Minutes - TRIPS Council - View details of the intervention/statement

H.E. Ambassador Dr. Walter Werner
United States of America
10.   The United States has notified three legal amendments: the Study of Classes Chasing Engineering and Science Success (hereinafter SUCCESS Act 2018) (IP/N/1/USA/P/15), Music Modernization Act (IP/N/1/USA/C/7), and the Marrakesh Treaty Implementation Act (IP/N/1/USA/C/8). 11.   First, the SUCCESS Act 2018 amends the Leahy-Smith America Invents Act to extend by eight more years the authority granted to the USPTO to effectively adjust, with public input and oversight, the fees it charges for the services it provides to patent and trademark applicants. Extension of the authority helps ensure that those fee collections fully recover the costs of USPTO's operations and services provided to innovators. The law also provides for a report that identifies publicly available data on the number of patents annually applied for and obtained by women, minorities, and veterans, and small businesses owned by women, minorities and veterans, and includes legislative recommendations for how to increase participation in entrepreneurial activities and patenting by women, minorities, and veterans. 12.   Next, the Orrin G. Hatch–Bob Goodlatte Music Modernization Act, or MMA, addresses the United States' determination that copyright law has not kept pace with changing consumer preferences and technological developments in the music marketplace. It was signed into law on 11 October 2018. 13.   Title I of the MMA, or the Music Licensing Modernization Act, among other things, modifies the existing section 115 "mechanical" license for reproduction and distribution of musical works in phonorecords (which was previously obtained by licensees on a per-work, song-by-song basis).  This Title establishes a new blanket license for digital music providers to engage in specific covered activities (namely, permanent downloads, limited downloads, and interactive streaming).  Licensing of physical configurations (such as CDs, vinyl) will still operate on a per-work, individual song license, basis. Title I establishes a market-oriented "willing buyer, willing seller" rate standard that will apply to all licensees of musical works under the section 115 mechanical license.  Also, under Title I of the MMA, the Register of Copyrights will designate an entity as the mechanical licensing collective to administer the blanket license and distribute collected royalties to songwriters and music publishers.  The newly created mechanical licensing collective will be tasked with developing and maintaining a database of musical works and sound recordings, which will be publicly available and is expected to become the most comprehensive database in the music industry.  There will be a transition period to move to the new blanket license, allowing digital music providers to limit copyright infringement liability so long as the provider engages in goodfaith, commercially reasonable efforts to identify and locate musical work copyright owners.  The legislation also modifies the process for selecting federal district court judges to adjudicate rate-setting disputes regarding performance rights organizations that are subject to consent decrees with the Department of Justice. 14.   Title II of the MMA, or the Classics Protection and Access Act, among other things, brings pre1972 sound recordings partially into the federal copyright system by extending remedies for copyright infringement to owners of sound recordings fixed before 15 February 1972.  The federal remedies for unauthorized use of pre-1972 sound recordings shall be available for 95 years after first publication of the recording, and are subject to certain additional periods, which provide varying additional protection for pre-1972 sound recordings, based on when the sound recording was first published.  Title II applies a statutory licensing regime similar to that which applies to post-1972 sound recordings.  It also establishes a process for lawfully engaging in non-commercial uses of pre-1972 sound recordings that are not being commercially exploited.  Finally, Title II of the MMA applies certain existing limitations on exclusive rights and limitations on liability to uses of pre-1972 sound recordings, such as, sections 107, 108, 109, 110, 112 and 512. 15.   Title III of the MMA, or the Allocation for Music Producers Act among other things, will allow music producers to receive compensation from royalties collected for uses of sound recordings under the section 114 statutory license. 16.   The Marrakesh Treaty Implementation Act was signed into law on 10 October 2018. It revises the Copyright Act to meet the terms of the 2013 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. 17.   The Marrakesh Treaty requires its contracting Members to create limitations and exceptions to copyright law that will make it easier for those with certain kinds of print disabilities to access printed works in accessible formats such as Braille and digital audio files. 18.   The United States confirms that it deposited the US Marrakesh ratification materials with WIPO on 8 February 2019.
1.   The Chair invited the Secretariat to report on notifications that the Council had received since its meeting in November 2018.
2.   A representative of the Secretariat said that the Council had received the following notifications under Article 63.2 of the TRIPS Agreement:
a. Japan had notified consolidated versions of the Unfair Competition Prevention Act, the Patent Act and the Trademark Act. The Trademark Act and the Patent Act had been revised to be compatible with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). The Unfair Competition Prevention Act had been revised to enhance regulation and enforcement of acts of unfair competition relating to undisclosed data in the context of information technologies.
b. Chinese Taipei had notified a revision to the Enforcement Rules of the Trademarks Act, which reflected changes permitting direct reference to WIPO's International Classification of Goods and Services. It had also notified revised Regulations governing the Determination of Patent Term Extension, including changes to facilitate requests for patent term extensions for pharmaceuticals, agrochemicals and their manufacturing processes.
c. Norway has notified consolidated versions of the Norwegian Trademarks Act and the Norwegian Designs Act, which mainly reflected consequential changes from the entry into force of the Penal Code. Norway had also notified consolidated versions of the Norwegian Patent Regulations and the Regulation relating to payments to the Norwegian Industrial Property Office and the Board of Appeal for Industrial Property Rights. These versions reflected amendments accommodating changes in the Patents Act, which introduced the possibility of establishing security interests in Patents and Plant Variety Rights, and changes regarding extensions of supplementary protection certificates for medicinal products for paediatric use.
d. The United States had notified the Music Modernization Act that updated copyright-related issues for music and audio recordings in light of new technologies, like digital streaming. Regarding patent law, the United States had also notified the Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018 (SUCCESS Act), which directed certain agencies to study the participation of women, minorities, and veterans in entrepreneurship activities and the patent system; and, to develop recommendations for improvement.
e. Samoa had submitted its first notification of its Intellectual Property Act and IP Regulations that were passed in the context of its accession to the WTO. It had also submitted its responses to the Checklist of Issues on Enforcement.
3.   Since the circulation of the agenda, the United States had also notified the Marrakesh Treaty Implementation Act, which revised the Copyright Act to implement the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.
4.   Under Article 69, Samoa and Myanmar had provided information on contact points for the exchange of information and cooperation on trade in infringing goods. The Members' transparency toolkit page would be updated accordingly.
5.   The Chair invited delegations that had notified new or revised legislative measures, or submitted updates to their contact points, to introduce their notifications. He also invited other delegations that might wish to comment on them.
6.   The representatives of Japan, Chinese Taipei, Norway, and the United States of America took the floor.
7.   The Chair invited the Secretariat to provide an update on the development of e-TRIPS, an online platform for filing and consulting notifications and other Council documentation.
8.   A representative of the Secretariat briefed Members on the development of e-TRIPS.
9.   The Chair recalled that notifications to the Council were not keeping up with the actual development of laws and regulations relating to TRIPS. He recalled that Article 63.2 was not a oneoff requirement, but obliged Members to notify any new or amended laws. Therefore, he urged Members to complete any outstanding initial notifications and to keep up to date with notifications on subsequent amendments. The same applied to the Checklist of Issues on Enforcement which had been established by the Council as an element of Members' notification obligations.
10.   The Council took note of the notifications and the statements made.
IP/C/M/91, IP/C/M/91/Add.1, IP/C/M/91/Corr.1