233. The representative of Australia said that the paper she had just submitted updated the paper that her delegation had submitted in 1999 (IP/C/W/144). It included a number of suggestions that could be studied further in the coming months and then taken up in the TRIPS Council's final report to the General Council. The paper and the suggestions contained in it were intended to be consistent with and support the approach outlined in the Council's earlier Progress Report of July 1999 (IP/C/18) as well as the recent communication from the European Communities and their member States.
234. The period since the effective conclusion of the TRIPS Agreement and the present day had seen the emergence of electronic commerce as a global phenomenon, with fundamental impact on the administration, definition and enforcement of intellectual property rights, the opportunities for their commercial exploitation, mechanisms for distributing due rewards for creative endeavour, and the possibilities of advancing related public policy objectives such as technology transfer and dissemination, education, access to new technologies, and infrastructure development. In her delegation's view it was curious that the TRIPS Council had been virtually silent on the substance of this issue, with the exception of a very general interim report sent to the General Council last year. Even in the absence of the overall electronic commerce work programme, it would have been incumbent on the TRIPS Council, under Article 71, to take account of the enormous impact of technological developments on the legal and administrative framework of intellectual property protection. Because it involved the impact of new technologies, there was a possibility that consideration of electronic commerce issues could be seen essentially as dividing industrialized and developing countries. However, the more the issue was examined, the more it became apparent that the interests of all WTO Members were engaged in some way. For example, the explosive growth of digital communication and information technology, and the increasing affordability of such technology, was placing information on technological solutions in patent documentation within the reach of millions who earlier had lacked any prospect of access to such information, frequently in jurisdictions where no patents applied to that technology. At the same time, there were concerns voiced in international debate that the patent system could work against the growth of electronic commerce, and the entry into international markets by small enterprises, if the key technologies for internet trading were rendered effectively inaccessible by the operation of the patent system. Overall, the advent of electronic commerce had not circumvented the basic rules and principles of intellectual property, but it could create new challenges for their effective and balanced application. Her delegation's paper sought to explore some of the key areas in which this challenge arose. It was intended to fit in with other contributions on this topic. In particular, the European Communities' useful submission (IP/C/W/224) set out many relevant issues about the TRIPS Council electronic commerce programme and further study areas, although there was one minor point of emphasis on which her delegation would differ.
235. She said that a practical starting point for discussion in the TRIPS Council's work programme was to confirm that existing TRIPS rules were technology neutral. As such, they were equally applicable to the digital environment and to the paper world. The electronic commerce work programme might also be an opportunity to clarify the application of some of the existing rules, so that they were applied consistently in the digital environment. She agreed with the European Communities that consideration should be given to new international standards that had been developed since the TRIPS Agreement had been concluded. For example, regard could be had to the WIPO Copyright Treaty, the WIPO Performances and Phonograms Treaty and the WIPO work on cyber squatting and domain names. While there were some areas where consideration should be given to recently developed international norms, it was important to note that existing TRIPS requirements were applicable to the digital environment. Examples of such TRIPS provisions were the principles of national treatment, MFN treatment and exceptions to exclusive rights. These principles lent themselves directly to application in the digital world to promote economic and social development. The TRIPS electronic commerce work programme might consider whether existing provisions needed to be adapted or extended. Any such consideration should be consistent with the objectives of the TRIPS Agreement and other international standards. Consideration of electronic commerce implications would be beneficially focused on clarifying and exchanging experience on the application of existing technology neutral norms (rather than focusing on assumed "shortcomings"). Further, Article 71.1 reinforced the need to keep track of developments to ensure that the balance of interests in TRIPS was appropriate. Not keeping track of such developments would put Members' policy interests in the hands of others.
236. As regards classification of products, she said that trade in intellectual property products via electronic means challenged the traditional distinction between goods and services. Transactions in, for example, software products over the Internet, could be classified as trade in a good, a service, or even both. There was an increasing, highly valuable, set of cross-border transactions involving intellectual property. These included financial transfers for licence fees or royalties paid for the use of intellectual property. Such transactions were not necessarily captured by either goods or services. A useful classification option had been proposed by Indonesia and Singapore in a paper prepared last year, being a category of trade in intellectual property. While the overall issue of classification cut across the WTO, the TRIPS Council should keep these issues under consideration, especially that some international intellectual property transactions could be considered as an object of trade in themselves.
237. As regards enforcement at the border, she said that one of the broader benefits of the electronic commerce work programme would be to promote understanding of how electronic commerce technology could facilitate trade and reduce the transaction costs and administrative overheads. It might be valuable to consider practical linkages between border control measures for the enforcement of intellectual property rights and trade facilitation. Coordinating intellectual property border control measures and trade facilitation via electronic commerce technologies could ease the administrative burden of customs procedures and focus border enforcement efforts. Information systems combining these elements could benefit all Members. Enhancing border control through such technology could also increase compliance with national laws implementing substantive TRIPS provisions. Members should consider ways in which electronic commerce technologies could be used to enhance border enforcement as a means of facilitating TRIPS compliance.
238. As regards international cooperation on enforcement, she said that a number of enforcement issues raised by electronic commerce were essentially practical in nature. Members would benefit from sharing their national experiences and exploring practical options for addressing enforcement issues. In this context, it was worth noting Article 69 of the TRIPS Agreement, under which Members had agreed to cooperate with each other with a view to eliminating international trade in goods infringing intellectual property rights. She suggested that Article 69 should be interpreted to include infringements occurring in the electronic environment. The Secretariat could coordinate the exchange of national experiences about the use of electronic commerce to facilitate trade in infringing goods. The collation of information on practical problems experienced by Members would be useful for both ongoing discussions on how best to tackle the issues and for training and awareness-raising activities.
239. As regards the issue of jurisdiction, she said that electronic commerce had stimulated the growth of borderless or virtual transactions and the growth of trade in IP-rich products. These transactions had raised questions about the continuing efficacy of territorially-based jurisdiction. Conflict between jurisdictions was not a new problem; however, the scope for intellectual property right infringement would grow. The greater spread of TRIPS-consistent intellectual property systems and more convergent national systems should assist to ease these problems. The TRIPS Council should continue to monitor developments in the question of determining the scope of national jurisdiction in relation to intellectual property rights in the digital environment. In this respect, regard might be had to the upcoming joint meeting of WIPO and the Hague Conference on Private International Law to discuss intellectual property issues related to international enforcement of judgments.
240. As regards patents, access to technology and the administration of intellectual property rights, she said that the growth of electronic commerce had seen the development of new business methods and models for the digital environment. Issues had been raised about the patentability of new on line business methods. As part of the continuing review of TRIPS implementation, Members could be encouraged to exchange information about the operation and use of patents in the digital environment. Electronic commerce technologies had vastly improved global access to technological information in patent documentation. Improved access, coupled with TRIPS requirements for disclosure of technological information, facilitated the flow of technological information and reduced costs. This was in line with the fundamental objectives of the TRIPS Agreement. Electronic commerce technologies were also being used to practical advantage to improve the administration of intellectual property rights. This was occurring through improved communication of information between national and international intellectual property offices, and increased public access to that information. Electronic commerce was providing useful ways of reducing the costs and administrative burden of implementing TRIPS obligations for the administration of intellectual property rights. She suggested that appropriate recognition of the advantages of electronic commerce in this area should be made in the final report to the General Council. Further, she considered that a useful outcome from the work programme would be to encourage Members to maximize, wherever possible, the opportunities presented by electronic commerce to facilitate access to technology and the administration of intellectual property rights.
241. As regards anti-competitive practices in the digital environment, she said that electronic commerce potentially raised anti-competitive issues particularly in relation to intellectual property licensing arrangements. It was important that the intellectual property system functioned effectively as a means of promoting technology transfer, especially considering the infrastructure concerns of developing countries. There were possible instances of anti-competitive behaviour in relation to some online licensing arrangements such as click-through licences for the use of some websites. Such licences could be anti-competitive under some national laws and might also conflict with permitted exceptions in domestic legislation intended to balance rights and obligations in a TRIPS framework. Member countries should be encouraged to exchange information about developments relating to anti competitive issues in the digital environment.
242. As regards a linkage of new copyright treaties to the TRIPS Agreement, she said that electronic commerce had reached its current significance almost entirely since the conclusion of the TRIPS Agreement. As a result, the substantive TRIPS provisions on copyright did not fully address issues arising in the digital environment. Development of the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) had in part been prompted by this lacuna in the TRIPS Agreement and the Berne and Rome Conventions. In this respect, it was worth noting Article 71.2 of the TRIPS Agreement, which provided an accelerated amendment process for higher levels of protection accepted in other multilateral agreements. The intention of this provision seemed to be that, where new international intellectual property standards emerged and were universally accepted, the TRIPS Agreement should be amended in response to such developments. Members should consider means to recognize the WCT and WPPT principles in the context of the TRIPS Agreement. Further, the TRIPS Council should make a statement that explicitly recognized the relevance of the WCT and WPPT to copyright and related rights in the online environment.
243. As regards the WCT and harmonization of national laws, she said that countries could make a practical contribution to copyright protection on line by bringing their laws into line with the WCT and WPPT. An example of the way in which national legislation could be amended to take account of the WCT, and to address digital copyright issues generally, was Australia's recently enacted Copyright Amendment (Digital Agenda) Act. The Digital Agenda Act adopted standards set out in the WCT and the WPPT. The legislation updated the existing copyright law framework to take account of new technologies. As the main features of the Act, she mentioned, firstly, that it introduced a new technology-neutral right of communication to the public. This would apply to works made available on the Internet and other on line services, as well as works transmitted to the public. The new right would replace and extend the existing technology-specific broadcast right and the cable diffusion right. Secondly, the legislation provided reasonable access for copyright users, including libraries and educational institutions, to copyright material in electronic form (including material available on-line). Australia's approach had been to replicate the balance struck between the interests of owners and users that applied in the print environment. The amendments extended the existing exceptions to the new communication right whilst also introducing some new exceptions. An example of a new exception tailored for the on-line environment was the exception for temporary copies made in the process of a communication. Such temporary copies would not infringe the reproduction right. The exception covered temporary reproductions made in the caching process as part of an Internet transmission, or when browsing or viewing a document on-line. It aimed to ensure the efficient operation of technical processes that underpinned new technologies, such as the Internet. Thirdly, the legislation limited and clarified the liability of carriers and ISPs for copyright infringements done by third parties using their facilities. Carriers and ISPs would not be liable for infringing activities where they had not determined the content of the communication. Similarly, they would not be liable for infringing activities where they had merely provided the facilities involved in the infringement. Fourthly, the legislation provided two new enforcement measures, so that copyright owners could effectively enforce their rights in the on-line environment. The legislation provided sanctions against the dealing in, and manufacture of, devices for the circumvention of technological protection measures. It also provided sanctions against the intentional removal or tampering with electronic rights management information. Finally, a new statutory licence would be introduced for retransmission of free to air broadcasts made by, for example, pay-TV operators. The scheme would provide equitable remuneration for owners of underlying copyright material contained in free-to-air broadcasts, such as the owners of rights in TV scripts, sound recordings and music.
244. As regards the management of intellectual property rights, she said that electronic commerce could bring the benefits of intellectual property protection to a wider range of beneficiaries through more effective distribution of royalties. Technology might provide a cost-effective and technically feasible means of collecting and distributing revenue from international markets for right holders. This was of particular importance to performers, composers and artists in developing countries. These peoples' works were attracting increasing interest in international markets, but they might not have been receiving due rewards due to the lack of the necessary infrastructure. The progressive implementation of the TRIPS Agreement was steadily increasing the legal scope for administration of copyright and related rights. The electronic commerce work programme could reflect the special needs of developing countries and consider how the strengthened legal framework could be complemented by enhanced administration of rights. It could encourage technical cooperation with the aim of extending the benefit of collective mechanisms for the administration of rights.
245. As regards trademarks in general and well-known marks in particular, she said that judicial authorities in many countries had been considering issues raised about the use of trademarks on the internet. Greater information exchange and coordination of legal developments in the area would be beneficial. The work programme should take note of the value of greater exchange of information on this issue. Further, the Council should continue to monitor developments in this area, including WIPO's work on trademarks and well-known marks, with a view to possible further substantive consideration of the issue.
246. As regards Internet domain names, she said that the issue of trademarks and Internet domain names had been the subject of much consideration by WIPO. WIPO was an accredited provider of dispute resolution services under the Uniform Dispute Resolution Procedure in relation to trademark based domain name disputes. Since the introduction of this process, there had been less opportunity for bad faith cyber-squatting of trademarks in the generic top-level domains .com, .org and .net. WIPO had begun a further investigation of the need for protection against bad faith domain name registrations of identifiers other than trademarks. This study was focusing on the bad faith, abusive, misleading or unfair use in the domain name system of personal names, International Non proprietary Names for pharmaceutical substances, names of international intergovernmental organizations, geographical indications and trade names. This study was of interest to Members, given the TRIPS provisions dealing with geographical indications and the incorporation by reference of Paris Convention provisions dealing with abbreviations of international intergovernmental organizations. Members might also be interested in the consideration of these issues where the current development of domain name policies might affect the future allocation of rights in countries where Internet access was developing. WIPO had also instituted a programme aimed at country code top-level domains. This programme included advice on the design of registration policies to take account of intellectual property rights and advice on, and provision of, dispute resolution services. In light of these developments, the TRIPS Council should take account of WIPO's work in its consideration of domain name issues. Consideration should be given to whether and how it might be appropriate to take account in the TRIPS Agreement of the outcomes from the WIPO processes. It was important to note that intellectual property rights, in particular trademarks, geographical indications and the names of international organizations, continued to be defined, exercised and enforced at the level of domestic law. The TRIPS Agreement provided the legal framework underpinning these rights internationally. Members would have a collective interest in ensuring that the relationship between domain name arbitration mechanisms and national intellectual property law within the TRIPS framework was clearly understood and articulated. Further, Members would have an interest in ensuring that the overall legal framework was developed in an inclusive manner.
