Ecommerce and WTO's Council for Trade-Related Aspects of Intellectual Property Rights

[James Love <love@cptech.org>]

This is the E-Commerce report by the WTO's Council for Trade-Related
Aspects of Intellectual Property Rights (the TRIPS council).  

A few interesting points

In Paragraph 8, the council said that the WTO agreements required
countries to take measures 

    "facilitating access to technology, requiring 
     disclosure of new technology, requiring under 
     Article 66.2 incentives for promoting and encouraging 
     technology transfer to least-developed country Members, 
     and providing for measures and international cooperation 
     to deal with anti-competitive practices relating to the 
     transfer of technology."

In most issues of interest, the WTO seemed to be taking its lead from
various WIPO initatives, including on issues of jurisdiction and use of
trademarks.  There did not appear to be any specific proposals to make
the 1996 WIPO treaties part of TRIPS, although clearly some countries
are pushing this agenda.

  Jamie



WORLD TRADE
ORGANIZATIONIP/C/18
30 July 1999(99-3254)Council for Trade-Related Aspects of Intellectual
Property Rights


WORK PROGRAMME ON ELECTRONIC COMMERCE
Progress Report to the General Council

1.  The task assigned to the Council for TRIPS under paragraph 4.1 of
the Work Programme on Electronic Commerce adopted by the General Council
on 25 September 1998 was to examine and report on the intellectual
property issues arising in connection with electronic commerce .  It was
specified that the issues to be examined shall include:  protection and
enforcement of copyright and related rights;  protection and enforcement
of trademarks;  and new technologies and access to technology .  It was
further stated, in paragraph 1.2 of the Work Programme, that  the bodies
referred to in paragraphs 2-5 of that Work Programme shall report or
provide information to the General Council by 30 July 1999".

2.  The TRIPS Council discussed the intellectual property issues arising
in connection with electronic commerce at its meetings of 1-2 December
1998, 17 February, 21-22 April and 7-8 July 1999.  The records of the
discussions are contained in the minutes of the relevant meetings in
documents IP/C/M/21, paragraphs 106-109, IP/C/M/22, paragraphs 108-124,
IP/C/M/23, paragraphs 71-88, and IP/C/M/241, respectively.  A
communication by the European Communities and their member States
(IP/C/W/140) was presented to the Council at its meeting in April, and
communications from Australia, Japan and India at its meeting in July
(IP/C/W/144, IP/C/W/145 and IP/C/W/147).  Subsequently, the United
States circulated a paper (IP/C/W/149).  At its meeting in December, the
Council agreed that the Secretariat would be requested to prepare a
background factual note examining the provisions of the TRIPS Agreement
relevant to paragraph 4.1 of the Work Programme on Electronic Commerce
and that this note should also provide information on the relevant
activities of the World Intellectual Property Organization (WIPO) and of
other intergovernmental organizations.  This note was circulated in
document IP/C/W/128 on 10 February 1999.  In addition, the Council
invited the representative of WIPO at its meetings in December and July
to provide information on WIPO's activities dealing with electronic
commerce.

3.  This report does not purport to be a full description of the
Council's work on electronic commerce.  For that, Members should have
reference to the documents referred to in paragraph 2 above.  Rather, it
seeks to summarize the work done.  After indicating some general points
that arose in the Council's work on this matter, this report is
structured around the headings that were identified in the General
Council's mandate, with the exception that all enforcement issues are
addressed under a single heading, given that the same issues arise in
different areas of intellectual property.  In addition, a brief
reference is made to other areas of intellectual property.  The report
ends by putting emphasis on the need for further study by the
international community. 

General points

4.  In the Council's work, the importance of intellectual property for
the development of electronic commerce was noted.  The point was made
that trade conducted electronically generally has a relatively high
intellectual property content.  It was noted that the creation of a
secure and predictable legal environment for intellectual property
rights would foster the development of electronic commerce.  The view
was also expressed that it could not be assumed that the benefits of
electronic commerce would flow automatically to developing countries or
that developments in this area would be equitable.  Another point made
was that the basic principles of intellectual property had survived
rapid technological change and that the language used in the TRIPS
Agreement was generally neutral in relation to technology.  In this
connection, it was suggested that, while the growth and technological
development of electronic commerce posed some challenges for the
protection and use of intellectual property rights, such challenges
could be addressed essentially within the established international
framework for intellectual property law.  This view of the issue of
technological neutrality was however challenged.  It was noted that this
matter could require additional analysis or debate.  The point was also
made that the TRIPS Agreement had been negotiated before the
implications of global digital networks for the protection and
enforcement of intellectual property rights had become an issue before
the international community.  Attention was drawn to the importance of
multilaterally agreed approaches to intellectual property issues arising
in connection with electronic commerce, given the global nature of
digital networks.  The point was made that more work and experience was
required to identify which intellectual property issues could be
resolved by right holders themselves and which would require
governmental action at the international level. 

Copyright and related rights

5.  The Secretariat background note (IP/C/W/128) described a number of
issues arising out of electronic commerce in connection with copyright
and related rights, in the light of the changes that digital networks
have brought to the way that works and other protected materials are
created, produced, distributed and used.  These include the implications
of electronic commerce for the definition of publication and the notion
of country of origin;  right of reproduction;  right of communication; 
moral rights;  right holder;  protected subject-matter;  limitations; 
and collective management.  In the discussion, individual delegations
highlighted the importance of one or more of these issues.  In
connection with the role that electronic networks could play in
facilitating the collective management of rights, particular reference
was made to the potential contribution they could make in respect of
rights related to folklore and other forms of traditional expression. 

6.  Note was taken of the work already done and under way in the World
Intellectual Property Organization, in particular the adoption in
December 1996 of two new treaties on copyright and related matters,
namely the WIPO Copyright Treaty and the WIPO Performances and
Phonograms Treaty, which, as stated in their Preambles, aim to respond
to the profound impact of the development and convergence of information
and communication technologies on the creation, production and use of
literary and artistic works, performances and phonograms.  In addition,
the Council was informed of ongoing work in the WIPO on the protection
of audiovisual performances, databases and the rights of broadcasting
organizations, as well as on electronic management systems and the
management of copyright and related rights in the digital environment. 

Protection of trademarks

7.  The issues identified in this connection in the Secretariat
background note include the use of trademarks on the Internet, in
particular in the light of the territorial nature of trademark rights
and their general specificity to particular products or services, the
protection of well-known trademarks, and the relationship between
trademarks and Internet domain names.  In connection with the latter
issue, the Council was informed of the final report of the WIPO Internet
Domain Name Process entitled  The Management of Internet Names and
Addresses:  Intellectual Property Issues  published by WIPO on 30 April
1999 (accessible on http://wipo2.wipo.int).  The Council was also
informed of other ongoing work in WIPO in the context of its Standing
Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications on issues arising from the use of trademarks on the Internet
as well as in connection with well-known marks. 

New technologies and access to technology

8.  Attention was drawn in the Council to the provisions of Article 7 of
the TRIPS Agreement which states that the protection and enforcement of
intellectual property rights should contribute to the promotion of
technological innovation and to the transfer and dissemination of
technology.  In this connection, the Secretariat background note
referred to the role that the TRIPS Agreement and a functioning
intellectual property regime should play in promoting technological
development, including in connection with electronic communications
networks, facilitating access to technology, requiring disclosure of new
technology, requiring under Article 66.2 incentives for promoting and
encouraging technology transfer to least-developed country Members, and
providing for measures and international cooperation to deal with
anti-competitive practices relating to the transfer of technology.

9.  In the discussion as well as in the Secretariat note, the point was
made that electronic commerce technologies were already, to an extent,
facilitating access to new technologies and had great further potential
in this regard, in particular in relation to patent information
disclosed pursuant to Article 29.1 of the TRIPS Agreement, and that this
aspect should be given due attention in technical cooperation
activities.  The Council was informed of the WIPO work programme on
global network and intellectual property information services aimed,
inter alia, at facilitating making intellectual property information
available to the public.

Enforcement

10.  The Secretariat background paper described a number of issues for
the enforcement of intellectual property rights, traditionally
undertaken on a territorial basis, arising out of the growing use of
global electronic networks.  These include the implications for
questions of determining the appropriate jurisdiction and applicable
law, the liability of service providers for intellectual property
infringements, the role of technological measures for facilitating
protection of copyright and related rights and the role of electronic
rights management information.  The importance of a number of these
issues was highlighted in the statements and contributions of Members. 
The Council was informed of the work under way in WIPO on a number of
these issues in its programme on intellectual property rights beyond
territoriality.

Other areas

11.  It was noted that, while the intellectual property issues arising
in connection with electronic commerce are mainly to be found in the
areas of copyright and related rights and trademarks, such issues could
also arise in other areas of intellectual property.  For example, the
point was made in the Secretariat note and also in the Council's
discussion that some of the same types of issues that arise in
connection with trademarks can also arise in connection with other
intellectual property rights, notably geographical indications.  The
Secretariat background note also referred to potential issues in
connection with industrial designs, patents, the layout-designs of
integrated circuits and undisclosed information.

Final remarks

11.  Members of the Council are of the view that the novelty and
complexity of the intellectual property issues arising in connection
with electronic commerce are such that further study is required by the
international community to better understand the issues involved.  It
was noted that, as indicated earlier in this report, a great deal of
work in this connection is under way in WIPO.  In the light of its
responsibilities in the area of intellectual property, the TRIPS Council
is of the view that the WTO should continue to consider developments in
this area, including the further work of WIPO.

__________
-- 
James Love / Director, Consumer Project on Technology
http://www.cptech.org / love@cptech.org
P.O. Box 19367, Washington, DC 20036
voice 202.387.8030 / fax 202.234.5176