HISTORY OF IP

SYMBIOSIS LAW SCHOOL, HYDERABAD

SYMBIOSIS INTERNATIONAL UNIVERSITY, PUNE

International Regime for Intellectual Property Rights: Overview

The international regime governing intellectual property rights (IPRs) is built on several foundational
treaties aimed at harmonizing laws, preventing infringement, and ensuring fair treatment for creators
and inventors across borders. This system includes the Paris Convention (1883), the Berne Convention
(1886), and subsequent agreements like TRIPS (1995) and WCT (1996).

Paris Convention (1883)

The Paris Convention for the Protection of Industrial Property, adopted in 1883, was among the first
international treaties to address intellectual property.

Objectives

1. Avoiding Loss of Patent Eligibility: Prevent loss of patent rights due to public disclosure (e.g.,
through exhibitions or publications).
 2. Harmonization of Patent Laws: Ensure uniform protection for patents, trademarks, and industrial
designs globally.

Historical Context
 Protection of Invention Act 1851 (Great Exhibition):
The Act provided one year of patent protection to inventions displayed at Britain’s Great
Exhibition.

o 690 applications filed, 630 approved.

o A committee was set up under the Privy Council to oversee trade and foreign patents.

 Britain’s Patent Law (1852): Strengthened domestic patent protection.

 Vienna Exhibition (1873): Highlighted challenges in cross-border patent infringement, leading to

discussions about resolving these issues internationally.

Key Features
1. Signatory Countries: Initially signed by Britain, Ecuador, and Tunisia. Currently, there are
179 member countries.
2. National Treatment (Articles 2 & 3):
o Each member country must treat nationals of other member countries the same
as their own nationals for intellectual property (IP) protection.
3. Right of Priority (Article 4):
o Inventors who file an application in one member country are given priority rights
to file in others (within specific time limits).
 Patents/Utility Models: 12 months.
 Trademarks/Designs: 6 months.
4. Principle of Independence:
o Patent protection is independent in each country. A patent granted in one
country does not guarantee or require its acceptance in others.

Other Articles
 Article 11: Temporary protection for inventions, trademarks, and designs at international
exhibitions.
  Article 6bis: Protects well-known trademarks without requiring registration.
 Article 6sexes: Addresses service marks (trademarks related to services rather than
goods).
 Article 10bis: Prohibits unfair competition, including deceptive practices and
misrepresentation.
 Article 28: Disputes between member countries may be referred to the International
Court of Justice (ICJ).

Berne Convention (1886)

The Berne Convention for the Protection of Literary and Artistic Works established international
standards for copyright protection.

Historical Context
 1469: Johannes Speyer received the first publishing privilege from a sovereign, setting
the stage for copyright protection.
 1557: The Stationers’ Company (UK) became a powerful guild controlling the publication
of books under royal privileges.
 1710: Statute of Anne:
o The first formal copyright law, granting authors exclusive rights for 14 years
(renewable).
o Required authors to register their works and provided for public access through
libraries.

Key Features of Berne Convention

1. National Treatment:
o Authors from any member country receive the same copyright protection as
nationals.
2. Automatic Protection:
o Copyright arises automatically upon creation—no registration required.
3. Minimum Standards:
 o Economic Rights: Authors hold exclusive rights to translate, reproduce, adapt,
and publicly perform their works.
o Moral Rights (Article 6bis): Protects an author’s right to claim authorship and
object to derogatory treatment.
4. Limitations and Exceptions:
o Allows exceptions for teaching, news reporting, and certain uses under strict
conditions.

Role of Berne Convention in International Copyright Law

 French Bilateral Treaties:
The French Decree of 1852 led to the development of bilateral treaties, eventually
formalized as the Berne Convention.
 Victor Hugo’s Leadership:
The First International Congress of Authors and Artists (1858), chaired by Victor Hugo,
called for stronger international protections for authors’ rights.

Later Developments
TRIPS Agreement (1995)
 Introduced under the WTO to ensure enforcement of IP laws globally.
 Extended Berne principles and introduced:
o Dispute Settlement Mechanism.
o National Treatment and Most-Favored-Nation (MFN) principles.

WIPO Copyright Treaty (WCT, 1996)

 Supplemented Berne Convention by addressing digital copyright issues.
 Introduced Technological Protection Measures (TPMs) and Rights Management
Information (RMI).

Marrakesh Treaty (2013)

 Aimed to improve access to copyrighted works for visually impaired persons, enabling
cross-border sharing of accessible formats.
Need for International Treaties
1. Harmonization:
o Ensures uniform IP protection and prevents conflicts between national laws.
2. Developing Countries:
o Encourages nations to implement legal frameworks for copyright protection.
3. Prevention of Infringement:
o Protects works globally, ensuring creators receive due royalties.

Conclusion
The Paris and Berne Conventions laid the foundation for modern IP law, addressing the needs of
inventors and creators in an increasingly globalized world. These treaties, along with TRIPS,
WCT, and the Marrakesh Treaty, continue to evolve to meet the challenges of new technologies
and cross-border IP enforcement.

BERNE CONVENTION
Berne Convention Overview

The Berne Convention for the Protection of Literary and Artistic Works (adopted in 1886) is an
international treaty that ensures copyright protection for authors across its member countries. Its
purpose is to protect the rights of authors in an effective and uniform manner, covering literary and
artistic works, while excluding publicists and publishers explicitly.

Key Principles of the Berne Convention

1. National Treatment:

o Each member country must grant the same protection to foreign works as it provides to
domestic works.

o E.g., an author from India will receive the same copyright protection in the U.S. as an
American author.

2. Automatic Protection:

o Protection is granted automatically without requiring formalities like registration.

 o Any work that qualifies as a literary or artistic creation is protected upon creation.

3. Independence of Protection:

o The protection of a work in one country is independent of its protection in other

countries.

o Copyright in a member country doesn’t rely on compliance with laws in the author’s
home country.

Provisions of the Berne Convention

1. Works Protected

 Article 2:

o Protects all forms of literary and artistic works, regardless of their mode of expression
(e.g., written, performed, or recorded).

o Includes derivative works (e.g., adaptations and translations), which are also protected.

2. Ownership and Duration

 Article 2 and 14bis:

o Owners: Authors or their successors hold the copyright.

o Duration:

 General works: Lifetime of the author + 50 years.

 Cinematic works: 50 years from publication or creation.

 Photographs: 25 years from creation.

3. Minimum Standards of Protection

The Berne Convention ensures both economic and moral rights.

Economic Rights:

 Translation Rights (Article 8): Authors have the right to control translations of their works.

 Reproduction Rights (Article 9): Protects against unauthorized copying.

  Public Performance (Article 11): Protects performances of works in public.

 Broadcasting Rights (Article 11bis): Covers distribution through media like TV or radio.

 Adaptation Rights (Article 12): Covers works adapted into other forms (e.g., books into films).

 Droit de Suite (Article 14ter):

o Ensures authors retain royalties even when their works are resold.

Moral Rights:

 Article 6bis protects:

o Paternity Rights: Authors must be credited even if they’ve transferred their economic
rights.

o Integrity Rights: Prevents unauthorized modifications or distortions of the work.

 Case Example:
Amarnath Sehgal v. Union of India (2005):

o The court ruled in favor of the artist, emphasizing that moral rights are violated when a
work is disrespected (e.g., his mural was mistreated).

4. Limitations and Exceptions

Certain cases allow the use of copyrighted works without infringing on the owner’s rights:

 Free Use (Article 9.2):

o Exceptions for specific purposes like teaching or reporting current events.

 Ephemeral Recordings (Article 11bis(3)):

o Broadcasters can make temporary copies for transmission.

 Compulsory Licensing:

o Allows the use of works under specific conditions without the author's direct consent
(e.g., for translations).

5. Persons Protected

 Article 3 ensures:

o Protection for all creators, regardless of nationality or publication status.

o Applies based on the author's nationality, place of publication, or habitual residence.

o Automatic Protection: Works are protected without formalities.

Appendix: Exceptions for Developing Countries

 Introduced to address the needs of developing countries:

o Compulsory Licensing:

 Reduces waiting periods for translations and reproductions:

 Translation: 3 years (previously 10 years).

 Scientific works: 3 years; Fiction/poetry: 5 years.

o 3-Step Test (Article 9.2) for exceptions:

0. The exception must apply to a specific, clearly defined case.

1. It must not conflict with the normal exploitation of the work.

2. It must not unreasonably prejudice the legitimate interests of the author.

Significance of the Berne Convention

 Establishes a global framework for copyright protection.

 Balances the rights of authors with public access.

 Influences domestic copyright laws of member countries, fostering international cooperation in

protecting intellectual property.

WCT
WIPO Copyright Treaty (WCT) Overview

The WIPO Copyright Treaty (WCT), adopted in 1996, is a special agreement under the Berne Convention
aimed at addressing challenges arising in the digital age. It complements the Berne Convention by
extending its principles to the digital environment, focusing particularly on the protection of works
distributed and accessed online.

Purpose and Background

 Purpose:
The treaty deals specifically with the protection of digital rights related to copyright, ensuring
that works shared or used in digital formats are protected under international law.
  Historical Context:
Before WCT, copyright laws lacked provisions for the digital and internet age. Various reports and
papers laid the groundwork for WCT, such as:

o US Green Paper (1991) and White Paper (1995): Highlighted increasing copyright
infringement through digital platforms, emphasizing the need for international
cooperation.

o EU Green Paper (1988, finalized 1995): Discussed challenges in enforcing copyright laws
on digital platforms and called for enhancement of protections.

Preamble

 WCT is referred to as a special treaty under Article 20 of the Berne Convention.

 It extends the application of Articles 1-21 of the Berne Convention and incorporates rules for the
digital realm.

Anti-Circumvention Law

Anti-circumvention provisions are central to the WCT. They focus on protecting copyright using
technological measures and rights management information.

1. Technological Protection Measures (TPMs):

These are technical barriers designed to prevent unauthorized access or copying of digital
content (e.g., encryption).

2. Rights Management Information (RMI):

Includes metadata like watermarks, digital signatures, or other identifiers that ensure copyright
information remains intact. Prohibits the removal or alteration of such identifiers.

3. Key Elements:

o Ensures that even freely distributed works (e.g., those in the public domain) are
appropriately managed and their distribution means are secured.

Substantive Provisions of WCT

1. New Rights Introduced

 Right to Communication to the Public (Article 8): Authors are granted the exclusive right to
make their works available to the public through digital means (e.g., online streaming or
downloads).

 Prohibition on Circumvention (Article 11): Criminalizes the circumvention of TPMs.

  Protection of RMI (Article 12): Prohibits the unauthorized removal or alteration of rights
management information.

2. Distribution Rights (Article 6)

Authors retain the right to authorize the distribution of their works in digital formats.

3. Rental Rights (Article 7)

Protects the author’s exclusive right to authorize the rental of digital works (e.g., films, software).

4. Three-Step Test (Article 10)

Any limitations or exceptions to these rights must pass the Three-Step Test (originally in Berne Article
9(2)):

1. The exception must apply to a specific case.

2. It must not conflict with the normal exploitation of the work.

3. It must not unreasonably prejudice the legitimate interests of the author.

Digital Rights Management (DRM) Implementation

1. United States:
The Digital Millennium Copyright Act (DMCA) codifies WCT provisions.

o Section 1201:

 Access Control: Circumventing access controls is illegal, regardless of intent.

 Anti-Device Provision: Manufacturing, distributing, or using devices designed

for circumvention is prohibited.

 Exceptions:

 Law enforcement.

 Library of Congress preservation efforts.

2. European Union:
Under the EU Copyright Directive (EUCD):

o Mirrors U.S. provisions, but:

 Access Control: Intent is relevant in certain cases.

 Includes exceptions for:

 Educational purposes.

 Voluntary use.
  Statutory purposes.

3. India:
Copyright Act, Section 65A (Amendment 2012):

o Access control circumvention is illegal only if intent to violate copyright law is proven.

o No policy on anti-device provisions.

o Exceptions:

 National security.

 Record maintenance.

 Teaching and performance.

India and the WCT

 Amendments:
India amended its Copyright Act in 2012 to align with WCT provisions, introducing Section 65A
(TPMs) and Section 65B (RMI).

 Legislative Timeline:

o 2006: Draft amendments proposed by the Copyright Office.

o 2010: Bill presented in the Rajya Sabha and referred to the Parliamentary Standing
Committee.

o 2012: Passed and came into force on June 21, 2012.

WCT and WPPT

The WCT complements the WIPO Performances and Phonograms Treaty (WPPT). Together, they extend
protections to performers and producers of sound recordings in the digital realm.

WCT and TRIPS Agreement

 The TRIPS Agreement (1995) references Articles 1-21 of the Berne Convention.

 Introduced the Dispute Settlement Body to resolve copyright disputes.

 Applies principles of:

o National Treatment: Equal protection for domestic and foreign authors.

o Most Favored Nation (MFN): No member country can favor one nation over another.
Summary of Key Contributions

The WCT ensures:

1. Protection of copyright in the digital age, addressing challenges of online distribution.

2. Rights to prevent circumvention of technological protections.

3. Maintenance of rights management information.

4. Global uniformity in recognizing and adapting to the digital copyright landscape.