by adding education, parody and satire and to enable publically available materials on the internet to be used for educational purposes.

The Bill is also intended to provide other exceptions to clarify the law or to remove impediments to ordinary uses of technology. In this regard, Minister Moore noted that the Bill proposes new exceptions for computer program innovators, limitations on liability for ISPs and search engines, and clarifies that making temporary technical reproductions of copyright material is acceptable.

In answer to questions following his speech, Minister Moore asked Canadians to consider what is in the Bill and to come forward with ideas on how to improve it. He pointed out, however, that there are opponents of copyright reform who “don’t believe in copyright”, who “pretend” to be experts in copyright, but are misleading the public about what it.  According to the Minister:

“…Those people who are out there who’re saying copyright legislation/copyright reform is not good, these are people who are dressing up the fact that they don’t believe in copyright reform at all.  There’s people out there who don’t believe in copyright at all. They just say well Bill C-61, the old copyright legislation, we disagree with these specific revisions.  Well, Bill C-32 we have these specific amendments.  Don’t fool yourself.  These voices that are out there, there’s people out there who pretend to experts that the media cites all the time, they don’t believe in any copyright reform whatsoever.  They will find any excuse to oppose this bill to drum up fear to mislead to misdirect and to push people in the wrong direction and to undermine what has been a meaningful comprehensive year-long effort to get something right.  This hasn’t been done as I said since 1997, three years after I graduated high school.  It’s been a long time.

We need to amend our legislation and those people out there who try pretend that they’re copyright experts and they want to amend copyright in a meaningful way, don’t be fooled by some of these people.  They don’t believe in any copyright.  They don’t believe in individuals’ rights to protect their own creations and when they speak, they need to be confronted.  If it’s on Facebook, if it’s on Twitter or if it’s on a talk show, if it’s in a newspaper, confront them and tell them they are wrong.  Canada from the Hudson’s Bay Company to FTA and NAFTA to the G8 and G20, Canada always has been always will be a trading nation.  Our future and our past and our prosperity has always been dependant on investment into Canada be in compliance with international standards opening ourselves up to the world, welcoming investment and working with the world, not being an outlier in the world, disregarding international treaties like WIPO that we’ve signed, disregarding our obligations to protect foreign investment into Canada, Canadian investments into Canadian businesses.  We need to protect those investments, protect those jobs and make sure that those voices who try to find technical nonsensical fear-mongering reasons to oppose copyright reform, are confronted every step of the way and they are defeated.  And when we do that, this bill will pass and Canada will be better for it.”

Almost immediately following his speech, Prof. Geist, relying upon a second hand source, published a blog suggesting that the Minister had “warned against “radical extremists” seeking to oppose Bill C-32” He then went further suggesting that Minister Moore could have been referring to just about anyone that sought reforms to the Bill including “all opposition parties, consumers, universities, teachers, students, business, and many creator groups are all seeking changes to C-32.”

It is patently obvious that Prof. Geist is misrepresenting who Minister Moore was referring to. Minister Moore was clearly referring to someone, or some people, who fit the following criteria:

• They pretend to be experts in copyright.
• They don’t believe in copyright.
• They don’t believe in individuals’ rights to protect their own creations.
• They are the ones “that the media cites all the time”.
• They “drum up fear to mislead to misdirect and to push people in the wrong direction”.
• They “find technical nonsensical fear-mongering reasons to oppose copyright reform”.

Who might this be? Here are some blogs that might provide a clue as to who Minister Moore was referring to:

‘TPMs’’: A Perfect Storm for Consumers:Replies to Professor Geist

Facebook Fair Copyright of Canada:Replies to Professor Geist

Fear Mongering and Misinformation Used to Slag ACTA

Legends and reality about the 1996 WIPO Treaties in the light of certain comments on Bill C-32

A reply to ACTA critics

Calling out misreporting about ACTA

More hype than facts about ACTA from its critics

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

OECD counterfeiting report misinterpreted to support myth of Canada as a low piracy country

The Owens analysis of the Canadian copyright consultations: what are the implications?

Reflections on the liberal roundtable on the digital economy

*After posting this blog, the complete remarks made by the Minster after his speech were posted online. They included as well the following statements:

“There are those that pretend to be for copyright reform. But they don’t believe in actual copyright reform. There are those that are cited as experts by the media endlessly who are not in favour of copyright reform. They favour only weakening legislation, only in gutting tools that would allow those who are actually investing in jobs to have those jobs.”

“But don’t let those some of them are out there, who as I say are cited endlessly by the media, who pretend to be experts on copyright reform, who put up a smiley, shiny, cute face on what is actually a pretty disingenuous campaign to undermine the rights, the property rights of individual citizens, to invest in their creative goods.”

*A video of the Minister’s speech and comments are linked to below.

Part 1

Part 2

I.  INTRODUCTION

It was at a copyright seminar abroad that I learned about the publication of Bill C-32 by which the Canadian government intends to adapt the copyright legislation to the digital on-line environment. By the time I arrived home, some of my European colleagues, with whom we usually exchange information, had sent me the links to various blog posts that were trying to offer a first assessment of the new Bill. Some of them contained objective analysis pointing out both the commendable elements of the draft provisions and those where further improvements were found desirable, while others seemed to reflect continued opposition to the government’s intention to modernize the copyright norms the way required by the international treaties and the emerging international standards. 

Last December, I commented briefly (well, considering the importance of the issues, still relatively briefly) twice on certain allegations about a key aspect of the implementation of the WIPO “Internet Treaties” (the WCT and the WPPT); namely, the protection of technological measures (TPMs). I can see that the Canadian government has included provisions in Bill C-32 that, in this respect, duly take into account and implement the provisions of the Treaties. On the basis of the comments published in some blogs, however, I can also see that certain legends about the TPM protection required by the two Treaties still stubbornly persist no matter that they have no sufficient ground. Since I have been actively involved in the preparation and adoption of the Treaties and I have closely followed their implementation in various countries, I cannot resist pointing out why the Canadian government is right to implement the TPM provisions and why those who attack this step are wrong.[1]

II. TREATY OBLIGATIONS CONCERNING TECHNOLOGICAL PROTECTION MEASURES

Provisions of the WIPO Treaties on the protection of technological measures

Article 11 of the WIPO Copyright Treaty (WCT) on “Obligations concerning Technological Measures” provides 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 the WIPO Performances and Phonograms Treaty (WPPT) prescribes – in respect of the rights of performers and producers of phonograms (sound recordings) provided in the Treaty – the same obligations.

 Why the provisions were adopted

As the WIPO Guide to the WCT states, the “application of technological protection measures” is “a key condition for the protection, exercise and enforcement of copyright in the digital, networked environment.”[2] At the sessions of the WIPO Committees preparing the two Treaties and at the December 1996 Diplomatic Conference adopting them, there was agreement about this. Several delegations (including Argentina, Brazil, the Group of Latin American and Caribbean countries, the Group of African Countries, the European Communities, and the United States.) submitted proposals for the protection of TPMs.[3] The proposals differed with respect to certain details, but all corresponded to the spirit of the provisions that were ultimately unanimously adopted.

A paper prepared in 2001 by the International Bureau of WIPO outlined the reasons why the delegations attending the Diplomatic Conference unanimously supported providing adequate protection for TPMs:

“It was recognized, during the preparatory work that it is not sufficient to provide for appropriate rights in respect of digital uses of works, particularly uses on the Internet. In such an environment, no rights may be applied efficiently without the support of technological measures of protection…. There was agreement that the application of such measures… should be left to the interested rights owners, but also that appropriate legal provisions were needed to protect the use of such measures… Such provisions are included in Article 11… of the Treaty.”[4]

The obligation to provide adequate protection for technological measures extends to all technological measures, both to access controls and to copy controls

Article 11 of the WCT and Article 18 of the WPPT require that protection be provided for any kind of effective technological measures that owners of rights might apply in connection with the exercise of their rights in order to restrict acts not authorized by them or permitted by law.

Broadly speaking, the TPMs which must, under the Treaties, be protected fall into two main categories, which are usually labeled “access controls” and “copy controls.” While certain measures may contain capabilities that fall into both categories, their operations are conceptually distinct.

“Access controls,” as the label implies, enable the copyright owner (or its agent) to control who may have access to a protected work or other subject matter (e.g., sound recording). Some of the more common examples of access controls include password protection and encryption. Someone who lacks the password or the encryption key, simply cannot access the work at all. This is a simple example; in practice, access controls can and do operate in a much more nuanced and modulated fashion. For example, they can allow access only for a certain period of time, or only on a certain number of discrete occasions. Such more sophisticated access controls play an indispensable role in allowing copyright owners to manage the circumstances and preconditions of access, and thus enable a wide range of business models and means of dissemination of works in digital formats. In many instances, persons who obtain access to a work (whether with or without authorization from the copyright owner) may use it in a fashion that does not necessarily implicate the exercise of exclusive rights, nor an infringement of such rights. For example, a person who obtains an encryption key for an access control on a motion picture streamed to her personal computer may thereby be enabled to view the motion picture in a private setting, without necessarily making a copy or engaging in a communication of the work to the public.

“Copy controls,” by contrast, presume that access to a work has already been obtained. This category of TPMs controls the exercise of exclusive rights in the work accessed. In the case of the fundamental exclusive right of reproduction, the technological measure may prevent the making of any copies; may degrade the quality of copies so that they are unusable; or may, in a more nuanced fashion, allow the making of a set number of copies, or of copies at a certain quality level. In this example, the “copy control” label is an accurate one. However, technological measures in the category which is usually referred to broadly as “copy controls” may also control the ability of a person to exercise other exclusive rights, such as public performance or display (communication to the public). Therefore, the reference to “copy control,” in a broader sense, should be understood to also mean such other possible rights-control measures.

As stressed above, the text of the relevant provisions of the two Treaties do not limit the obligation of the Contracting Parties to only access controls or to only copy controls; the obligation of providing adequate protection and effective remedies against the circumvention of TPMs applies to all kinds of such measures.  As discussed below, not only the text of the Treaties’ provisions but also the documents of the preparatory work of the Treaties confirm that a regime for the protection of technological measures does not fulfill the requirements of the Treaties unless it extends to both categories of measures defined above.

The authoritative treatises on the two Treaties also reflect this position about the required coverage of TPM protection.[5]

No adequate protection for technological measures may be provided without prohibiting, and applying effective remedies, against certain “preparatory acts” (such as manufacture, import, distribution and offering to distribute circumvention devices or services)

The language of the Treaties’ provisions is clear regarding the nature of the protection that must be provided for such measures. The obligation is performance- and result-oriented in the sense that the protection granted must be “adequate,” and must go along with “effective legal remedies.”

The WIPO Guide to the WCT emphasizes and elaborates on these obligations:

“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); (ii) against all such acts in respect of both technological measures used for ‘access control’ and those used for the control of exercise of rights, such as ‘copy-control’ devices (it should be noted from this viewpoint that access control may have a double effect extending also to copy-control); (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 it is obvious that they are meant for circumvention since they are marketed (advertised, etc.) as such; and (iv) not only against an entire device which is of the nature just described, but also against individual components or built-in special functions that correspond to the criteria indicated concerning entire devices.”[6]

I will discuss below why the obligation to provide “adequate protection” and “effective legal remedies” requires Contracting Parties not only to prohibit unauthorized acts of circumvention of technological measures, but also what are referred to as “preparatory acts,” i.e., the “acts” of manufacturing and distributing circumvention devices and offering circumvention services.  

It is to be noted that, the authoritative commentators on the two Treaties are also in agreement on that the requirement of providing adequate protection and effective remedies against unauthorized circumvention of TPMs may only be fulfilled if such protection and remedies also extends against the “preparatory acts.”[7]  

Protection for access control measures

As stressed above, both the Treaties’ provisions and the documents of the preparatory work confirm that the negotiating governmental delegations did not intend to limit protection to certain TPMs, in particular – as alleged by some anti-TPM advocates – to copy controls (leaving other measures, in particular access controls  unprotected).

It is necessary to begin with the documents of the final sessions of the WIPO preparatory committees, when the governmental delegations were invited to submit “treaty-language” proposals, since those proposals served as a basis for the Basic Proposals submitted to the 1996 Diplomatic Conference

Two kinds of “treaty-language” proposals were presented.[8]

First, the proposal submitted by the U.S.,[9] and supported by the Group of African Countries[10] and by the European Community and its Member States,[11] did not refer separately to access controls and/or copy controls. However, as a clarification of what followed also from the text itself, a comment by the U.S. delegation in the preparatory committee pointed out that the proposal contemplated protection for both access controls and copy controls. Indeed, the U,S. delegation explained that what it proposed was “provisions to prohibit decoders and anti-copy prevention devices and services”[12] (in this context, “decoders” mentioned as devices other than “anti-copy prevention devices clearly referred to devices for the circumvention of access controls).

The second category of treaty-language proposals were those submitted by Argentina[13] – supported by the Group of Latin American and Caribbean Countries[14] – and Brazil.[15] They did not refer to TPMs in general, but rather directly and separately to the their two categories proposing the prohibition of both disabling access controls in the form of coded signals and disabling copy controls. (In addition to the prohibition of acts of circumvention of such measures, the delegations of those countries also proposed the prohibition of such “preparatory acts” as making, importing and distributing circumvention devices.)

No other treaty-language proposals were submitted in the preparatory committee, and no opposition was expressed at the committee meetings to the proposals covering both kinds of technological measures.[16]              

There is no indication in the records of the Diplomatic Conference to suggest that, when the general term – “technological measures” – was adopted in the Treaties’ provisions, it was intended to narrow the coverage foreseen in the above-mentioned proposals only to “copy control” measures.

The relevant provisions of the drafts of what became the two Treaties submitted to the Diplomatic Conference (as “Basic Proposals”) foresaw the prohibition of “preparatory acts” and used the general term “protection-defeating devices.”[17] The notes added to the draft provisions explicitly confirm that the draft provisions’ use of general terms, such as “technological measures” and “protection-defeating devices,” was consistent with the proposals by the U.S., the E.C., Argentina and Brazil (also mentioning the comments made by China and the Republic of Korea) that contemplated coverage of both access control and copy control measures.[18]

The reports of Main Committee I and the Plenary of the Diplomatic Conference did not contain any statement or reference to any intention of any delegation to narrow the scope of the protection of TPMs from what was proposed previously.  

In fact, the text, as finally adopted, removed from the draft provisions a possible basis for a narrower interpretation than that referred to in the preparatory work. The draft provisions (in referring to “protection-defeating devices”) contained the expression “used for, or in the course of, the exercise of rights.” One might have attempted to base a narrowing interpretation on this expression to suggest that the protection was only to extend to prohibiting circumvention of copy controls – or other rights control measures. However, the adopted provisions of the Treaties dropped the reference to “technological measures that are used by authors [performers, producers of phonograms] in exercising their rights.” Instead, the Treaties speak about “technological measures that are used by authors [performers, producers of phonograms] in connection with the exercise of their rights” (emphasis added). This better expresses the intended coverage of the provisions, because both copy controls and access controls are applied in connection with the exercise of rights: their use enables owners of rights to decide the circumstances under which they will authorize acts covered directly by their rights, as well as acts that are done “in connection” with such rights, such as the viewing of, or listening to, a work or sound recording in a private setting.

It is to be noted that, at the Diplomatic Conference, certain delegations spoke about the issue of access to works for beneficiaries of certain exceptions.[19] This, however, did not concern the question of whether or not protection should extend to both access controls and copy controls. The comments, rather, only stressed that the protection of TPMs should not endanger access to works from benefitting from certain exceptions (e.g., covering acts “permitted by law”) that are important from the viewpoint of the public interest. This is a different issue which is discussed below.   

I have seen in a post by an anti-TPM blogger[20] on Bill C-32 that he tries to prove that – contrary to what follows from the text and the preparatory work of the two Treaties – the Treaties’ provisions do not cover all TPMs by quoting the following phrase from Marybeth Peters’ statement made in front of the competent Subcommittee of the U.S. House of Representatives on the draft law which became the Digital Millennium Copyright Act of 1998: “the treaties do not specifically require protection for access controls themselves.”[21]

This is part of the basis on which the blogger bluntly answers with a resounding “No” the question posed by him: “Isn’t the C-32 digital lock approach simply the required implementation to comply with the WIPO Internet Treaties?” Marybeth Peters’ statement, however, is far from being suitable to support the suggestion that the Canadian government is wrong because Bill C-32 provides for something that is not required by the Treaties.  This is quite obvious even if the sentence is read in the isolated way in which it is quoted. The Treaties truly do not list specifically the various categories of TPMs used by owners of rights in connection with the exercise of their rights; they also do not list specifically copy controls or measures that have both access control and copy control elements. The Treaties require adequate protection and effective remedies against the circumvention of all categories of TPMs. It is a non sequitur inference to deduce from the absence of a technology- or function-specific list of technological measures that, due to this, Contracting Parties would have the “flexibility” to decide that they protect certain TPMs but do not protect other TPMs. 

Otherwise, if Marybeth Peters’ above-quoted phrase is not read in an isolated way but in the context in which it appears, it becomes even clearer that it does not support an allegation that the obligation to provide adequate protection and effective remedies against circumvention of TPMs might be fulfilled without such protection and remedies against the circumvention of access controls. She made it clear that this is not the case by pointing out in the same paragraph: “access controls such as encryption will be the primary and most effective measures that copyright owners are likely to use in the on-line environment.”[22]                              

Protection against certain “preparatory acts”

The WIPO Guide to the WCT sums up the reasons why the obligation to grant adequate protection and effective remedies against unauthorized circumvention of technological measures necessitates coverage of preparatory acts:

“It is foreseeable that, in general, acts of circumvention of technological protection measures will be carried out in private homes or offices, where enforcement will be very difficult. In addition to the technical difficulties for trying to control such situations, there may also be objections based on privacy considerations. Therefore, if legislation tries to only cover the acts of circumvention themselves, it cannot provide adequate legal protection and effective legal remedies against such acts, which, thus, in spite of the treaty obligations, would continue uncontrolled.

 “… Nevertheless, it is still possible to provide such protection and remedies. For this, it should be taken into account that, in view of the complexity of the technologies involved, in most cases, acts of circumvention may only be performed after the necessary circumvention device or service has been acquired. Their acquisition normally takes place outside the private sphere in special marketplaces for these kinds of devices and services. Thus, the possible way of providing protection and remedies as required by the Treaty is stopping unauthorized acts of circumvention by cutting the supply line of illicit circumvention devices and services through prohibiting the manufacture, importation and distribution of such devices and the offering of such services (the so-called ‘preparatory activities’).”[23]

 The negotiating history, as reflected in the documents of the preparatory work in the WIPO committees and at the Diplomatic Conference, confirms that this is the only sound interpretation of the treaty text.

 As discussed above, all treaty-language proposals submitted in the last sessions of the WIPO preparatory committees before the Diplomatic Conference foresaw obligations to provide protection and remedies against “preparatory acts” (manufacturing and distributing circumvention devices, etc.). As also mentioned above, the relevant provisions of the draft treaties submitted to the Diplomatic Conference explicitly provided for such obligations.

 The records of the Diplomatic Conference reflect that there was quite general agreement among the delegations that the protection of TPMs should include protection against such preparatory acts (see below).

 The provisions on technological measures that were finally adopted were presented as compromise language among all the proposed texts discussed earlier. Their more general language was worked out in the course of informal consultations. They were acceptable to all delegations and were adopted unanimously.[24] Accordingly, there is no reasonable basis to presume that the adopted provisions did not correspond to the previous understanding among the delegations that adequate protection of technological measures required the proscription of “preparatory acts” (irrespective of certain differences among the delegations concerning the exact scope of devices to be covered). 

Therefore, the interpretation outlined in the WIPO Guide quoted above is well founded with respect to the coverage of devices. Thus, the scope of coverage issue should be decided on the basis of the application of the result-based adequacy test. The criteria presented in the WIPO Guide are in accordance with the test.         

Nevertheless, in the blog to which I have referred above, an attempt is made to try to prove that adequate protection and effective remedies might be provided by only dealing with acts performed in private homes and the internal environment of institutions, offices, companies, etc. The alleged basis for this is partly again Marybeth Peters’ above-quoted statement made in front of the competent Subcommittee of the U.S. Congress, and partly a report by Professor Pamela Samuelson on what happened at the Diplomatic Conference. 

The text quoted from Marybeth Peters’ statement is similar to the one mentioned above concerning access controls: 

“Some have urged that the legislation not address the provision of products or services, but focus solely on acts of circumvention. They state that the treaties do not require such coverage, and argue that devices themselves are neutral, and can be used for either legitimate or illegitimate purposes. It is true that the treaties do not specifically refer to the provision of products or services, but merely require adequate protection and effective remedies against circumvention.”[25]

 However, the similarity also extends to the fact that, if this text is not read in an isolated way but in the context in which it appears, it does not support the allegation that the obligation to provide adequate protection and effective remedies against the circumvention of TPMs might be fulfilled without the establishment of a defense line against unauthorized circumventions already in the stage of “preparatory acts.”  This is so, since, in this respect, the essence of Marybeth Peters’ statement does not consist in anything else but pointing out and proving exactly the contrary:

 “Because of the difficulty involved in discovering and obtaining meaningful relief from individuals who engage in acts of circumvention, a broader prohibition extending to those in the business of providing the means for circumvention appears to be necessary to make the protection adequate and effective. It is the conduct of commercial suppliers that will enable and result in large-scale circumvention.”[26]  

 Let us take now Professor Samuelson’ report which reflects her belief to know precisely how the final text of the Treaties’ provisions was negotiated and adopted. In the blog the following description is quoted from her report:

 “At the diplomatic conference, there was little support for the Committee’s proposed language on circumvention technologies. Some countries opposed inclusion of any anticircumvention provision in the treaty. Others proposed a “sole purpose” or “sole intended purpose” standard for regulating circumvention technologies. Some wanted an explicit statement that carved out circumvention for fair use and public domain materials. The E.U. offered a proposal that would have required contracting parties to adopt adequate and effective legal measures to regulate devices and services intended for technology-defeating purposes.

 “Facing the prospect of little support for its proposal or the Committee’s draft anticircumvention provision, the U.S. delegation was in the uncomfortable position of trying to find a national delegation to introduce a compromise provision brokered by U.S. industry groups that would simply have required contracting parties to have adequate and effective legal protection against circumvention technologies and services. In the end, such a delegation was found, and the final treaty embodied this sort of provision as Article 11.

 “This was, of course, a far cry from the provision that the U.S. had initially promoted. Still, it was an accomplishment to get any provision in the final treaty on this issue. 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.”

The documents of the Diplomatic Conference do not confirm various elements of this description. It is not clear on what those elements are based. Only one thing seems to be sure; namely that what is described does not reflect what Professor Samuelson heard personally during the debates at the sessions of the Diplomatic Conference since she was not among the participants; neither as a government delegate nor as a representative of an intergovernmental or non-governmental organization.[27] Thus, what is quoted above must be what she heard from somebody else who might have participated in the Diplomatic Conference and might have said something like this. It is needless to say, that such kinds of hearsays are not among those sources which may be accepted as a basis for the interpretation of treaties. Therefore, it would be also needless to state that, although I participated in all the sessions of the preparatory committees, of the Plenary of the Diplomatic Conference and its Main Committee I which dealt with these issues, as well as in the informal consultations, I cannot confirm those elements of the report. This is so because, even if I was a close witness of all the debates and negotiations, my statements alone would also have to be qualified as irrelevant from the viewpoint of the interpretation of the Treaties. 

Articles 31 and 32 of the Vienna Convention on the Law of Treaties do identify those sources on which the interpretation of treaties may be based. The ordinary meaning of the terms – considered in their context and in the light of the object and purpose of a treaty – is decisive. Nevertheless, certain supplementary means – in particular the documents of the preparatory work – may and should be taken into account in order to confirm or establish the meaning of the terms of a treaty, if it, for some reasons, is unclear (or seems to be absurd or unreasonable).                      

As far as the ordinary meaning of the terms of the WIPO Internet Treaties, Professor Samuelson – it seems, with some regret – appears to agree with the above-quoted analysis of the WIPO Guide and Marybeth Peters’ statement, since she also points out: “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 should only be added that not only the U.S. firms but anybody who cares for an appropriate implementation of the two Treaties will be able to challenge national laws as deficient if they do not include provisions that could make protection adequate and the remedies effective by prohibiting certain “preparatory acts.” 

The documents of the preparatory work do not question the validity of these conclusions regarding the meaning of the Treaties’ terms. Just to the contrary.

As discussed and documented above, the provisions on technological measures of the Basic Proposals for what became the WCT and the WPPT were based on unopposed proposals of a number of countries (both industrialized countries and developing countries) made at the last sessions of the preparatory committees which reflected the agreement that adequate protection and remedies would be needed against trafficking in certain unauthorized circumvention means. The fact that a more general language was adopted at the Diplomatic Conference does not mean that this agreement was abandoned. As the analysis of the performance- and result-based requirement of adequate protection and effective remedies indicates, no such protection and remedies could truly be provided without protection against such trafficking. Contrary to what is suggested above, the records of the debates at the Diplomatic Conference do not reflect any real change of position in respect of the essence of this recognition.  

In respect of the provisions if the Basic Proposals which became the WCT and the WPPT and which foresaw the explicit prohibition of certain preparatory acts, only the following amendments were submitted at the Diplomatic Conference:  

-  The delegation of Singapore proposed only one change in the draft provisions on technological measures. It would have left intact the prohibition of “protection-defeating devices,” but in paragraph (3) on the definition of such devices would have replaced the expression “primary purpose or primary effect” of such devices by the expression “sole intended purpose.”[28]

-  The delegation of the Republic of Korea – without proposing any change in the text of the said provisions in the Basic Proposals – suggested the inclusion of a second paragraph in the relevant articles of the Basic proposals that would allow for Contracting Parties “to lay down conditions on technological measures designed to protect productions which are not original nor protected by law and productions in which the exclusive rights are limited by law, only to the extent permitted by the Berne Convention and this Treaty.”[29]      

 -  The amendments proposed by the delegation of Jamaica did not intend to change the essence of the obligation to prohibit certain “preparatory acts.” They would only involve the following changes in draft Article 13(1) of the Basic Proposal which became the WCT and in Article 22 of the Basic Proposal which became the WPPT (the changes proposed are emphasized in the text): “(1) Contracting Parties shall make unlawful the importation, manufacture or distribution of protection-defeating devices, or the offer or performance of any service having the same effect, by ally person knowing or having reasonable grounds to know by any person knowing or having reasonable ground for knowing that the device or service will be used for, or in the course of; the exercise of rights provided under this Treaty that is not authorized by the rightholder or the law.” Furthermore, the delegation proposed wording changes in the definition of “protection-defeating devices” in paragraph (3) of these articles.[30] 

 - On December 12, 1996, that is nine days before the end of the Diplomatic Conference, 30 African countries – that is not one single country that, according to the description quoted above, somehow the U.S. delegation had found with alleged difficulties to present it, but 30 African countries – presented the amended text of the provisions on technological measures[31] which were adopted on December 21, 1996, the same way as Article of the WCT and Article of the WPPT.    

 -  Only the delegation of China proposed the deletion of Article 13.[32] However, China later also joined the consensus concerning the more general language proposed by the 30 African countries, and ave interpreted it the way indicated above; namely that adequate protection and effective remedies required by it may only be provided if unauthorized “preparatory acts” (“protection-defeating devices”) are prohibited. This is duly reflected in Article 4 of the relevant Chinese Regulations which reads as follows:

No organization or person shall intentionally avoid or destroy the technical measures, shall intentionally manufacture, import, or provide the public with devices or components mainly used to avoid or destroy the technical measures, and shall  intentionally provide technical services to others to avoid or destroy the technical measures, unless it is provided for by any law or administrative regulation that the technical measures may be avoided.”[33]

 Thus, the amendments submitted at the Diplomatic Conference do not confirm the allegations that the Treaties’ obligations to provide adequate protection and effective remedies against the circumvention of TPMs may be fulfilled without prohibiting certain “preparatory acts.”  Neither do the comments made in the debates at the Plenary and the sessions of Main Committee I.

 At the Plenary, in the general debate,

-  the delegation of Chile supported the provisions of the Basic Proposals on TPMs and “protection-defeating devices;”[34]

-  the delegation of Indonesia simply said that those provisions should be studied further;[35]

-  the delegation of Singapore “agreed with the principle behind Article 13 (Obligations concerning Technological Measures);” it only felt that “the provision, as drafted, could [also] prohibit a protection defeating device for bona fide use;”[36]  

-  the delegation of Pakistan said that “the specific problems relating to the obligations concerning technological measures… should be addressed in a clear and balanced manner, so that no intended consequences would result;”[37]

-  the delegation of the Republic of Korea stated that “technological measures such as copy-protection devices could be useful, but should not be over-employed to prohibit manufacture, importation or distribution of protection-defeating devices used within the permitted range of limitations on rights or in respect of non-copyrightable or public-domain materials;”[38]

-  the delegation of Algeria emphasized that it was necessary to find an international legal basis… for digital protection of data transmitted by electronic means;[39] and  

-  the delegation of India made the general remark that “the proposed measures on technological protection were driven by techno-pessimism, in light of ever-shortening technology and business cycles.”[40]

At the sessions of Main Committee I

-  the delegation of Ghana first proposed the deletion of the provisions on technological measures; nevertheless, later added that it was ready to accept them on the condition that in the definition of “protection-defeating devices” the expression “the primary purpose” be replaced by the expression “the sole purpose.”[41]

-  the delegation of South Africa partly expressed agreement with Ghana, but it put the emphasis on the need for provisions on technological measures; the statement made by the South African delegate on December 10, 1996, outlined already the main elements of the text suggested two days later by 30 African countries;[42] and the delegations of Nigeria, Senegal and Cote d’Ivoire supported the statement made by the delegation of South Africa;[43]

-  the delegation of Canada did not oppose the prohibition of “preparatory acts,” but stated that, although a number of safeguards had been built into the wording of the draft articles of the Basic Proposals, two problems still should be addressed: “first that the wording would create problems for producers and sellers of equipment which might have a significant non-infringing use but which could also be used to defeat copyright protection;” and “second, the draft provisions could interfere with access to works in the public domain or restrict access under fair use of fair dealing provisions or of specific exceptions which were consistent with the Berne Convention and the proposed Treaty;”[44]

-  the delegation of the European Communities recognized that “the elements of primary purpose and primary effect needed to be carefully assessed” and said that “the provisions should possibly be simplified, without undermining their efficiency;” in that respect it expressed interest in the suggestions made by the delegate of South Africa;[45]    

-  the delegation of Jamaica presented the wording changes suggested in its written amendments mentioned above, supported by the delegation of Trinidad and Tobago;[46]     

-  the delegation of New Zealand proposed that, in the definition of “protection-defeating device,” the expression “primary purpose or primary effect” be replaced with the knowledge-based criterion “where it is known or there is reason to believe that it is to circumvent any process…;”[47] 

-  the delegation of Colombia, speaking on behalf of the Group of Latin American and Caribbean countries, said that the countries of the region “recognized that measures related to obligations on technological measures and rights management information would lead to greater respect for the rights provided under the Treaties;”[48]   

-  the delegation of the United Kingdom observed that “the provisions on technological measures were an essential underpinning of copyright and neighboring rights in the digital age;”[49]

-  the delegation of Australia stressed the need for avoiding that the language of the provisions on technological protection measures “unvittingly restrict access to material in circumstances where it was not subject to copyright;[50]

-  the delegation of Norway was of a similar position insisting that the new provisions should not prevent legitimate use of works;[51] 

-  the delegation of Germany stressed that Contracting Parties should have sufficient freedom to provide effective remedies through criminal sanctions and civil remedies;[52] 

-  the delegation of Hungary supported the essence of the articles on TPMs and on “protection-defeating devices.”[53]

To sum up: On the basis of the documents of the preparatory work as reflected in the records of the Diplomatic Conference, it may be stated that there were truly animated debates about the provisions on technological protection measures, but nothing in these documents contradicts to the interpretation outlined above; namely that, since no protection may be adequate without prohibiting certain “preparatory acts,” Contracting Parties should prohibit such acts; just they should duly determine their scope. The majority of those delegations did not, in fact, opposed the essence of the original language used in the Basic Proposals either, but rather made comments on certain details of the definition of “protection-defeating devices” or stressed the need for not extending the provisions to also cover non-protected material and for guaranteeing the applicability of certain exceptions and limitations (an issue which should and may be settled adequately as discussed below).

There were only two delegations which had the view temporarily, in a certain part of the discussions, that it would be better to leave out the proposed provisions on technological protection measures: Ghana in the debate at Main Committee I and China in a written amendment. However, as mentioned above, Ghana also expressed readiness to accept a compromise solution by limiting the scope of “protection-defeating devices” to what it believed to be appropriate as a minimum obligation, and China later joined the consensus on the provision proposed by 30 African countries which, in a more general way, laid down the essence of the requirements under the Treaties; namely, to provide for adequate protection of such measures and for effective remedies against their unauthorized circumvention. As also mentioned above, China has also adopted in its national legislation the correct interpretation of these requirements according to which no such protection and remedies may be provided without building the necessary defense line in the stage of the still controllable “preparatory acts.”

In spite of this, the above-mentioned blogger accuses the Canadian government that its Bill “goes far beyond what is strictly required to be compliant with the WIPO Internet treaties,” referring to a couple of draft laws some of the aspects of which do not seem to be in due accordance with the two Treaties and alleging that the majority of the 88 Contracting Parties has not implemented the Treaties in following the interpretation outlined above. The texts of the laws implementing the two Treaties do not confirm this allegation either. In fact, not only an overwhelming majority of the Contracting Parties, but also certain other countries that have not acceded to the Treaties, have implemented the Treaties by duly protecting both access controls and copy controls and by prohibiting the “preparatory acts.”

It is, of course, possible that, as in the case of several other international treaties, not all Contracting Parties implement the provisions binding them in the most adequate way. Nevertheless, one thing is 100% sure; namely that the Canadian government in Bill C-32 adopts the standards that its main trading partners –  and a great number of other countries where similarly thorough analyses and consultations have taken place – apply, based on a consistent interpretation of the relevant norms of the Treaties.

Therefore, to the basic question posed in the above-mentioned blog – “Isn’t the C-32 digital lock approach simply the required implementation to comply with the WIPO Internet Treaties?” – contrary to what is suggested by the blogger, a definite “Yes” is the answer. In this respect, the promise made in the title of the post is not fulfilled; the record has not been set straight.

The answers to several other questions raised in the blog would not seem to have a better chance if they were also subject to serious scrutiny. However, the framework of these comments would not allow analyzing them in a similar detailed manner. Nevertheless, it seems worthwhile referring to one more question, namely this: “Are the digital lock provisions in C-32 constitutional?” The answer given to this question in the blog is “Probably not.” As a basis for this assessment, reference is made to the views of certain professors. The essence of those views is that the provisions on the protection of technological measures are unconstitutional because “they do not contain a clear link to conventional copyright law.” This may also be paraphrased as a thesis that TMP protection is not part of the “traditional contour of copyright protection” or that it is “alien to the copyright paradigm.” In the following comments, I will deal with this allegation.                                

Technological measures must be protected even in circumstances in which acts of circumvention (whether direct or preparatory) are not directly tied to proof of copyright infringement – which, however, does not result in a sort of “access right” or other new aspect alien to the copyright paradigm

The effective TPMs that the Contracting Parties of the Treaties must protect include all those “that restrict acts in respect of” protected works, performances and phonograms, including acts of gaining access to them. From the viewpoint of this obligation, it should not be necessary to prove that the prohibited acts of circumvention constitute, or specifically further, infringements (i.e., unauthorized copying, communication to the public, or some other exercise of an exclusive right of the copyright owner). If the Diplomatic Conference had intended to necessarily link the prohibition of the acts involved to infringements, it would have provided it, as it did so in the case of the prohibited acts concerning rights management information.^[54] It did not, because the delegations recognized that requiring proof of a direct link to copyright infringement would cut the heart out of the anti-circumvention obligation.

To apply legal prohibitions against circumvention only when they also involve actual or attempted copyright infringement would be to misapprehend the very purpose of the relevant provisions of WCT and WPPT. 

Otherwise, while Article 11 of the WCT and Article 18 of the WPPT were innovations in terms of international norms, the Treaties’ drafters were not writing on a blank slate. Legal mechanisms offered in many national laws had long been used by owners of copyright to control access to their works. These legal access-control mechanisms take on even more significance in the digital environment, in which the legal and practical ability of owners of rights to determine the conditions under which access to their works is granted form the foundation of the business models for the widespread dissemination of these works to an ever broader public.

The most relevant examples, for the purpose of interpreting the WCT and WPPT provisions at issue here, are the legal regimes that control access to encrypted cable or satellite signals. Legal prohibitions against the circumvention of the access controls involved in dissemination of materials via cable and satellite were well established in many countries long before the Diplomatic Conference convened, and generally extended not only to the act of circumvention, but also to the “preparatory acts” involved in the manufacture or distribution of “black boxes,” “pirate smart cards,” and similar tools.[55] While these prohibitions were certainly intended to control access to copyrighted works and other protected subject matter disseminated via cable and satellite services, they applied irrespective of any proof of copyright infringement or of intent to infringe.[56] As with these precursor, technology-specific access-control statutes, violations of the national law prohibitions implementing Article 11 of the WCT and Article 18 of the WPPT cannot generally be excused on the basis of lack of proof tying them to a specific intended or accomplished infringement of copyright, and virtually none of the implementing national laws provide such a blanket defense.[57] Nor do any of these laws require affirmative proof of infringement (or of intent to infringe) as an element of the anti-circumvention prohibition. Such a requirement would be most objectionable if applied to prohibitions of “preparatory acts,” and would render the prohibition a nullity in most cases, since the manufacture and distribution of circumvention tools for use by another party generally cannot be tied directly to any specific act of circumvention, much less to whether that specific act was carried out with intent to infringe.[58]  

The treaty provisions apply to all ‘technological measures that are used by [authors][performers or producers of phonograms] in connection with the exercise of their rights… and that restrict acts, in respect of their [works][performances or phonograms], which are not authorized by [the authors][the performers or the producers of phonograms] concerned’ (emphasis added). That is, all technological measures are covered that are used in connection with the exercise of rights. As it is discussed above, this means not only copy controls, but also access controls. Furthermore, not only technological measures simply controlling whether or not certain acts may be performed, but also those controlling, for example, the number of acts or the timeframe within which the they may be performed in accordance with the authorization granted by the owners of rights. 

It is to be noted that „access” basically means original access to a work or object of related rights – by obtaining a copy thereof or being able to listen to it, watch it, study it, etc., while it is performed or communicated without obtaining a copy. Allowing such access took place also before the advent of digital technology and the adoption and application of the two Treaties in a controlled way ‘in connection with’ – that is, related to – the exercise of copyright or related rights, without resulting in a separate right of the owners of those rights. Without the possibility of controlling such (original) access – and without the legal machinery necessary for it, even if it was not provided in the copyright legislation proper – copyright and related rights could not have prevailed; there would not have been a real chance for owners of rights to exercise and enforce their rights.

Since the very birth of copyright, there have always been legally controlled forms of getting access to protected works and objects of related rights, such as buying copies of works and records, lending books from libraries, buying entrance fees for cinemas, theaters, concert halls and exhibition halls; paying newspaper, radio and television subscription fees, etc.

Even in the case of exceptions, there have been controlled forms of access also in the “traditional”, analogue environment. For example, nobody was allowed to walk into a book shop, take a book from the shelves and walk out with it without payment just because he wanted to benefit from the exception to the right of reproduction for the purposes of quotations or making a parody, or nobody was able to simply enter a theatre without an entrance ticket referring to his need to see a presentation of ‘Hamlet’ for the purpose of preparing his homework on Shakespeare’s dramas. There were and are other – adequate – ways to benefit from these and other exceptions.

If it were allowed to eliminate these control mechanisms, the copyright system would collapse. This would be the case, since, if there were free access to copies in book shops, record shops, rental shops, etc., free ntrance to cinemas, theaters and concert halls, etc., there would be no income of creators, publishers and producers to recoup their investments and even their operational costs, since no licensees would be able to pay remuneration to them. Such unauthorized acts of access would not qualify as copyright infringements proper, but if there were no legal protection against them, they would undermine the practical applicability of copyright and related right. 

In the digital, networked environment the traditional chain of events is transformed: what used to be entering a book shop, buying a copy, bringing it home and reading it – or going to cinema, buying a ticket, entering the movie theater and watch the film – may be concentrated into simple clicks on the keyboard. In the case of these complex condensed acts, control by TPMs has the same role as property protection for copies of books and records in shops or by trespass laws against someone who tries to enter a theatre, cinema or concert hall without buying a ticket, etc.

This means that, there is nothing alien to the copyright paradigm in the application and protection of access controls. In the online environment, such measures may guarantee the kind of control of access to works and objects of related rights that have always existed as an indispensable corollary of copyright protection proper.  It is another matter that appropriate balance should be established between the protection of such and other TPMs and the applicability of certain exceptions and limitations important from the viewpoint of public interests. 

Protection of technological protection measures and the application of exceptions and limitations

During the preparatory work of the two Treaties and of their implementing legislation in various countries, concern was expressed that protection of TPMs could undermine important public-interest exceptions to and limitations on copyright that ensure due access to works and objects of related rights.

The implementing legislation of various countries has addressed this potential problem in different ways: (1) through statutory exemptions to the prohibition of acts of circumvention of “access control” measures in certain narrow and circumscribed cases; (2) by providing regular administrative review, such as in the United States, where the Copyright Office engages in a triennial review of whether or not the protection of “access control” technological measures unduly restricts access to certain categories of works;[59] or, (3) by prescribing obligations to the owners of rights to guarantee access to the beneficiaries of certain public-interest exceptions through contractual arrangements and special intervention mechanisms in those cases where they do not fulfill this obligation, such as in the Member States of the European Union, etc.[60]

Aa result of the application of these legal measures, due balance has been established between adequate protection of copyright in the digital networked environment and the continued applicability of exceptions and limitations to copyright laws justified by the public interest.

 One of the most important commentaries on the two Treaties sums up the underlying legislative considerations as follows:

 “In fact, several arguments have been presented in favour of not qualifying protection against acts of circumvention by limitations of and exceptions to the rights. The fear that rightholders might prevent access to their works through the application of technological measures and thus prevent users from exercising available limitations or exceptions, has been claimed to be unjustified, or at least largely exaggerated. Rightholders depend in economic terms on the consumption of their works. It is, therefore, in their own genuine interest to make them available to a wide public. The availability of works for purposes subject to public policy, such as education, library use or research may effectively be safeguarded through licensing agreements. Technological measures may even facilitate the operation of certain limitations and exceptions through a targeted technology, such as ‘copy once’ systems. Finally, technological protection measures will hardly be applied to all formats and categories of works.

 “Consequently, domestic legislators would be well advised to exercise caution when qualifying the protection against circumvention in such a way. Ongoing developments in technology, with respect to the relevant markets and to consumer behaviour might easily make too restrictive legislation turn out to be premature. Any exceptions to the protection of technological measures for those who benefit from limitations of or exceptions to the rights should: (1) give priority to voluntary unilateral measures of rightholders, or agreements between rightholders and such beneficiaries, concerning the use of the limitation or exception in question; (2) be restricted to the balanced application of particularly relevant and important limitations and exceptions in conformity with the conditions of the three-step test; (3) be based on the condition that beneficiaries of limitations or exceptions have legal access to the works concerned, and should (4) not permit uncontrolled circumvention of technological measures.”[61] 

The WIPO Guide to the WCT also stresses the need for a cautious balancing of interests as it relates to the protection of technological measures and the application of exceptions, and points out, inter alia, that the applicability of certain exceptions to direct acts of circumvention does not necessarily justify an exemption to the prohibition of “preparatory acts:”

“The applicability of effective technological measures is an indispensable condition for the protection, exercise and enforcement of copyright in the digital, networked environment. Therefore, exceptions and limitations to the obligation provide adequate legal protection and effective legal remedies against the acts of circumvention must be very carefully crafted. Where they are permitted, they must be focused narrowly enough to preserve the effectiveness of the prohibition on circumvention. For example, an ‘exception’ to allow commercial distribution and trafficking in circumvention devices or services for the purpose of fair use 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 ‘permitted purposes.’”[62]

 Otherwise, the experience of countries that have duly implemented the two Treaties by providing adequate protection and effective remedies against unauthorized circumvention of both access controls and copy controls as well as against “preparatory acts” shows that the forecasts according to which the application and protection of TPMs will “lock up knowledge,” and do not make fair use, fair dealing the application of exceptions and limitations possible have turned out to be unfounded. Let us take the example of my country. In Hungary, the provisions of Article 6(4) of the E.U. Information Society (Copyright) Directive to provide an intervention mechanism to guarantee the applicability of certain exceptions required by public interests have been implemented – as also in several other EU Member States – by providing a mediation system. The Hungarian Copyright Experts Council   is competent for the mediation. These provisions have been in force since May 1, 2004, the date of Hungary’s accession to the E.U. Since then I have always had the honor to work as the President of the Council to whom the mediation submissions should be presented; thus, I know exactly the number of such submissions until today. The number is still ZERO. Well, it can be said that although we tend to be rebellious we are not litigious, mais quand même: the fact that there have been no complaints now for more than six years about the alleged detrimental effects of TPM protection on the applicability of exceptions and limitations seems to show quite clearly that the doomsday forecasts have proved to be unjustified.

 -.-.-.-.-.-

 After finishing these comments, I noticed that the blogger has now made specific recommendations for amendments to the TPM provisions in the Bill.[63] These include, among other things, limiting the protection of TPMs to circumvention for an infringing purpose. He proposes instead an exception that circumvention be permitted “for any lawful purpose”. It should be clear from my commentary that these proposals would not provide adequate legal protection for TPMs and would not result in a Bill that would comply with the Internet Treaties. 

 Budapest, June 16, 2010.                                                                                    

[1] For some of those comments, I have used elements of the outline of an article (under the provisional title of “Why protection against circumvention of ‘access control’ measures and ‘preparatory acts (trafficking in circumvention devices and services are requirements under the 1996 WIPO Treaties”) that I intend to publish later in a law journal.  The outline has been made available to various copyright experts inviting their comments, and at the same time authorizing them – and also others – to use it for any non-commercial purposes.  

[2] “Guide to the Copyright and Related Rights Treaties Administered by WIPO,” WIPO publication No. 891(E), 2003 (hereinafter: WIPO Guide), pp 215-16.  (The Guide has been translated into Spanish and Japanese and the translations have been published as WIPO publications No. 891(S) and No. 891(J).)  

[3] For a description of the proposals made during the preparatory work, see Mihály Ficsor: “The Law of Copyright and the Internet,” Oxford University Press, 2002 (hereinafter: Ficsor, Oxford University Press), pp. 338-405, paras. 6.47-6.74.

[4] WIPO document WIPO/CR/RIO/01/2 entitled “The WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT),” containing a paper prepared by the International Bureau of WIPO and presented at the National Seminar on the WIPO Internet Treaties in the Digital Environment (Rio de Janeiro, September 17 to 19, 2001) organized by WIPO in cooperation with the Ministry of Culture of Brazil, p. 7, para. 31. (Those parts of the text have been left out that refer in parallel to Article 12 of the WCT on “Obligations concerning Rights Management Information.”)

[5] See Jörg Reinbothe – Silke von Lewinski: “The WIPO Treaties 1996,” Butterworth – LexisNexis^TM, 2002 (hereinafter: Reinbothe –  v. Lewinski), p. 143, paras 18 and 19 p (referring to both “access control technology” and “exploitation control technology” – the latter corresponding to the category of “copy controls” – in discussing the scope of TPMs to be protected);  and Sam Ricketson – Jane S. Ginsburg: “International Copyright and Neighboring Rights,” Oxford University Press, 2006 (hereinafter: Ricketson – Ginsburg) pp. 975-976, para. 15.16 (asking the question of “whether access controls are technological measures ‘used in connection with the exercise’ of exclusive rights” and answering it affirmatively). (See also Ficsor, Oxford University Press, pp. 549-50, para. C11.12.) 

[6] WIPO Guide, p. 218, para. CT-11.16. 

[7] See Reinbothe – v. Lewinski, 145, para 23 (stating that the obligation to provide “adequate protection” also requires protection against preparatory acts on the top of protection against the acts of circumvention themselves); and Ricketson – Ginsburg, p. 978, para. 15.20 (stating that the “the adequate and effective” proviso requires member states to bar the circulation of circumvention devices, and adding that, for the same reasons, a “sole intended purpose” standard also appears to be disallowed).  (See also Ficsor, Oxford University Press, pp. 549-50, para. C11.12.)

[8] For a detailed description of the preparatory work in the WIPO committees and at the Diplomatic Conference (with the text of the proposals and references to comments) see Ficsor, Oxford University Press, pp. 386 to 406.

[9] See WIPO document BCP/CE/VI/12, p. 38; in Ficsor, Oxford University Press, p. 389.

[10] See WIPO document BCP/CE/VI/14, para. 28; in Ficsor, Oxford University Press, p. 391.

[11] See WIPO document BCP/CE/VII/1-INR/CE/VI/1 pp. 3 and 5; in Ficsor, Oxford University Press, p. 394.

[12] See WIPO document BCP/CE/IV/2, Annex pp. 4-5; in Ficsor, Oxford University Press, p. 386.

[13] See WIPO document BCP/CE/V/12, p 36; in Ficsor, Oxford University Press, p. 390. The text of the Argentine proposal read as follows:

…The Contracting Parties shall enforce the same sanctions as are provided for in the event of copyright infringement of any person who:

(a) alters, removes, modifies, or in any way disables the technical devices incorporated in the copies of protected works or productions for the prevention or restriction of copying;

(b) alters, removes, modifies, or in any way disables coded signals designed to restrict the communication of protected works, productions or broadcasts to the public or to prevent the copying thereof;

(c) imports or markets apparatus, programs or technical devices that permit or facilitate the disablement of technical devices or signals incorporated to prevent or restrict the copying or communications of works and productions.” [Emphasis added.]

[14] See WIPO document BCP/CE/VI/15, p. 3; in Ficsor, Oxford University Press, p. 391.

[15] See WIPO document BCP/CE/V/12, p 36; in Ficsor, Oxford University Press, pp. 390-391. The text of the Brazilian proposal read as follows:

…1. Contracting Parties shall decide that the following acts must be considered illicit, as they are infringement to copyrights:

(a) to modify, eliminate or mutilate, by any means, the technical devices introduced in copies of protected works in order to avoid or to restrain their reproduction, or the encrypted signals intended to limit the communication to the public of protected work or to avoid its copying;

(b) to make, import or commercialize any apparatus, programs or technical devices aimed primarily at allowing or facilitating the mutilation of the technical devices or signals introduced in order to avoid or limit copying or communication of protected works.”[Emphasis added.]

[16] The delegation of the Republic of Korea made certain comments without presenting any treaty-language proposal, but they did not concern this issue (the South Korean delegation stressed that the protection of technological measures should not be applied in respect of non-copyrighted materials and works in the public domain), while the delegations of China and Japan simply reserved their position. See WIPO document BCP/CE/VII/3-INR/CE/VI/3, p. 2; in Ficsor, Oxford University Press, p. 395; WIPO document BCP/CE/VI/12. p. 40; in Ficsor, Oxford University Press, p. 393.

[17] Records of the Diplomatic Conference, WIPO publication No. 348 (E) (hereinafter: Records) pp. 217 and 321.

[18] See Records, pp. 216 and 320. When the Chairman of Main Committee opened the debate on these draft provisions included in the Basic Proposals, he also clearly stated: “…The provisions on obligations concerning technological measures were based on the proposals presented by certain Governments in the preparatory process.” (Records, p. 709). 

[19]  See Records, p. 710 (Republic of Korea), p. 523 (Canada).

[20] See Michael Geist: „Setting the Record Straight: 32 Questions and Answers on C-32’s Digital Lock Provisions” at http://www.michaelgeist.ca/content/view/5100/125/.

[21] Statement of Marybeth Peters, The Register of Copyrights before the Subcommittee on Courts and Intellectual Property, Committee on the Judiciary, United States House of Representatives 105^th Congress, 1^st Session, September 16, 1997, at www,copyright.gov/docs/2180_stat.html (hereinafter: Peters), title B.1.

[22] Ibid.

[23] WIPO Guide, pp. 217-18, paras CT-11.14-CT-11.15.

[24] See Records, pp. 757-758 and 626-627.

[25] Peters, title B.1.

[26] Ibid.

[27] See Records, pp 819-881 containing the List of Participants.

[28] Document CRNR/DC/12 see Records, p. 397. 

[29] Documents CRNR/DC/24 and CRNR/DC/25; see Records, p. 408. 

[30] Document CRNR/DC/37; see Records, p. 419. 

[31] Documents CRNR/DC/56 and CRNR/DC/57.Rev; see Records, pp. 445 and 447. 

[32] Document CRNR/DC/64; see Records, p. 485. 

[33] Regulations on the Protection of the Rights of Communication to the Public through Information Networks adopted by the State Council on May 18, 2006 (entered into force on July1, 2006).

[34] See Records, p. 600.

[35] See Records, p. 610.

[36] See Records, p. 613.

[37] See Records, p. 616..

[38] See Records, p. 617.

[39] See Records, p. 618.

[40] See Records, p. 619.

[41] See Records, p. 710.

[42] See Records, pp.710 and 711. The Records reflect the statement of the South African delegate as follows: “He said that, for that reason, he would propose in writing that the obligation should simply be that Contracting Parties must provide adequate legal protection and effective remedies against the circumvention of certain technological measures, which would have three characteristics; first, they should be effective technological measures; second, they should be used by right holders in connection with the exercise of their rights under the Treaties; and, third, they should restrict acts which were not authorized by the right holders or permitted by law.”    

[43] See Records, pp. 711 and 714. .

[44] Ibid.

[45] See Records, p. 713.

[46] See Records, pp. 713 and 715.

[47] See Records, p. 714.

[48] Ibid. 

[49] Ibid.

[50] See Records, p. 715.

[51] Ibid.

[52] Ibid.

[53] Ibid.

[54]  See Article 12 of the WCT and Article 19 of the WPPT.

[55] See, e.g., 47 USC section 605 (e)(4) (1988), discussed in NII White Paper (Sept. 1995) at 234. See also Directive 98/84/EC (conditional access directive), harmonizing national laws of EU Member States. 

[56] See Reinbothe – v.Lewinski at 142 (“the protection of conditional access technology against circumvention and abuse is usually granted irrespective of intellectual property rights or exceptions applying thereto”).

[57] In a few specific cases, legislative or administrative exceptions to such prohibitions may apply in circumstances in which, inter alia, no copyright infringement has occurred. See, e.g., 17 USC 1201 (g)(2)(D) (unauthorized circumvention for the purpose of encryption research is not prohibited under certain circumstances, which include, inter alia, if the circumvention does not constitute infringement of copyright).

[58] See Reinbothe – v. Lewinski at 146 (“this link [between Article 11 WCT and exclusive rights or exceptions thereto] does not appear to exist with respect to the protection against preparatory acts concerning the manufacture or distribution of circumvention devices or services. In any case, by their very nature the latter cannot be restricted to particular uses.”)

[59] Similar administrative review systems have been adopted by other countries, see, e.g., Singapore, which provides, under Section 261D(2), as follows: “The Minister may, by order published in the Gazette, exclude the operation of section 261C(1)(a) [which prohibits the circumvention of an access control] in relation to a specified work or other subject-matter or performance, or a specified class of works or other subject-matters or performances, if he is satisfied that any dealing with the work, subject-matter or performance or with the class of works, subject-matters or performances, being a dealing which does not amount to an infringement of copyright therein or an unauthorised use thereof (as the case may be), has been adversely impaired or affected as a result of the operation of this section.”

[60] For a description of implementing legislation concerning the “interface” between the protection of technological measures and the application of exceptions and limitations, see Ficsor, Oxford University Press,  pp. 556-63, paras. C11.23-C11.31.

[61] Reinbothe –  v. Lewinski, pp. 146-147 , para. 29 (footnote references left out).

[62] WIPO Guide, p. 219, para. CT-11.20.

[63] Fixing Bill C-32: Proposed Amendments to the Digital Lock Provisions, http://www.michaelgeist.ca/content/view/5117/125/

Operators of bittorrent sites like isoHunt often claim they are nothing but content neutral search engines like Google. The Isohunt court disagreed holding, based on uncontested expert evidence, that approximately 95 percent of all files made accessible through Isohunt were infringing or highly likely to be infringing.

The plaintiffs had claimed that Fung was liable for the direct infringement of his sites’ users based on three secondary liability theories: inducement to infringe, material contribution to infringement, and vicarious liability. The first two theories (inducement and material contribution) are known collectively in the US as “contributory liability.” Despite the analytical similarities between the inducement and material contribution theories, some US courts have held that inducement and material contribution are distinct theories of contributory liability through which defendants can be found liable.

Generally, inducement requires that the defendant has undertaken purposeful acts aimed at assisting and encouraging others to infringe copyright. By contrast, material contribution (in the context of computer system operators) applies if the defendant “has actual knowledge that specific infringing material is available using its system, and can take simple measures to prevent further damage to copyrighted works, yet continues to provide access to infringing works.” The third theory, vicarious liability, is similar to contributory liability but includes some contours that differ from these other theories of liability. A defendant infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.

The Isohunt court premised its liability on the inducement doctrine not finding it necessary to consider the other two theories.

An interesting issue in the case was whether the US court had subject matter jurisdiction over the infringement given that Fung’s four web sites were hosted in Canada. The court held it did based on the well established principle in US law that in the context of secondary liability, an actor may be liable for activity undertaken abroad that knowingly induces infringement within the United States.  Once a plaintiff has established that an act of infringement has taken place within the United States, defendants may be held liable for their conduct that constitutes inducement, material contribution, or vicarious infringement, even if Defendants’ conduct took place abroad.

Fung had argued that to establish acts of direct infringement that are subject to the US copyright law, the plaintiff has to provide evidence that both the transferor and the transferee are located in the United States. The court rejected this contention holding that proof of either acts of uploading or downloading a file in the US are all that is required. According to the court:

“However, United States copyright law does not require that both parties be located in the United States. Rather, the acts of uploading and downloading are each independent grounds of copyright infringement liability. Uploading a copyrighted content file to other users (regardless of where those users are located) violates the copyright holder’s § 106(3) distribution right. Downloading a copyrighted content file from other users (regardless of where those users are located) violates the copyright holder’s § 106(1) reproduction right… Accordingly, Plaintiffs need only show that United States users either uploaded or downloaded copyrighted works; Plaintiffs need not show that a particular file was both uploaded and downloaded entirely within the United States.”

The court found that there was overwhelming evidence of acts of direct infringement in the US.

The argument that bittorrent sites like Isohunt are nothing but content neutral search engines like Google was also categorically dismissed by the court holding that “the evidence of Defendant’s intent to induce infringement is overwhelming and beyond reasonable dispute”. This finding was backed up by detailed findings about messages to users, assistance to users, and the implementation of technical features, which were all intended to induce direct infringement by site users. The court also found that the defendants’ business model depended on massive infringing uses of the plaintiffs’ copyright materials.

The defendants had also relied on three safe harbours provided under the DMCA to exclude their liability; namely, the safe harbours available to providers of information location tools (ILTs); to mere conduits; and to providers of hosting services. These exclusions were carefully drafted to ensure that they applied to innocent intermediaries without creating the inadvertent consequence that they could be relied on by unauthorized file sharing sites and services. The court held they did not apply for several reasons.   

First, the DMCA safe harbours were inapplicable because Fung was liable for secondary infringement. Since the safe harbours were intended for use by only innocent intermediaries, they were not available because Fung was found to have actively induced infringement. According to the court:

“The Digital Millennium Copyright Act provides affirmative defenses for providers of certain internet services. In many ways, the Digital Millennium Copyright Act is simply a restatement of the legal standards establishing secondary copyright infringement – in many cases, if a defendant is liable for secondary infringement, the defendant is not entitled to Digital Millennium Copyright Act immunity; if a defendant is not liable for secondary infringement, the defendant is entitled to Digital Millennium Copyright Act immunity. The two sets of rules do not entirely overlap, but this framework is helpful for understanding the Act’s statutory text and structure.”

(This finding by the court is consistent with the approach taken by the Supreme Court of Canada in the SOCAN Tariff 22 case which held that the intermediary exception in para 2.4(1)(b) of the Copyright Act applies only to innocent intermediaries.)

Second, the DMCA safe harbours were unavailable because Fung had not met the statutory condition that requires US service providers to do what they can reasonably be asked to do to prevent the use of their service by repeat infringers, if they want to rely on the DMCA safe harbours.

Third, Fung was unable to rely on the DMCA safe harbours because he could not inadvertently fit within their intentionally specific provisions. For example, under the DMCA a provider of “information location tools”  must satisfy the three conjunctive requirements to apply; the defendant (1) must not know or have reason to know of infringing activities, or does not remove infringing materials upon receipt of such knowledge; (2) does not profit from infringement where it has the power to control the infringement; and (3) upon receiving notice (in the statutorily prescribed manner) from the copyright holder, removes the infringing material. Fung was not able to satisfy any of these requirements. Fung was also unable to rely on the hosting or conduit exceptions because, according to the court, no infringing materials were posted on or passed through defendants’ systems.

The  Isohunt case should be of particular interest to Canadians as we assess the amendments needed to our laws to enable Canadians to stem online infringements facilitated by unauthorized Canadian file sharing sites and services. It is apparent from the opinion in the case that key legal doctrines played a major role in the findings of infringement. In particular, the following factors were central to the court’s findings of liability: 

1. Liability for direct infringement based upon acts of uploading (e.g., making files available for distribution such as required by the WCT and WPPT making available and distribution rights) and downloading (creating reproductions of files).
2. Existence of robust doctrines of secondary liability such as inducement.
3. Service provider safe harbours that (a) are narrowly tailored, (b) protect only legitimate innocent intermediaries e.g., ISPs who do not participate in or induce infringement by users of their services, and (c) do not apply unless the service providers act responsibly and do what they can reasonably be asked to do to prevent the use of their service by repeat infringers.

I have decided reluctantly to react to this, and then truly do not want to deal with this weird quarrel anymore. It is completely useless to present arguments against heated ideological discourse and sheer hatred campaigns trying to suppress any contrary views. I am immune against it, as someone who has survived a serious illness. In the decades through which we were constrained to live under a communist regime, this was so customary; everybody who did not agree with the collectivist ideology, there was no discussion about it; he simply became enemy and the agent of the “imperialist forces.” There were no blogs at that time; there were only newspapers and radio, but the style was the same as in these “digital activist” blogs; even the words and expressions are so familiar. Ask about this the many Hungarians who fled to Canada after our beautiful but failed uprising in 1956! We who have suffered a lot – I too as a child and adolescent as a member of a family which, together with many others, was a victim of serious persecution because my uncle bravely spoke out against the communist ideology – have become resistant. Nevertheless, at the same time, we are sensitive to those phenomena where some people try to settle disputes in the style of those “glorious” years, and we may be ready to say some words just in order that our social environment make use at least the wisdom of the saying: “Experience is a wonderful thing; it helps us to recognize our mistakes when we commit them again.”       

One of the reasons for which I have decided to react is that I do respect Professor Samuelson, even if I do not always agree with her on everything. Nevertheless, it seems to me that, as regards this issue, she has based her position on a piece of information received from others that has not been correct. Let me explain why.   

I know her and I knew her already in 1996, and now that I have read her statements on what happened at the Diplomatic Conference concerning the issue of anti-circumvention devices, it seemed to me that I did not see her in Geneva, although I was sitting, on the rostrums of the main hall of the Conference Center and the smaller room where the informal negotiations took place, for three weeks facing the delegates and other participants. I have refreshed now my memory on the basis of my database. It reflects the following: There were cca. 800 participants at the Diplomatic Conference, among them somewhat more than 540 delegates; the rest were representatives of IGOs, NGOs, lobby groups, and we, the staff of WIPO Secretariat. Professor Samuelson was not present at the Diplomatic Conference.

I do not know from whom she has heard the story on the basis of which she formed her opinion, but I submit that her source was not reliable. There may be some legends, there may be some wishful-thinking-driven misunderstandings, there may be some misinterpretations, there may be some irrelevant afterthoughts. However, the real story was different was different that what Professor Samuelson heard.

I have a lot of material here in my computer; it does not take time to retrieve it.  I was about to do so when now I have seen that Barry Sookman has just posted a response to Professor Geist also quoting the comments on this issue from Jörg Reinbothe’s and Silke von Lewinski’s and from Jane Ginsburg’s and Sam Ricketson’s excellent books and from the Guide to the WCT published by WIPO.  These publications reflect what has truly happened in December 1996 and what kind of interpretation follows from it on the basis of the relevant provisions (Article 31 to 33) of the Vienna Convention on the Law of Treaties (which lists the sources on which interpretation of treaties may be based, but, of course, do not recognize hearsay as such a source).

The authors of the above-mentioned publications may also be qualified as lobbyist of the “big industries” since they say in essence the same as I do. And they may be qualified in particular,  as  lobbyists of the US industries, not only Jane Ginsburg, this wonderfully honest and independent academic, but also the Australian Sam Ricketson, the German Jörg Reinbothe and Silke von Lewinski, as well as the WIPO Secretariat. There is no chance for them anymore; they have lost there chance to be qualified as honest academics and international officials, respectively; they are not only wrong but hostile agents to be condemned in hatred blogs. Well deserved condemnation waits for them in Canada. Who knows: also street demonstrations, with widely bawled slogans, with inscriptions condemning them as dirty traitors (then if somebody would have the reminiscence of the way certain indoctrinated guards tried to settle social “debates,” it would be regarded as an exaggeration; maybe but there would be good reason for some people to feel like that).

Jörg Reinbothe and Silke von Lewinski do truly have direct reliable information of what has happened at the Diplomatic Conferences as the head and a member of the negotiating team of the European Community. They were and are in the possession of all their senses and those who know them – contrary to some blindly overheated activists – would hardly question their honesty.      

However, as the above-mentioned provisions of the Vienna Convention tell us, the interpretation of the texts of the relevant provisions is not supposed to depend only or mainly on what the participants saw and heard during certain informal consultations, and even very much less on what somebody has heard indirectly as a report or hearsay about it.

Pamela Samuelson writes the following in respect of the text adopted at the Diplomatic Conference: “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.”

I do agree with this and the sources quoted by Barry Sookman also certainly do so. The only thing I would add, and the above-mentioned authors certainly also would, is that, of course, not only the U.S. firms are able to challenge national regulations that are deficient because they do not provide for adequate legal protection and effective legal remedies but any stakeholders of any Contracting Party of the two Treaties.

This is the main point. The issue depends on whether or not a Contracting Party may offer adequate legal protection and effective legal remedies if it only establishes a defense line in domestic or office environment where the actual acts of circumvention are performed. All the authoritative sources do agree that this is nearly or totally impossible for reasons of practicability and privacy protection. Of we accepted that this is the only way, it would mean that the Diplomatic Conference has adopted a text which cannot be applied; it would not be effective.

The Vienna Convention and the international doctrine on the law of treaties, however, demand from the interpreters and implementers of treaties to choose that alternative interpretation which in such a case is also available. In this case, the building of defense line in the stage of so-called preparatory acts, with duly balanced provisions in respect of other legitimate interests, is definitely such an alternative.  This is the basis of the obligation to apply it by the Contracting Parties.

This is what is described by Jane Ginsburg and Sam Ricketson in their analysis quoted by Barry Sookman:  “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 it be inconsistent with art. 11’s direction that member States ‘shall provide adequate legal protection and effective legal remedies against the circumvention.’”[1]

And this is also to which the WIPO Guide to the WCT refers in this way:

“CT-11.14. It is foreseeable that, in general, acts of circumvention of technological  protection measures will be carried out in private homes or offices, where enforcement will be very difficult.  In addition to the technical difficulties for trying to control such situations, there may also be objections based on privacy considerations.  Therefore, if legislation tries to only cover the acts of circumvention themselves, it cannot provide adequate legal protection and effective legal remedies against such acts, which, thus, in spite of the treaty obligations, would continue uncontrolled.

 “CT-11.15. Nevertheless, it is still possible to provide such protection and remedies.  For this, it should be taken into account that, in view of the complexity of the technologies involved, in most cases, acts of circumvention may only be performed after the necessary circumvention device or service has been acquired.  Their acquisition normally takes place outside the private sphere in the special market place of these kinds of devices and services.  Thus, the possible way of providing protection and remedies as required by the Treaty is stopping unauthorized acts of circumvention by cutting the supply line of illicit circumvention devices and services through prohibiting the manufacture, importation and distribution of such devices and the offering of such services (the so-called ‘preparatory activities’).[2]

 It is, however also worthwhile referring to refer to the preparatory work and negotiation history as reflected the only relevant source, the Records of the Diplomatic Conference, which under Article 32(1) of the Vienna Convention is also an important source to confirm the ordinary meaning of the text as the basic source by virtue of Article 31(1).    

The preparation and adoption of the two Treaties took place on a completely Member-States-driven manner. The WIPO Secretariat only participated in the process where, and only to the extent that, the Member States invited it to do so. In the final sessions of the WIPO preparatory committees, when the delegations were supposed to submit “treaty-language” proposals on the basis of the invitations committees’ decisions, two kinds of proposals were presented on technological protection measures.[3] 

 First, the U.S.-submitted proposals[4] (supported by the Group of African Countries[5] – and by the European Community and its Member States[6]) required the prohibition of, and providing appropriate remedies against, “preparatory acts.” A comment by the U.S. delegation in the preparatory committee made it clear that what it proposed was “provisions to prohibit decoders and anti-copy prevention devices and services”[7] (in this context, “decoders” mentioned as devices other than anti-“copy control” devices clearly referred to devices for the circumvention of “access control” measures).

 The second category of treaty-language proposals submitted in the WIPO committees (by Argentina[8] – supported by the Group of Latin American and Caribbean Countries[9] – and Brazil[10]) did not refer to technological protection measures in general, but rather directly to the two categories of technological measures. They proposed the prohibition of both disabling “access control” measures in the form of coded signals and disabling “copy control” measures, and in addition to the prohibition of the acts of circumvention of such measures, the delegations of those countries also proposed the prohibition of making, importing and distributing circumvention devices. 

 No other treaty-language proposals were submitted in the preparatory committees, and no opposition was expressed at the committees’ meetings to the proposals covering both kinds of technological measures and the “preparatory acts.” The delegation of the Republic of Korea made certain comments without presenting any treaty-language proposal, but it did not concern this issue (the delegation stressed that the protection of technological measures should not be applied in respect of non-copyrighted materials and works in the public domain), while the delegations of China and Japan simply reserved their position.[11]

 The relevant provisions of the drafts of what became the two Treaties submitted to the Diplomatic Conference (as “Basic Proposals”) foresaw the prohibition of “preparatory acts” and used the general term “protection-defeating devices.”[12] The notes added to it in the Basic Proposal confirmed that the draft provisions’ was consistent with the proposals by the U.S., the E.C., Argentina and Brazil mentioned above (also referring to the above-mentioned comments made by China, Japan and the Republic of Korea).[13]

 The reports of Main Committee I and the Plenary of the Diplomatic Conference did not contain any statement or reference to any intention of any delegation to narrow the scope of the protection of technological measures from what was proposed previously.    

 It is to be noted that, at the Diplomatic Conference, certain delegations spoke about the issue of access to works for beneficiaries of certain exceptions.[14] The comments stressed that the protection of technological measures should not endanger access to works from benefitting from certain exceptions (e.g., covering acts “permitted by law”) that are important from the viewpoint of the public interest. This is an important but different issue which I discussed in my previous post in the light of how it was solved – according to our experience in a reasonable and satisfactory way – in the European Union (in the few cases where TPMs – “DRM” systems – are still applied at all due to the nature and value of the works involved.)        

 As regards the issue of the protection against “preparatory acts” – which as indicated above was proposed during the last stage of the committees meetings, not only by the US Delegation, supported by the Group of African countries, but also by Argentina and Brazil, supported by the Group of the countries of Latina America and the Caribbean – the records of the Diplomatic Conference reflect that there was no disagreement among the delegations on whether the protection of technological measures should include prohibition of such preparatory acts. The limited debate about the prohibition of circumvention devices (or as the draft treaties referred to them, “protection-defeating devices”) only concerned the question of whether the provisions should refer to the “primary purpose” or to the “sole purpose” of the devices.[15] No idea was presented to suggest that an appropriate protection of technological measures could be achieved without establishing the first line of defence by prohibiting the  “preparatory acts” at this earlier stage and no proposal was made that only “direct” acts of circumvention should be prohibited.

 The provisions on technological measures that were finally adopted were presented as compromise language among all the proposed texts discussed earlier. Their more general language was worked out in the course of informal consultations. They were acceptable to all delegations and were adopted unanimously.[16] Accordingly, in addition to the what follows from the obligation to provide for adequate legal protection; namely that it cannot be fulfilled without this, there is no reasonable basis to presume that the adopted provisions did not correspond to the previous understanding among the delegations that adequate protection of technological measures required the proscription of “preparatory acts” (irrespective of certain differences among the delegations concerning the concrete purpose of the devices to be covered).   

-.-.-.-.-

No, the two Treaties – everybody knows who participated in the process – was not “my” treaties or the WIPO Secretariat’s treaties; they were proposed, prepared, negotiated and adopted exclusively by the international community represented by the delegations of cca. 120 countries, including Canada, of course, which also has signed the treaties. Nevertheless, Canada, of course, may decide not to join the 88 and 86, respectively and soon more, countries as a Contracting Party.

 No, the correct interpretation of the relevant provisions of the treaties presented by Jörg Reinbothe, Silke von Lewinski, Jane Ginbsburg, Sam Ricketson and others including myself, also in the WIPO Guide, has not been rejected by the Contracting Parties. I have just counted recently that, in fact, there are more countries where there are prohibitions against the so-called “preparatory acts” discussed above than the present number of Contracting Parties of the Treaties. Not only all the traditional trading partners as the US, Mexico or the EU and its Member States, but also such other important countries as China and Russia. This can hardly be characterized as a failure.

 No, the two treaties do not exclude the adoption of a “made-in-Canada” approach to implement the treaties. The basic obligations should be respected, such as granting adequate – truly adequate – protection against unauthorized circumvention activities, but there are also broad flexibilities; for example, regarding the fundamental issue of the interface between TPM protection and the opportunity of benefitting from exceptions important from the viewpoint of public interests. It has been regulated in different “made-in” styles; in the EU, in a “made-in-EU” style – different from the “made-in-US,” “made-in-Japan” and other styles – and, according to our practical experience, in quite a satisfactory way (which does not mean that the other styles could not be satisfactory).

 No, I am not a lobbyist as the other quoted above are not either. I am glad to accept invitations as a consultant, but not in a way that I am supposed to say what others want me to. I say exclusively what follows from my professional persuasion; if somebody likes it is OK, if not, he or she should not accept it. I am glad also to accept when the IIPA invites me – of which I am not an employee or in any other way depending regarding my opinions – to act as a consultant on an issue where I am considered to be an expert. I accept equally, when other organizations or governments invite me to do the same. In fact, so far I have received the greatest recognitions and distinctions not from the cultural industries for what I have done, but from the organizations of the French authors and the Spanish and Hungarian performing artists.  

 Yes, I am a devoted advocate of a duly balanced protection of copyright. Those who know what I have done in the last cca. 35 years in this field also know this of course. I am in favor of a reasonable special treatment for LDCs and I am glad to act as a consultant also for those who are supposed to be beneficiaries of justified exceptions to copyright. Let me suggest to those who do want to believe the opposite why was it last week that the key representatives of the World Blind Union, Electronic Frontier Foundation, and Knowledge Ecology International (if you may not know them, neither of them are lobbyist of the “big industries”) jointly thanked me for what they characterized as an important contribution I had done for the cause of the visually impaired.  (Otherwise, I have also found a report on Professor Geist’s  website about the last week meeting criticizing the Canadian government. It seems to me sufficient to mention that the discussion did not take place on the way the report characterized it. The Canadian delegation was among those which expressed full support for the cause of the visually impaired and for working out the best possible international arrangement for them; just as many other delegations, it wanted to thoroughly discuss what that arrangement might be now and in the future.)

 Yes, the EU, which, is also negotiating a bilateral agreement with Canada, with the deposit of the still missing instruments of ratification truly has sent what I referred to as a “kind invitation” to Canada to also ratify the treaties. Our values are the same, our legal systems are not alien to each other, and our basic values are also the same (I became fully aware of that when I acted as one of the two co-chairmen – and far from the less active one – of the Working Group that prepared the first draft of the later successfully adopted UNESCO Convention on the Protection and Promotion of the Diversity of Cultural Expressions.) Our experience also shows that certain doomsday prophesies about the two Treaties, and in particular about the TPM protection, have not turned out to be justified. Due to our many similarities, it would be difficult to believe that in Canada, even if not necessarily in the same way, the same result could not be achieved. Thus, that invitation is address by friends to other friends; truly as a kind invitation.  

 Yes, I do not want to call names. Just when others do so against others in a style which reminds me of some old unpleasant experiences, my sense of truth does not allow me not to oppose it. I am not an enemy of anybody. I am against certain views and styles and in favor of maintaining certain values. I keep continuing to do so, which is not an obstacle to me to wish to Professor Michael Geist and his seemingly devoted followers Marry Christmas and a Happy – and preferably more peaceful – New Year.  If I cannot make him to adopt my views (it would be a difficult task I can see), at least I would like to persuade him that neither me not the others who share my position are not enemies; nether of Canada nor of him and his followers.

 Dr. Mihály Ficsor

[2] WIPO publication No. 891 (E), 2003, pp 217-218. 

[3] For a detailed description of the preparatory work in the WIPO committees and at the Diplomatic Conference (with the text of the proposals and references to comments) see my book; Mihály Ficsor: “The Law of Copyright and the Internet,” Oxford University Press, 2002 (hereinafter: Ficsor), pp. 386 to 406. (I do excuse those who consider me as an enemy that I quote myself, but this is the most detailed description of what has happened which, however, I do not want to reproduce here. I also recommend to those who imply that I lie since I am an alleged “lobbyist,” to read those pages; they will see that everything is based on WIPO documents prepared or adopted by the Member States.)    

[4] See WIPO document  BCP/CE/VI/12, p. 38; in Ficsor, p. 389.

[5] See WIPO document BCP/CE/VI/14, para. 28;  in Ficsor p. 391.

[6] See WIPO document BCP/CE/VII/1-INR/CE/VI/1 pp. 3 and 5; in Ficsor p. 394.

[7] See WIPO document BCP/CE/IV/2, Annex pp. 4-5; in Ficsor p. 386.

[8] See  WIPO document BCP/CE/V/12, p 36; in Ficsor p. 390. The text of the Argentine proposal read as follows:

…The Contracting Parties shall enforce the same sanctions as are provided for in the event of copyright infringement of any person who:

(a) alters, removes, modifies, or in any way disables the technical devices incorporated in the copies of protected works or productions for the prevention or restriction of copying;

(b) alters, removes, modifies, or in any way disables coded signals designed to restrict the communication of protected works, productions or broadcasts to the public or to prevent the copying thereof;

(c) imports or markets apparatus, programs or technical devices that permit or facilitate the disablement of technical devices or signals incorporated to prevent or restrict the copying or communications of works and productions.” [Emphasis added.]

[9] See WIPO document BCP/CE/VI/15, p. 3; in Ficsor p. 391.

[10] See WIPO document BCP/CE/V/12, p 36; in Ficsor pp. 390-391. The text of the Brazilian proposal read as follows:

…1. Contracting Parties shall decide that the following acts must be considered illicit, as they are infringement to copyrights:

(a) to modify, eliminate or mutilate, by any means, the technical devices introduced in copies of protected works in order to avoid or to restrain their reproduction, or the encrypted signals intended to limit the communication to the public of protected work or to avoid its copying;

(b)  to make, import or commercialize any apparatus, programs or technical devices aimed primarily at allowing or facilitating the mutilation of the technical devices or signals introduced in order to avoid or limit copying or communication of protected works.”[Emphasis added.]

[11] See WIPO document BCP/CE/VI/12. p. 40; in  Ficsor p. 393.

[12] Records of the Diplomatic Conference, WIPO publication No. 348 (E) (hereinafter: Records) pp. 217 and 321; in Ficsor p. 396.

[13] Records, pp. 216 and 320. When the Chairman of Main Committee opened the debate on these draft provisions included in the Basic Proposals, he also clearly stated: …The provisions on obligations concerning technological measures were based on the proposals presented by certain Governments in the preparatory process.” (Records, p. 709).  

[14] See Records, p. 710 (Republic of Korea), p. 523 (Canada).

[15] See Records, pp. 710-712 (Ghana, South Africa, Nigeria, Senegal, Singapore).

[16] See Records, pp. 757-758 and 626-627.

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:

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.

[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