 ENFORCEMENT OF RIGHTS

93. In the memorandum of the International Bureau prepared. for the first session of the Committee, it was noted that the Rome Convention and the Phonograms Convention did not contain any direct provisions on the enforcementof rights, but that Article 26 of the Rome Convention* and Articles 2 and 3 of the Phonograms Convention,: included provisions indirectly requiring appropriate enforcement measures in any country party to the Convention. Paragraph (1) of Article 26 of the Rome Convention provides that "[e]ach Contracting State undertakes to adopt,, in accordance with its Constitution, the measures necessary to ensure the application of this Convention," and paragraph (2) of the same Article provides that, "[a]t the time of deposit of its instrument of ratification., acceptance or accession, each State must be in a position under its domestic law to give effect to the terms of this Convention."

94. Likewise, the International Bureau noted that, under Article 2 of the Phonograms Convention each Contracting State is obliged to protect producers of phonograms who are nationals of other Contracting States against the making of duplicates (copies) without the consent of the producers and against the importation of such duplicates, provided any such making or importation is for the purpose of distribution to the public, and against the distribution of such duplicates to the public. It was pointed out that Article 3 leaves the implementation to the Contracting States; they may choose one or more of the following: copyright or other specific ("neighboring") rights, the law relating to unfair competition, or protection by penal sanctions.

95. The International Bureau stated that it was obvious that these provisions could not be respected without appropriate enforcement measures, and propose that the possible new instrument contain provisions for enforcement of the rights of performers and producers of phonograms that were the same as those proposed for the enforcement of copyright in the memorandum prepared for the third session of the Committee of Experts on a Possible Protocol to the Berne Convention. The proposals were based on the conclusions of various WIPO meetings during the 1980s dealing with questions of' international standards for the enforcement of copyright:: and neighboring rights, and on ideas that had emerged during the TRIPS negotiations. Specifically, the proposals concerned the definition of infringement, Provisional (conservatory) measures, civil remedies, criminal sanctions, measures against the abuse of technical devices, "border" measures, and general procedural safeguards.

96. On March 3, 5, and 8, 1993, respectively, the International Bureau received letters from government officials of Sweden, Australia and the United States of America, respectively, in which it was proposed, in essence, that the discussions of enforcement of rights, in the Committee, be based on a text developed during the TRIPS negotiations. The letters made the same proposal in respect of the discussion on enforcement provisions by the Committee of Experts on a Possible Protocol to the Berne Convention. The three letters indicated that certain technical amendments would be necessary to adapt the enforcement provisions of the TRIPS text to the purposes of the possible instrument on the protection of the rights of performers and producers of phonograms, but specific; changes were not mentioned. The letters and the said TRIPS text were reproduced in an annex to the memorandum for the first session of the Committee, so axe they in an annex (Annex II) to this memorandum (the TRIPS text, as it is included in the TRIPS Agreement).

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97. The Committee did not discuss the questions of enforcement of rights in its first two sessions, but discussion did take place during the aforementioned third session of the Committee of Experts on a Possible Protocol to the Berne Convention, when a large majority took the position that the provisions of the protocol on enforcement of rights should be based on enforcement provisions of' the then-draft TRIPS text. The primary reason given was that the said text was based on a negotiated agreement. It was widely noted, however, that various adjustments would be necessary to adapt the provisions to the context of the protocol. It was also noted that the proposals of the International Bureau included elements tot present in the TRIPS text, in particular, proposed provisions against the abuse of technical devices. At the conclusion of the meeting, the Chairman stated that the Committee should be given the opportunity to communicate, to the International Bureau, proposals as to how the technical adaptation of the TRIPS text should be made.

98. In the memorandum prepared for the fourth session of the Committee of Experts on a Possible Protocol to the Berne Convention, which will take place immediately before the present session of this Committee, the Committee was invited to identify the technical adjustments in the enforcement provisions of the TRIPS Agreement (Articles 41 to 61 of the Agreement) needed to adapt them to the context of the possible protocol. The Committee was also invited to consider inclusion of provisions on the abuse of technical devices, provisions the scope of which would differ from that of the enforcement provisions of the TRIPS Agreement.

99. This Committee is also invited to identify the technical adjustments in the enforcement provisions of the TRIPS Agreement needed to adapt them to, the context of the possible pew instrument on the protection of the rights of performers and producers of phonograms. The Committee may also wish to consider the inclusion of _ provisions for the application of appropriate legal measures against the abuse of technical devices, provisions the scope of which would differ from that of the above-mentioned provisions of the TRIPS Agreement.

100. In the latter respect, it is proposed that any country party to the new instrument be obliged.

(a) to provide for the same sanctions, to be applied by judicial authorities, as the ones provided for in case of infringement of the rights of performers in their performances fixed in phonograms and of producers of phonograms in their phonograms under the provisions referred to in paragraph 99, above, in case of manufacture or importation for sale or rental, or the distribution by sale or rental, of

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(i) any device specifically or predominantly designed or adapted to circumvent any device intended to prevent or restrict the making of copies of phonograms or to impair the quality of copies made (the letter device hereinafter referred to as "copy- protection or copy-management device");

(ii) any device that is capable of enabling or assisting the reception of an encrypted program, broadcast or otherwise communicated to the public, by those who are not entitled to receive the program;

(b) to provide that, in the application of provisional (conservatory) measures, civil remedies, criminal sanctions and border measures provided for according to the provisions referred to in paragraph 99, above, any illicit device mentioned in item (a) (i) and (ii), above, is assimilated to infringing copies of phonograms;

(c) to provide that the performers and the producers of phonograms concerned shall be entitled to damages provided for according to the provisions referred to in paragraph 99, above, in the same way as in a case where their rights in their performances fixed in phonograms or in their phonograms, respectively, are infringed, where

(i) copies of phonograms have been made by them, or with their authorization, and offered for sale or rental combined with a copy-protection or copy-management device, and a device specifically or predominantly designed or adapted to circumvent the said device is made or imported for sale or rental or is distributed through sale or rental;

(ii) the phonograms in which they have rights are included in encrypted programs broadcast or otherwise communicated to the public by them, or with their authorization, and a device enabling or assisting the reception of the programs by those who are entitled to receive the programs is made or imported for sale or rental or is distributed through sale or rental.