RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/128
10 February 1999
(99-0499)
Council for Trade-Related Aspects
of Intellectual Property Rights
THE WORK PROGRAMME ON ELECTRONIC COMMERCE
Background Note by the Secretariat
I. INTRODUCTION
1. The Declaration on Global Electronic Commerce, adopted on 20 May 1998 by Ministers at
the second session of the Ministerial Conference1, urged  the General Council to establish a
comprehensive work programme to examine all trade-related issues relating to global electronic
commerce, taking into account the economic, financial, and development needs of developing
countries, and to report on the progress of the work programme, with any recommendations for
action, to the Third Session.
2. At its meeting on 25 September 1998, the General Council established a Work Programme on
Electronic Commerce2 for the relevant WTO bodies, namely the Council for Trade in Services, the
Council for Trade in Goods, the Council for TRIPS and the Committee for Trade and Development.
Further issues may be taken up at the request of Members by any of these bodies.  Other WTO bodies
shall also inform the General Council of their activ ities relevant to electronic commerce. The General
Council shall play a central role in the whole process and  keep the Work Programme under
continuous review through a standing item on its agenda.  In addition, the General Council shall take
up consideration of any trade-related issue of a cross-cutting nature.  The General Council will conduct
an interim review of progress in the implementation of the Work Programme by 31 March 1999.  The
four WTO bodies mentioned above shall report or provide information to the General Council by
30 July 1999.
3. Furthermore, the Work Programme provides that, in undertaking their work, the bodies
concerned should take into account the work of other intergovernmental organizations.  Consideration
should be given to possible ways of obtaining information from relevant non-governmental
organizations.
4. Paragraph 4.1 of the Work Programme provides that the Council for TRIPS shall examine and
report on the intellectual property issues arising in connection with electronic commerce.  The issuesto be examined shall include:
- protection and enforcement of copyright and related rights;
- protection and enforcement of trademarks;
- new technologies and  access to technology.
5. At its meeting of 1 and 2 December 1998, the Council for TRIPS requested the Secretariat to
prepare a factual background note examining the provisions of the TRIPS Agreement relevant to
                                                     
1 Document WT/MIN(98)/DEC/2.
2 Document WT/L/274.IP/C/W/128
Page 2
paragraph 4.1 of the Work Programme on Electronic Commerce.  Since many of these issues are
already under discussion in the World Intellectual Property Organization (WIPO) and other
intergovernmental organizations, it was agreed that the note should also provide information on their
relevant activities.
6. This note has been prepared in response to the above-mentioned request.  It follows the
structure of the TRIPS Agreement, although certai n related provisions are discussed together even
when they appear in different parts of the Agreement.  While it can be argued that virtually all of the
provisions of the Agreement are relevant to the protection and enforcement of intellectual property
rights even in the digital network environment, the discussion focuses on those provisions that appear
to be most closely linked with the issues referred to in the Work Programme, with a special emphasis
on the issues specifically referred to in paragraph 4.1 of the Programme.  The list of relevant issues
discussed in this note is not intended to be exhaustive, and new issues are likely to emerge as moreexperience is gained with trade over communications networks.
7. In the context of examining the relevant prov isions of the TRIPS Agreement, certain issues
are discussed that arise from the "borderless" nature of the Internet, which relate, inter alia , to the
application of territorially based laws and regulations to activities carried out on a global network.
Some of these issues are specific to intellectual property, such as the criteria for determining whichpersons are entitled to protection and the notion of country of origin in the area of copyright and
related rights, and the application of a number of provisions on trademarks.  However, other issues are
more general in nature and concern also other areas of law, such as questions about jurisdiction.
8. The final section of this note contains a brief ov erview of the relevant activities of WIPO and
other intergovernmental organizations.
9. As provided in paragraph 1.3 of the Work Programme, the term "electronic commerce" is
understood to mean the production, distribution, marketing, sale or delivery of goods and services by
electronic means.  This note focuses essentially on the implications of such transactions for the
protection and enforcement of intellectual property rights.  In addition, it discusses how the
technology used for electronic commerce can also be used to modernize and improve the efficiency ofthe management, administration and enforcement of those rights.  In accordance with paragraph 1.3 of
the Work Programme, this note also considers intell ectual property issues relating to the development
of the infrastructure for electronic commerce.
II. PREAMBLE
10. The expected growth of electronic commerce is closely linked with the growing importance
of intellectual property.  Indeed, much of the trade on the Internet and other electronic
communications networks involves the selling or licensing of information, cultural products andtechnology protected by intellectual property rights .  For consumers who buy products and services at
a distance, it may be increasingly necessary to rely on the reputation attached to trademarks and other
distinctive signs.  Intellectual property plays an important role also in promoting the development of
the infrastructure of communications networks.
11. The general goals of the TRIPS Agreement are contained in the Preamble of the Agreement,
which reproduces the basic Uruguay Round negotiating objectives established in the TRIPS area by
the 1986 Punta del Este Declaration and the 1988/89 Mid-Term Review.  These goals include the
reduction of distortions and impediments to international trade, promotion of effective and adequate
protection of intellectual property rights, and ensuring that measures and procedures to enforce
intellectual property rights do not themselves become barriers to legitimate trade.  The Preamble alsorecognizes the underlying public policy objectives of national systems for the protection of
intellectual property, including developmental and technological objectives.  These goals should beIP/C/W/128
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read in conjunction with Article 7, entitled "Objectives" and Article 8, entitled "Principles", which
will be discussed below.
12. The basic notions, principles and objectives of intellectual property have survived over a
century of rapid economic, social and technological change.  The traditional objectives of the system
as reflected in the current international norms, in cluding in the TRIPS Agreement, would appear to
remain valid even in "cyberspace".  This would sugge st that the fulfilment of the obligations of the
TRIPS Agreement through its implementation would have an important role in facilitating the
development of electronic commerce and the necessary infrastructure.
13. On the other hand, technological and economic developments have often prompted
adjustments to existing types of intellectual property rights, and the creation of new types of rights, as
well as giving rise to new problems of enforcement.  In the course of the Uruguay Round negotiations
on the TRIPS Agreement, the main new issues that had arisen by that time in relation to digital
technology were addressed, and provisions regulating them were included in the final text of the
Agreement.  These include copyright protection of computer programs and databases, rental rights in
respect of computer programs and phonograms and, in certain situations, cinematographic works, and
protection of the layout-designs of integrated circuits.
14. However, the TRIPS negotiations were largely over by December 1991 with the publication
of a consolidated text of the Agreement as part of the "Draft Final Act Embodying the Results of the
Uruguay Round of Multilateral Trade Negotiations", the so-called "Dunkel draft".  By that time, the
implications of global digital networks for the protection and enforcement of intellectual property
rights were not yet an issue before the internatio nal community and were, therefore, not specifically
addressed in the negotiations.  However, given the technologically neutral language used in theTRIPS Agreement, its provisions are generally re levant also in the digital network environment.
Since these negotiations, the implications of the exploitation of protected subject-matter for such
networks have come to the fore in international discussions.  The question that has arisen in this
context is whether the norms contained in the TRIPS Agreement provide "effective and adequate
protection of intellectual property rights" in respect of the new forms of exploitation made possible bymeans of interactive digital networks.  As indicated in the Work Programme adopted by the General
Council, this question appears to arise in particular in respect of the protection and enforcement of
copyright and related rights as well as trademarks, issues that will be examined below.
15. Given the global nature of the Internet and other digital networks, a related question that
arises is whether differences in the way in which new forms of exploitation of protected subject-
matter in the digital network environment are addressed in legislation and case law at the national
level may result in increased distortions of and impediments to international trade.
16. While examining some of the new challenges posed by global communications networks to
the protection and enforcement of intellectual property rights, we should also bear in mind the great
new opportunities such networks provide to facilitate international trade in subject-matter protected
by intellectual property rights.  For example, the Internet may give consumers a wider choice of
information and cultural products protected by copyright and related rights irrespective of their placeof residence, and for authors, publishers and producers, it may lower the costs of and barriers to
entering the global market.  Transaction costs and transaction times are likely to fall rapidly.
However, this positive scenario requires that governments and the private sector be able to find and
implement a proper mixture of regulatory, contractual and technological measures, and to ensure
adequate public awareness of the role of copyright and related rights in the information society.IP/C/W/128
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III. GENERAL PROVISIONS AND BASIC PRINCIPLES
(a) General
17. Like the pre-existing international intellectu al property conventions, the TRIPS Agreement is
a minimum standards agreement.  It leaves Members free to provide more extensive protection of
intellectual property in regard to new forms of exploitation of protected subject-matter at the nationalor international level - whether bilateral, regional, or multilateral, such as in WIPO.  This is made
clear in Article 1.1  of the Agreement, which provides that Members may, but shall not be obliged to,
implement in their law more extensive protection th an is required by the Agreement, provided that
such protection does not contravene the provisions  of the Agreement.  Such protection must be
accorded to the nationals of other Members in accordance with Articles 3, 4 and 5  of the Agreement,
which contain the fundamental rules of national and most-favoured-nation treatment.
18. As in the main pre-existing intellectual property conventions, the basic obligation on each
Member country is to accord the treatment in regard to the protection of intellectual property provided
for under the Agreement to the persons of other Members.  Article 1.3  of the Agreement defines who
these persons are.  These persons are referred to as "nationals" but include persons, natural or legal,
who have a close attachment to other Members without necessarily being nationals.  The criteria for
determining which persons must thus benefit from the treatment provided for under the Agreementare those laid down for this purpose in the main pre-existing intellectual property conventions of
WIPO, applied of course with respect to all WTO Members whether or not they are party to those
conventions.
3  The application of certain of these criteria in respect of use of works and phonograms
on the Internet is discussed below in the section concerning copyright and related rights.
19. The distribution of products protected by copyright, trademarks or other intellectual property
rights is often conducted by the right holder, including through licences, on a territorial basis.  Such
distribution and licensing arrangements are supported in many jurisdictions by laws on the exhaustion
of distribution rights which enable right holders to prevent parallel importation of protected products
put on the market in other countries.  Article 6  of the TRIPS Agreement provides that, for the
purposes of dispute settlement, nothing in the Agreement shall be used to address the issue of theexhaustion of intellectual property rights, provided that the national treatment and most-favoured-
nation treatment obligations are complied with.
20. The global nature of the Internet and electronic commerce using it may have implications for
territorial arrangements for the distribution of products protected by intellectual property rights.
While consumers have long been able to order goods from other countries by means of mail, telefax
or telephone, the possibility of ordering goods over the Internet is considerably increasing such
commerce.  Traditional delivery by mail of products directly to consumers across borders already hasimplications, given the difficulty of ascertaining territorial rights in respect of such transactions. When
the delivery takes place in electronic form over the Internet, the implications may well be greater.
(b) New technologies and access to technology
21. One of the issues mentioned in paragraph 4.1 of the Work Programme concerns new
technologies and access to technology.  The objectives of promoting the development of newtechnology and the transfer and dissemination of technology are referred to in Article 7  of the
                                                     
3 These are: the Paris Convention for the Protection of Industrial Property, the Stockholm Act of
14 July 1967;  the Berne Convention for the Protection of Literary and Artistic Works, the Paris Act of
24 July 1971;  the International Convention for the Protection of Performers, Producers of Phonograms andBroadcasting Organizations, adopted at Rome on 26 October 1961 (the Rome Convention); and the Treaty onIntellectual Property in Respect of Integrated Circuits, adopted at Washington on 26 May 1989 (the IPICTreaty).IP/C/W/128
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Agreement, entitled "Objectives".  It says 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, to the mutual advantage of producers and users of technological
knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and
obligations".
22. The protection of intellectual property, in particular of patents, as well as of copyright, layout-
designs of integrated circuits, and undisclosed information, plays an important role in promoting the
technological development of the infrastructure for electronic communications networks, i.e. the
software, hardware and other technology that make up information highways.  IPRs provide
protection to the results of investment in the development of new information and communications
technology, thus giving the incentive and the means to finance research and development aimed at
improving such technology.
23. A functioning intellectual property regime facilitates access to technology through transfer of
information and communications technology in the fo rm of foreign direct investment, joint ventures
and licensing.  The objectives of promoting technological innovation and the transfer of technology
are usually mutually consistent since right holders are generally more willing to transfer technology
voluntarily where a country's IPR system provides  effective protection, even though the importance of
IPRs varies across different activities and industries.  In certain cases such as joint ventures or
technology licensing, IPRs in the home market might also increase the willingness of those
demanding the technology to acquire it.  Thus, IPRs can contribute positively to technology transfer
and the development of the communications infras tructure in these situations both from the
perspective of the technology supplier and those demanding it.  Of course, the protection of IPRs isonly one of the factors which affect the transfer of technology.
24. One of the basic objectives of the patent system is to facilitate the dissemination of
technological knowledge by encouraging inventors to  disclose new technology rather than attempt to
keep it secret.  The disclosure requirement contained in Article 29.1  of the Agreement has a number of
important consequences for the transfer of and ac cess to technology because the resulting information,
which is stored and classified in patent documentation, is accessible to anyone, including to those in
countries where a patent has not been sought, and "constitutes the single most valuable and
comprehensive source of technology available in the world today".
4  Communications networks are
increasingly used for improving the communicati on between national, regional and international
intellectual property offices (patent and trademark offices), and also between information stored in
such offices and persons interested in it.  This will facilitate access from anywhere in the world to the
valuable and extensive technological information contained in patent documents.5  Information
technology is also used to improve the efficiency of intellectual property offices in other ways.  Such
modernization benefits the clients of these offices in the form of better and faster services, including
shorter periods in acquiring intellectual property rights.
25. Furthermore, it should be noted that Article 66.2  of the Agreement requires developed country
Members to "provide incentives to enterprises and institutions in their territories for the purpose of
promoting and encouraging technology transfer to least-developed country Members in order to
enable them to create a sound and viable technological base".
26. The provisions of the TRIPS Agreement on anti-competitive practices may also be relevant
for the transfer of technology.  The Agreement recognizes the right of governments to take
appropriate measures to address anti-competitive uses of the rights protected by the Agreement,
                                                     
4 WIPO, Background Reading Material on Intellectual Property, WIPO, 1988.
5 Some intellectual property offices already exchange  information over the Internet.  For information
on WIPO's work on a global information network and intellectual property information services, seeparagraph 91 below.IP/C/W/128
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provided that they are consistent with its other provisions ( Articles 8 and 40.2 ). In addition, the
Agreement introduces a procedure for consultations and exchange of information among Members to
facilitate the control of anti-competitive practices in contractual licences ( Article 40.3 and 40.4 ).
Among the measures that a Member may take to remedy abusive anti-competitive practices in the area
of patents is the grant of a compulsory licence.  Where a compulsory licence is granted to remedy apractice determined after judicial or administrative process to be anti-competitive, Article 31(k)
relaxes several of the conditions normally applicable to the compulsory licensing of patents.
27. The provisions of the TRIPS Agreement rela ting to anti-competitive practices could come
into play in a variety of contexts relating to electronic commerce and the Internet.  Potentially anti-
competitive uses of intellectual property rights might include, for example, conditioning the sale of
IP-protected products on the purchase of other products whether or not subject to IP protection (a
form of tied selling).  Competition law thinking and practice suggest that the scope for significantmarket power to arise and, hence, the possibility of anti-competitive abuses, is particularly marked in
network situations, where economic actors depend on access to a network, whether physical or
electronic.  This is due, in part, to the intrinsic tendency in network industries to "lock into" a
particular standard, which may have the effect (whether intentional or otherwise) of excluding
competing systems and products that are incompatible with the standard.  Indeed, issues related tocomputer systems and networks, typically also involving intellectual property rights, have been a
consideration in a number of recent high-profile competition law cases.
6
IV. STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF
INTELLECTUAL PROPERTY RIGHTS
(a) Copyright and related rights
28. Digital technology has already fundamentally changed the way that works and other protected
materials are created, produced and used.  It has also led to the emergence of new types of works,
notably computer programs and databases.
29. The Internet and other electronic networks provide a new means for the distribution of
protected materials.  Selling books has become one of the most popular forms of commerce on theInternet, and selling other products such as sound recordings is growing.  While many books, CDs or
films ordered over the Internet are still delivered by mail, the Internet is increasingly used also as a
means of delivering products to customers.  This is common as regards news, articles and other
commercial and technological information, and a growing share of computer software is sold this
way.  The number of websites offering music for listening (webradio) or downloading is growing
rapidly.  Once the capacity of the networks and end-users' equipment allows, communications
networks will increasingly provide a vehicle to deliver products such as films and multimediaproducts directly to homes.
30. However, secure conditions for such distribution are a precondition for these new possibilities
to be fully exploited.  Copyright owners will be reluctant to put their protected materials on the net as
long as they fear that the Internet may lead to uncontrolled dissemination and copying of
phonograms
7, films, computer programs and other protected materials, which will seriously
                                                     
6 A possible example would be the ongoing Microsoft  case.
7 For example, major labels have until now been reluctant to distribute their phonograms over the
Internet.  However, at a press conference on 15 December 1998, representatives of the international recordingindustry announced a Secure Digital Music Initiative (SDMI), a framework to work with the technology
community to create a voluntary digital music security  specification.  The open specification is intended to
protect copyrighted music in all existing and emerging digital formats and through all delivery channels whilegiving consumers convenient access to it.  The objective is to have a specification completed in time to allowconforming products to be available for sale by the end of 1999.  (For more information, seehttp://www.riaa.com.)  While the international recording industry has been developing its distribution system,IP/C/W/128
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undermine copyright industries.  Also service providers and others involved in the process of making
materials available to end users will need clear rules to be able to plan how to develop their services.
31. This section will discuss the TRIPS provisions on copyright and related rights relevant to
electronic commerce, and highlight issues that may arise when these provisions are applied to the
digital network environment.  Some of these issues were also addressed in two new WIPO treaties oncopyright matters that were adopted, under the auspices of WIPO, in December 1996, namely the
WIPO Copyright Treaty (WCT) and the WIPO Pe rformances and Phonograms Treaty (WPPT) (see
section VII of this note).  Therefore, in the follow ing discussion of the TRIPS provisions in the area of
copyright and related rights, as well as in the area of enforcement in section V of this note, reference
is made to the provisions of these new treaties and their preparatory work where they provide useful
information on how the respective issues were dealt with in that context.
The provisions of the Berne Convention incorporated into the TRIPS Agreement
32. The TRIPS Agreement obliges WTO Members to comply with the substantive obligations of
the Paris Act of 1971 of the Berne Convention for the Protection of Literary and Artistic Works
(Berne Convention).  The traditional principles of  international copyright law as contained in the
Berne Convention, originally concluded in 1886 a nd updated through periodic revisions, have proven
to be sufficiently flexible to have been able to accommodate new categories of works, and ways ofcreating and using protected materials in the digital environment.  The TRIPS Agreement reinforces
the application of the rights contained in the Berne Convention through more effective enforcement,
monitoring of compliance with the obligations, and application of the dispute settlement mechanism.
In addition to requiring compliance with the basic standards of the Berne Convention in its most
recent version, the TRIPS Agreement clarifies or adds certain specific points.
33. Article 9.1  of the TRIPS Agreement requires Members to comply with the substantive
provisions of the Paris Act of 1971 of the Berne Convention, i.e. Articles 1 through 21 of the Berne
Convention (1971) and the Appendix thereto.  However, Members do not have rights or obligations
under the TRIPS Agreement in respect of the rights conferred under Article 6 bis of that Convention,
i.e. the moral rights (the right to claim authorship and to object to any derogatory action in relation to
a work, which would be prejudicial to the author's honour or reputation), or of the rights derived
therefrom.
8  The provisions of the Berne Convention referred to deal with questions such as subject-
matter to be protected, minimum term of protection, and rights to be conferred and permissible
limitations to those rights.  In general, these provis ions are equally applicable both in the off-line and
on-line environment.  The following discussion on th e Berne provisions incorporated into the TRIPS
Agreement is limited to the specific questions that may arise when they are applied to on-line
communications.
                                                                                                                                                                    
copies of protected phonograms have increasingly become available for downloading from numerous websites
in the so-called MP3 format.  MP3 compresses music files to a relatively small size that makes theirtransmission and storage feasible, but it does not provide any protection against copying.  Reportedly, aconsiderable amount of MP3 downloads are unauthorized.
8 Digital technology provides new ways of manipulating works in a potentially derogatory way.  The
possibility of making such modifications available to the public on the Internet does not appear to affect the
underlining legal questions involved.  However, the differences in national standards on moral rights may have
some implications when works in an altered form are used  on the Internet, given that the relevant acts in respect
of such works may occur in multiple jurisdictions.  In this respect, the problems that may arise are similar tothose that relate to the differences in national standards on economic rights (see the discussion in paragraph 69)or in the way the right holders of works are determined (see the discussion in paragraphs 46-49).IP/C/W/128
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Definition of publication and the notion of country of origin
34. Articles 3 and 4 of the Berne Convention , as incorporated into the TRIPS Agreement by
means of a reference in Article 1.3 of the Agreement9, define which persons must benefit from the
treatment provided for under the Agreement.  The tw o main criteria of eligibility for protection are
that (a) the author is a national or a resident of a WTO Member, or that (b) the work of the author wasfirst published in a WTO Member, or simultaneously in a non-Member country and a WTO Member
(Articles 3(1)(a) and (b) of the Berne Convention, resp ectively).  A work is considered as having been
published simultaneously in several countries if it ha s been published in two or more countries within
30 days of its first publication (Article 3(4) of the Berne Convention).
10  The expression "published
works" is defined as "works published with the consent of their authors, whatever may be the means
of manufacture of the copies, provided that the availa bility of such copies has been such as to satisfy
the reasonable requirements of the public, having regard to the nature of the work" (Article 3(3) of theBerne Convention).
11
35. A question that has arisen in respect of the application of this definition of publication in the
network environment is whether posting a work on a website constitutes a publication within the
meaning of Article 3(3), and, if so, in which country or countries should the first publication or
simultaneous publication be considered to have taken place.  This is relevant for determining whethera work, posted on a website, of an author who is not a national or resident of a WTO Member, would
meet the criterion of eligibility for protection under Article 3(1)(b) of the Berne Convention (criterion
of publication) as incorporated into the TRIPS Agreement.
36. The definition of publication and its interpretation may also have implications for whether
member countries of the Berne Convention have  to apply the minimum standards under the
Convention to specific works.  This is because authors are required to enjoy, in respect of works for
which they are protected under the Convention, national treatment and the rights specially granted by
the Convention in countries of the Berne Union other than the country of origin ( Article 5(1) of the
Berne Convention ).  The notion of "country of origin" is defined in Article 5(4) of the Berne
Convention .  It provides that the "country of origin" is considered to be "in the case of works first
published in a country of the Union, that country; in the case of works published simultaneously in
several countries of the Union which grant different terms of protection, the country whose legislation
grants the shortest term of protection" (subparagraph (a) of Article 5(4) of the Berne Convention).
12
In examining the implications of these provisions  under the TRIPS Agreement, it would be necessary
to take into account also the provisions of Article 1.3 of the Agreement.
37. Other situations where the interpretation of the notions of "publication" and "country of
origin" may affect the available protection include the duration of protection (comparison of terms ofprotection under Article 7(8) of the Berne Convention  as incorporated into the TRIPS Agreement) and
the extent to which Members are obliged to protect works that exist at the time that a Member starts to
apply the provisions of the TRIPS Agreement ( Article 18(1) of the Berne Convention
13 as
incorporated into the TRIPS Agreement).14,15
                                                     
9 As regards Article 1.3 of the TRIPS Agreement, see section II of this note.
10 Article 4 of the Berne Convention contains certain additional criteria of eligibility.
11 In addition, Article 3(3) provides that "the performance of a dramatic, dramatico-musical,
cinematographic or musical work, the public recitation of a literary work, the communication by wire or thebroadcasting of literary or artistic works, the exhibition of a work of art and the construction of a work ofarchitecture shall not constitute publication".
12 Subparagraphs (b) and (c) of Article 5(4) contain additional criteria for determining the country of
origin in certain situations.
13 Article 18(1) of the Berne Convention as incorpor ated into the TRIPS Agreement contains the so-
called rule of retroactivity.  It requires a Member to apply the Agreement to all works which, at the moment it
starts to apply its provisions, have not yet fallen into the public domain in the country of origin through theIP/C/W/128
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38. The interpretation of the notion of publication may also have implications for determining
which producers of phonograms and performers are eligible for protection under the TRIPS
Agreement.  One of the three criteria of eligibility for protection applicable to producers of
phonograms is the criterion of publication, i.e. whether the phonogram was first published in another
WTO Member ( Article 5(1)(c) of the Rome Convention  as incorporated into the TRIPS Agreement by
means of a reference in Article 1.3 of the Agreement).16  One of the three criteria applicable to
performers is whether "the performance is incorporated in a phonogram which is protected under
Article 5 of [the Rome] Convention" ( Article 4(b) of the Rome Convention  similarly incorporated into
the TRIPS Agreement).17
                                                                                                                                                                    
expiry of the term of protection.  Paragraphs 2 and 3 of that Article contain certain further conditions and
provisions on the application of that principle.  It should be noted that the application of Article 18 of the BerneConvention is extended also to the rights of performers and producers of phonograms in phonograms that existat the time that a Member starts to apply the provisions of the TRIPS Agreement (Articles 14.6 and 70.2 of the
Agreement).
14 Under national legislation, the notion of publication may be used also for other purposes, such as the
applicability of some limitations to exclusive rights.  For such purposes, the notion of publication may bedefined differently.
15 The issue of the notion of publication and its implications was taken up in the Basic Proposal for the
Substantive Provisions of the Treaty on Certain Questions concerning the Protection of Literary and Artistic
Works to be considered by the WIPO Diplomatic Conference in December 1996 (WIPO document
CRNR/DC/4).  While it was argued that "the provisions of Article 3(3) of the Berne Convention may be appliedquite satisfactorily to new forms of electronic publi cation" (paragraph 3.05 of the attached Memorandum
Prepared by the Chairman of the Committees of Experts), a clarification was proposed in order to exclude anyuncertainty in this regard (paragraph 3.07 of the Memorandum).  The proposal was also designed to clarify theplace of publication and the country of origin.  The proposed  draft Article 3 read as follows:  "(1)  When literary
or artistic works are made available to the public by wire  or wireless means in such a way that members of the
public may access these works from a place and at a time individually chosen by them, so that copies of theseworks are available, Contracting Parties shall, under the conditions specified in Article 3(3) of the Berne
Convention, consider such works to be published works.  (2)  When applying Article 5(4) of the BerneConvention, Contracting Parties shall consider works refe rred to in paragraph (1) of the present Article to be
published in the Contracting Party where the necessary arrangements have been made for availability of these
works to members of the public."  The Conference did not take any action on this matter, and the draft provisionwas not included in the final text of the WCT.
16 Paragraphs 2 and 3 of Article 5 of the Rome Convention contain additional provisions on
simultaneous publication and the power to exclude certain criteria.
17 Cf. the definition of "publication" in 2(e) of the WPPT, which mostly corresponds to the definition of
publication in Article 3(d) of the Rome Convention, except that it adds a consent requirement, i.e. a fixed
performance of a phonogram cannot be considered published without the consent of the relevant right holder.The Basic Proposal for the Substantive Provisions of the Treaty for the Protection of the Rights of Performersand Producers of Phonograms to be considered by the Diplomatic Conference (WIPO document CRNR/DC/5)contained a draft Article 2(e)(ii) with additional language to take into account publication of fixed performancesand phonograms by interactive on-demand transmissions.  As in the case of the WCT, the Conference did not
include it in the final text of the WPPT.  However, paragraph (4) of Article 15 of the WPPT provides that, for
the purposes of that Article, which concerns the right to remuneration for broadcasting and communication tothe public, "phonograms made available to the public by wire or wireless means in such a way that members ofthe public may access them from a place and at a time individually chosen by them shall be considered as if theyhad been published for commercial purposes."IP/C/W/128
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Right of reproduction
39. Article 9.1 of the Berne Convention  as incorporated into the TRIPS Agreement provides that
"authors of literary and artistic works protected by this Convention shall have the exclusive right of
authorizing the reproduction of these works", and makes it clear that this right covers reproduction "in
any manner or form".18  In addition, Articles 11 and 14.4  of the TRIPS Agreement provide for rental
rights in respect of computer programs and phonograms and, in certain situations, cinematographic
works, given that uncontrolled rental of such works, whether in digital or analogue form, may lead to
widespread unauthorized copying.
40. The right of reproduction is the very essence of copyright both in the off-line and on-line
environment.  Works and other protected material embodied on digital media such as diskettes, CDs,
and CD-ROMs have become increasingly vulnerable to piracy, given the ease and diminishing costs
of digital copying, and the fact that digital information can be copied and transmitted over and overagain without any loss of quality.  The production and distribution through traditional means of
pirated sound recordings, films, software and other protected materials continues to be a major
challenge for the copyright industries.  The new on-line environment involves risks of new forms of
piracy where websites offer protected materials fo r downloading without the authorization of or any
remuneration to the right holders.  Initial unauthorized transmission of protected materials may becombined with traditional forms of piracy at the recipient's end.  Therefore, the reproduction right and
its effective enforcement are essential also in the new digital network environment.
41. The transmission of works and other protected materials over the Internet or other electronic
communications networks may involve a number of reproductions at various stages of the distribution
chain.  The first stage is the uploading of protected content into the host server at the point oftransmission, and the final stage often involves dow nloading of that content by the end-user.  The
process of transmitting the content between these two points normally involves several intermediate
and/or transient copies made by service providers.  How to deal with such intermediate and transient
reproductions has been a difficult issue in international discussions, in particular between the content
and service providers.  These discussions have concerned the questions of to what extent transientreproductions are or should be included in the scope of the reproduction right, and, to the extent they
are included in the scope of that right, what type  of limitations to that right should be applied in
respect of such reproductions.
19  A related question concerns what is the most effective point of
control and enforcement of the reproduction and other rights and the liability of intermediary service
providers.20
42. The above considerations concerning the reproduction right as provided in Article 9(1) of the
Berne Convention and its implications for electronic commerce are generally relevant also in respectof the protection of related rights.  Article 14.1  provides that in respect of a fixation of their
performance on a phonogram, performers shall have the possibility of preventing the fixation of their
unfixed performance and the reproduction of such fixation when undertaken without their
authorization.  Article 14.2  of the TRIPS Agreement provides that producers of phonograms shall
                                                     
18 The Diplomatic Conference held in December 1996 adopted the following Agreed Statement
concerning Article 1(4) of the WCT, which incorporates by reference the substantive obligations of the Berne
Convention:  "The reproduction right, as set out in Article 9 of the Berne Convention, and the exceptionspermitted thereunder, fully apply in the digital environment, in particular to the use of works in digital form. It isunderstood that the storage of a protected work in digital form in an electronic medium constitutes areproduction within the meaning of Article 9 of the Berne Convention."
19 The Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions concerning the
Protection of Literary and Artistic Works to be cons idered by the Diplomatic Conference (WIPO document
CRNR/DC/4) contained a proposal to clarify the scope of the reproduction right and permissible exceptions inregard of temporary reproductions (draft Article 7).  The Conference did not include the text in the final versionof the WCT.  However, see the Agreed Statement adopted by the Conference referred to in footnote 18.
20 The issue of liability of intermediaries will be discussed in section V of this note on enforcement.IP/C/W/128
Page 11
enjoy the right to authorize or prohibit reproduction of their phonograms, and makes it clear that this
right covers both "direct" and "indirect" reproduction.  Article 14.3  provides that broadcasting
organizations shall have the right to prohibit the fixation and the reproduction of fixations of
broadcasts when undertaken without their authorization.21
Right of communication
43. As regards the act of transmission as such, the right that is particularly relevant is the right of
communication.  The Berne Convention contains a number of provisions, which have been
incorporated into the TRIPS Agreem ent, that regulate this right.22  A question that has been discussed
at the international level is whether these provisions concerning the right of communication
adequately respond to the needs related to interactive on-line communications or whether
clarifications or adaptations are necessary.  This question was also raised in the course of the
preparation of the WCT.  The following provision was included in Article 8 of the final text of theWCT, entitled "Right of Communication to the Public":
"Without prejudice to the provisions of Articles 11(1)(ii), 11 bis(1)(i) and (ii), 11 ter(1)(ii),
14(1)(ii) and 14 bis(1) of the Berne Convention, authors of literary and artistic works shall
enjoy the exclusive right of authorizing any communication to the public of their works, by
wire or wireless means, including the making available to the public of their works in such away that members of the public may access these works from a place and at a time
individually chosen by them."
44. In addition to putting the right of communication into a single provision, the provision
contains two elements.  First, it extends the right of communication to all categories of works.
Second, it clarifies the application of the right in respect of interactive on-demand communications byconfirming that the relevant acts of communication include cases where members of the public may
have access to the works at different places and at different times.
23
45. Under the TRIPS Agreement, performers must have the possibility of preventing the
communication to the public of their live performa nce when undertaken without their authorization
(Article 14.1 of the TRIPS Agreement).  Article 10 of the WPPT provides performers "the exclusiveright of authorizing the making available to the public of their performances fixed in phonograms, by
                                                     
21 Articles 7 and 11 of the WPPT provide that performers and producers of phonograms shall enjoy the
exclusive right of authorizing the direct or indirect reproduction of their performances fixed in phonograms, inany manner or form.  The Conference adopted the following Agreed Statement:  "The reproduction right, as setout in Articles 7 and 11, and the exceptions permitted thereunder through Article 16, fully apply in the digitalenvironment, in particular to the use of performances and phonograms in digital form.  It is understood that the
storage of a protected performance or phonogram in digital form in an electronic medium constitutes a
reproduction within the meaning of these Articles."
22 Article 11(1)(ii) of the Berne Convention  provides that authors of dramatic, dramatico-musical and
musical works shall enjoy the exclusive right of authorizing any communication to the public of theperformance of their works.  Similarly, authors of literary works enjoy the exclusive right of authorizing anycommunication to the public of the recitation of their works ( Article 11ter(1)(ii) ).  Article 14(1)(ii)  provides
authors of literary or artistic works the exclusive right of authorizing the public performance and communication
to the public by wire of the works adapted or reproduced by means of cinematography, and Article 14bis(1)
grants the same right to the owner of copyright in a cinematographic work.  Article 11bis(1)(i) and (ii)  provides
that authors of literary and artistic works shall enjoy the exclusive right of authorizing (i) the broadcasting oftheir works or the communication thereof to the public by any other means of wireless diffusion of signs, soundsor images;  and (ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work,
when this communication is made by an organization other than the original one.
23 As regards the scope of this right in respect of intermediaries who provide physical facilities for
communication without actively initiating it, the Conference adopted the following Agreed Statement:  "It isunderstood that the mere provision of physical facilities for enabling or making a communication does not initself amount to communication within the meaning of this Treaty or the Berne Convention."IP/C/W/128
Page 12
wire or wireless means, in such a way that members of the public may access them from a place and
at a time individually chosen by them."  A similar right is granted in Article 14 of the WPPT to the
producers of phonograms in respect of their phonograms.
Right holder
46. Differences at the national level concerning the definition of the person in whom copyrights
are initially vested may have implications for the international circulation of works.  Such
implications may be reduced by means of contractual transfers of rights between the persons
concerned, for example so as to cause the same person to be the right holder in different countries or
to otherwise clarify the situation.  However, there may be cases where such contractual transfers may
not have been effected or where, under the principles of private international law, such transfers
would not necessarily be recognized in each jurisdiction concerned.
47. The question of who should be considered the right holder of a work and eligible to institute
infringement proceedings is addressed in a number of provisions of the Berne Convention as
incorporated into the TRIPS Agreement.  These provisions provide some guidance on the initial
ownership and transfer of copyright.  For example, a basic presumption contained in Article 15(1) of
the Berne Convention  provides that, "in order that the author of a literary or artistic work protected by
this Convention shall, in the absence of proof to the contrary, be regarded as such, and consequentlybe entitled to institute infringement proceedings in th e countries of the Union, it shall be sufficient for
his name to appear on the work in the usual manner".
24  Article 14bis of the Berne Convention
contains special provisions on cinematographic works.  Paragraph 2(a) of that Article provides that
"ownership of copyright in a cinematographic work shall be a matter for legislation in the country
where protection is claimed".25  To the extent that the provisions of the Agreement do not provide
specific norms on the choice of law, the rules of private international law may provide additional
guidance in the choice of law applicable to licensing contracts.
48. During the final phases of the Uruguay Round negotiations, the issue of seeking further
clarification of these matters was raised.  At that time, it was suggested that it be clarified in the text
of the Agreement that the ownership of rights and benefits should be determined in accordance with
the contractual relationships among the natural and legal persons involved, and that the provisions
regarding transfers of such rights and benefits in the national legislation should not be applied so as to
upset the legitimate contractual expectations of the persons involved except where such transfers were
manifestly incompatible with ordre public .  However, as agreement was not reached on this matter,
no text was incorporated into the final version of the TRIPS Agreement.
49. As the above discussion indicates, the implications of the differences in national laws
determining the original author and treating transfers of right have been discussed already in relationto the traditional forms of circulating protected materials.  However, the fact that a single act of
putting a protected work on the Internet makes it available simultaneously in all jurisdictions
throughout the world may increase the potential implications of such differences.  In this regard, a
question that is being discussed is whether the existing rules of public and private international law
concerning the choice of law in respect of the init ial ownership of copyright and its transfer provide a
sufficient basis for resolving issues related to the use of works on global electronic networks, or
whether additional clarifications are needed.
26
                                                     
24 Article 15 of the Berne Convention contains additional rules on cinematographic works, anonymous
and pseudonymous works, and certain unpublished works.
25 Article 14 bis contains additional provisions on the rights of certain contributors.
26 These issues were addressed recently at a meeting of the Group of Consultants organized under the
WIPO programme on Intellectual Property Rights Beyond Territoriality discussed in paragraph 89 below.IP/C/W/128
Page 13
Protected subject-matter
50. As was noted above, digital technology has led to the emergence of new types of works,
notably computer programs and databases.  Given that they are usually made available in digital form,
they are well suited to being traded over digital networks.  The expression "literary and artistic works"
is defined in Article 2 of the Berne Convention  as incorporated into the TRIPS Agreement to include
"every production in the literary, scientific and artistic domain, whatever may be the mode or form of
its expression".27  Article 10.1  of the TRIPS Agreement confirms that computer programs, whether in
source or object code, must be protected as literary works, and Article 10.2  recognizes that copyright
protection covers databases and other compilations of data or other material, which by reason of the
selection or arrangement of their contents constitute intellectual creations.
51. Articles 4 and 5 of the WCT contain correspond ing provisions concerning computer programs
and databases.28  In the course of the preparation of the Diplomatic Conference that adopted the WCT,
it was discussed whether there was a need to supplement copyright protection of databases by
providing additional protection to economically valuable elements of databases that require the
investment of considerable human, technical and financial resources but may not benefit from
copyright protection.  While the Conference did not take any action on the draft treaty on this matter
submitted for its consideration29, the delegations participating in the Conference recognized that
databases are a vital element in the development of a global information infrastructure, and expressed
their interest in examining further the possible implic ations and benefits of such additional protection
at the international level.30  This examination is under way under the auspices of WIPO.31
Limitations
52. A number of the provisions of the Berne Convention incorporated into the TRIPS Agreement
allow Members to provide, in their national laws, limitations and exceptions to authors' rights.
Article 13  of the TRIPS Agreement provides that Members must confine limitations or exceptions to
exclusive rights to certain special cases which do not conflict with a normal exploitation of the work
and do not unreasonably prejudice the legitimate interests of the right holder.  Article 14.6  allows
Members to provide for conditions, limitations, exceptions and reservations in relation to the rights ofperformers, producers of phonograms and broadcasting organizations to the extent permitted by the
Rome Convention.  In the digital network environmen t, the question has been raised as to whether
adjustments may be needed to existing limitations taking into account the special nature of digital
reproduction and communications technology consistently with the criteria contained in Article 13 of
the TRIPS Agreement.
32
                                                     
27 In addition, the Article contains an open-ended list of examples of different types of works.
28 The Conference adopted Agreed Statements con cerning these two provisions according to which
they are "on a par with the relevant provisions of the TRIPS Agreement".
29 See the Basic Proposal for the Substantive Provisions of the Treaty on Intellectual Property in
Respect of Databases to be considered by the Diplomatic Conference (WIPO document CRNR/DC/6), which
provided the maker of a database the right to authorize or prohibit the extraction or utilization of all or a
substantial part of the contents of a database (see draft Articles 2 and 3 of the Proposal).
30 See the Recommendation concerning Databases, adopted by the Diplomatic Conference on
20 December 1996 (WIPO document CRNR/DC/100).
31 See section VII of this note.
32 Article 10 of the WCT on limitations and exceptions contains provisions similar to Article 13 of the
TRIPS Agreement.  The Conference adopted an Agreed Statement, which provides that "it is understood that the
provisions of Article 10 permit Contracting Parties to ca rry forward and appropriately extend into the digital
environment limitations and exceptions in their national laws which have been cons idered acceptable under the
Berne Convention. Similarly, these provisions should be understood to permit Contracting Parties to devise newexceptions and limitations that are appropriate in the digi tal network environment".  It was also agreed that thisIP/C/W/128
Page 14
Collective management
53. Electronic commerce of works and other protected subject-matter creates new challenges and
provides new opportunities for the ways rights clearance is organized.  An issue that has been
discussed in this context concerns the role of collective management of copyright and related rights.
A number of rights provided under the TRIPS Agreement and other treaties on copyright or relatedrights are frequently exercised through collective management organizations on behalf of right
holders, in particular in situations where the use involves vast numbers of works, right holders and
users, or where the scope of a right is reduced to a right of remuneration.  On the one hand, digital
networks make new forms of exploitation of vast numbers of works and other protected subject-
matter possible in a way that may call for increased cooperation among the right holders in managing
their rights.  Also users may desire simple ways to clear rights in large repertoires of works.  On the
other hand, the same technology may make individual licensing and distribution of revenue feasible insituations where until now collective arrangements have been necessary.  New technology may also
provide new options for right holders, such as the use of rights clearance centres that provide users
with a single point to clear rights, and at the same time allow right holders to set prices and other
conditions for the use of their works or other material individually.  Rights clearance may also be
combined with the actual delivery of protected content to the users.  Such new services may befacilitated by the use of electronic rights management information, which is discussed in paragraph 76
below.
(b) Trademarks
54. The protection of trademarks and other distinctive signs aims to stimulate and ensure fair
competition between producers and to protect consumer s by enabling them to make informed choices
between various goods and services.  In electronic commerce, trademarks and other distinctive signs
are essential for suppliers of goods and services in establishing their presence on the global network.
For consumers who buy products and services at a distance, it may be increasingly necessary to rely
on the reputation attached to trademarks and other distinctive signs, as they do not have an
opportunity to establish a personal contact with the seller of those products, or to inspect the productsand services before buying them.
55. Article 15.1  of the TRIPS Agreement provides that any sign, or any combination of signs,
capable of distinguishing the goods and services of one undertaking from those of other undertakings,
must be capable of constituting a trademark.  In order to obtain protection, a company generally files
for the registration of a trademark in each country in which it operates.
33  Registration is made in
respect of specified goods or services.
56. Members may make registrability depend on use ( Article 15.2 ), and require use to maintain
registration ( Article 19 ).  The question that may arise as regards the application of these provisions is
under what conditions does the use of a trademark on the Internet satisfy such requirements, and when
so, in which countries.
57. The TRIPS Agreement requires that the owner of a registered trademark have an exclusive
right to prevent others from using in the course of trade identical or similar signs for goods or serviceswhich are identical or similar to those in respect of which the trademark is registered, if such use
would result in a likelihood of confusion ( Article 16.1 ).  In this respect, the question that has arisen is
                                                                                                                                                                    
statement is applicable mutatis mutandis  to Article 16 of the WPPT, which contains similar provisions in respect
of the rights of performers and producers of phonograms.
33 Certain countries have a common system for the protection of trademarks or a common procedure for
the filing and registration of trademarks.  The Madrid Agreement concerning the International Registration ofMarks and the Protocol thereto provide for the international application of registration of trademarks at theInternational Bureau of WIPO.IP/C/W/128
Page 15
under what conditions and in which jurisdiction(s) might the use of a sign on the Internet constitute an
infringement of a registered trademark, and whether the current territorially based system of
registration of trademarks is sufficient for the emerging borderless electronic marketplace.  Identical
or similar signs registered as trademarks for identical goods or services may be owned by different
persons in different countries;  thus, even in respect of identical goods or services, the use of suchtrademarks on the Internet by one or more of the right owners may lead to conflicts.
58. Article 6bis of the Paris Convention  as incorporated into the TRIPS Agreement
34 and
paragraphs 2 and 3 of Article 16  of the TRIPS Agreement contain additional obligations in respect of
well-known marks:  the registration of a mark must be refused or cancelled, and its use must be
prohibited, if it conflicts with a well-known mark.  In determining whether a trademark is well-
known, Members must take account of the knowledge of the trademark in the relevant sector of the
public, including knowledge in the Member concerned which has been obtained as a result of thepromotion of the trademark.  In addition to the question of what constitutes use of a trademark for the
purposes of these provisions, questions may arise in respect of determining when and in which
jurisdiction(s) a trademark is considered well-known, e.g. as a result of promotion of a trademark on
the Internet.
59. Over time, case law is likely to develop concerning the above-mentioned issues.  The
question that has arisen is whether the existing national and international norms are adequate to
address these issues in a consistent manner, or whether adaptations to the protection of trademarks are
called for at the national and/or international level.
35
60. A specific issue that has received much attention concerns the relationship between
trademarks and Internet domain names.36  Some of the problems stem from the fact that under each
top-level domain name there can be only one of each particular second-level domain name, which is
usually allocated on a first-come, first-served basis within each top-level domain name.  On the other
hand, the same trademarks may co-exist with different owners in different categories of products or
services, and in different territories.  In addition, there have been problems such as "warehousing" of
second-level domain names corresponding to well-known trademarks for the purpose of selling themto trademark owners (also referred to as "cybersquatting").  At the same time, domain names have
acquired importance as business identifiers, and easily memorable domain names have themselves
become commercially valuable assets, akin to intellectual property.  One of the questions that has
arisen is under what circumstances and under which jurisdiction(s) the use of a domain name that is
identical or similar to a trademark may constitute a trademark infringement, and what remedies should
                                                     
34 Article 2 of the TRIPS Agreement provides that, in respect of Parts II, III and IV of the Agreement,
Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).
35 Information on the work of the WIPO Standing Committee on the Law of Trademarks, Industrial
Designs and Geographical Indications concerning the issues arising from the use of trademarks on the Internetcan be found in paragraph 85 below.
36 Domain names are part of the Internet addressing system, which consists of two elements.  Each
computer has its Internet Protocol address, a numeric id entifier that looks very much like a telephone number.
These numeric identifiers are paired with domain names, user-friendly substitutes for numeric identifiers.  Adomain name typed into a computer is automatically c onverted into the corresponding numeric identifier.  For
example, the WTO's website can be found at http://www.wto.org.  The domain name must have at least twoparts: a top-level domain name (TLD), in this case ".org", and a second-level domain name (SLD), in thisexample "wto".  Anyone from any country can register in the main generic TLDs (gTLDs), currently .com, .org,
and .net.  The most popular of them is .com, which is reserved for commercial entities.  Four other gTLDs are
reserved for entities meeting certain criteria.  Two-letter country code TLDs (ccTLDs), which use the ISO 3166country codes (e.g. ".ch" for Switzerland), are usually reserved for entities in a given country, even though someof them do not contain restrictions on entities who may register in them.  Functionally, domain names registeredin gTLDs and ccTLDs provide the same connectivity.IP/C/W/128
Page 16
be available for the trademark holder.37  Conflicts between trademarks and domain names have
brought to the fore also the more general question, not limited to intellectual property, of how best to
develop the domain name system.38
(c) Other intellectual property rights
61. While paragraph 4.1 of the Work Programme refers specifically to the protection and
enforcement of copyright and related rights and trademarks, it should be borne in mind that similar
issues as discussed above may arise, even though not to the same degree, also in respect of other
intellectual property rights, when subject-matter protect ed by these rights is traded over or otherwise
used on the Internet.
62. The questions that were discussed above in the context of trademarks may in certain
situations be relevant for the protection of other distinctive signs.  As regards geographical
indications , the TRIPS Agreement requires that interested parties must have the legal means to
prevent the use of indications which mislead the public as to the geographical origin of the good, and
use which constitutes an act of unfair competition ( Article 22 ).  Additional protection is provided for
geographical indications for wines and spirits ( Article 23 ).  Also here the question may arise under
what conditions and in which jurisdiction(s) does the use of a geographical indication on the Internet
constitute an infringement.  Article 24  contains a number of exceptions to the protection of
geographical indications.  For example, a Member is not obliged to bring a geographical indication
under protection where it has become in its territory a generic term for describing the product in
question (paragraph 6).  Measures to implement the provisions on geographical indications shall not
prejudice prior trademark rights that have been acquired in good faith (paragraph 5).  Under certain
circumstances, continued use of a geographical indication for wines or spirits may be allowed on ascale and nature as before (paragraph 4).  Questions may arise on whether and to what extent such
territorially based exceptions may be used to justify the use of a geographical indication on global
electronic communications networks, such as the Internet.
63. Some of the issues related to the differences in national legal systems concerning the
standards of protection and ownership of rights may in certain situations have implications whensubject-matter protected by other intellectual property rights is traded over a network.  For example,
industrial designs  can be exchanged that way, although in examining the possible relationship of such
transactions to the provisions of the TRIPS Agreement one would need to consider to what extent the
TRIPS minimum rights under Article 26  would come into play when an industrial design which is not
embodied in an article is transmitted over the Internet.  A Member may choose to meet its obligations
under Article 25.2  in respect of textile designs through its copyright law, or otherwise to apply its
copyright law to works of applied art and industrial designs and models ( Article 2(7) of the Berne
Convention  as incorporated into the TRIPS Agreement).  In that case, the use of designs protected by
copyright on the Internet raises questions similar to those discussed above in respect of other
                                                     
37 WIPO has undertaken an international process to develop recommendations concerning the
intellectual property issues associated with Internet domain names, including dispute resolution.  This process is
discussed in paragraph 86 below.
38 The United States Department of Commerce published on 5 June 1998 a Statement of Policy on
"Management of Internet Names and Addresses" ("White Paper"), which calls for the establishment of a not-for-profit entity for the technical management of the domain name system (available at the US NationalTelecommunications and Information Administration website at http://www.ntia.doc.gov).  Since thepublication of the White Paper, a new non-profit corporation, the Internet Corporation for Assigned Names and
Numbers (ICANN) was formed (see the ICANN's website at http://www.icann.org).  The US Department of
Commerce and the ICANN agreed on 25 November 1998 to jointly develop the mechanisms and proceduresnecessary to transition management responsibility for DNS functions to a private-sector not-for-profit entity (theMemorandum of Understanding between the US Department of Commerce and the ICANN is available at theNTIA website at http://www.ntia.doc.gov).IP/C/W/128
Page 17
categories of works.  Also the national and mo st-favoured-nation treatment obligations may have
implications in such situations.
64. In the area of patents , similar issues may arise to the extent that acts that infringe the rights
conferred to the patent owner under Article 28  can take place over an electronic network.  A specific
question that has arisen in the area of patents concerns the disclosure of technical information on theInternet and its impact on patentability under Article 27.1 .
39  A right holder of a layout-design of an
integrated circuit  must have an exclusive right to authorize at least the reproduction and distribution
for commercial purposes of such a design ( Article 6(1) of the IPIC Treaty  as incorporated into the
TRIPS Agreement, and Article 36  of the TRIPS Agreement).  These provisions may have legal
implications when layout-designs are transmitted over digital networks.  The electronic network
environment poses new challenges for safeguarding trade secrets .  The provisions of Article 39.2
would appear to apply to the new possible ways of acquiring or otherwise infringing trade secrets insuch an environment.
65. As was mentioned above, the Work Programme on Electronic Commerce includes the
consideration of issues relating to the development of the infrastructure for electronic commerce.  The
protection of intellectual property rights, in particular  patents, as well as copyright, layout-designs of
integrated circuits, and undisclosed information plays an important role in facilitating the generationof new technology used for building the physical infrastructure for electronic networks and the
development of software for such an infrastructure.  The role of patents and other intellectual property
rights in the generation of new technologies, and access to and transfer of technology is discussed
above in the third section of this note.
V. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
66. The provisions on enforcement of intellectual property rights are contained in Part III  of the
Agreement.  Article 41.1  requires Members to ensure that enforcement procedures as specified in this
Part are available under their law so as to permit effective action against any act of infringement of
intellectual property rights covered by the Agreement, including expeditious remedies to prevent
infringements and remedies which constitute a deterrent to further infringements.  The provisions onenforcement are not specific to infringements in any particular technological environment.
Consequently, nothing in Part III suggests that th ese provisions would not be applicable to the new
forms of intellectual property infringements in the digital network environment covered by the
Agreement, although certain provisions, in particular  those on special requirements related to border
measures, do not appear to be capable of applicati on to on-line distribution.  Therefore, the competent
authorities will need the appropriate powers, as well as the required expertise, to enforce IPRs in this
environment.  The speed and geographical scope of damage that illegal activities can cause, forexample to holders of copyrights and related rights, emphasize the need for expeditious remedies,
including injunctions ordered as part of a final decision or on an interim basis, to prevent
infringements from occurring.
67. On the one hand, the use of new information and communications technologies may be
helpful in modernizing judicial procedures consistent ly with the objectives referred to in Article 41, in
particular by making them more rapid and less complicated and costly.  Communications networks
could be used to reduce some procedural burdens on parties, such as those related to mandatory
personal appearances referred to in Article 42 .  On the other hand, these technologies may also create
new challenges for the application of these procedures.  In the work of the WTO, attention has been
drawn to the application of the provisions on gathering evidence, in particular to those of Article 50.2 ,
on infringements involving digital reproduction, given the ease and speed with which evidence can be
                                                     
39 Information on the work of the WIPO Standing Committee on the Law of Patents on this issue can
be found in paragraph 88 below.IP/C/W/128
Page 18
destroyed.  It is possible that the digital network environment may give rise to similar difficulties in
gathering evidence on a possible infringement.
68. Intellectual property has traditionally been regulated, administered and enforced on a
territorial basis.  The "borderless" nature of the Internet may raise difficulties in determining the
appropriate jurisdiction  in respect of activities carried out on a global network.40  On the whole the
TRIPS Agreement is silent on this issue, although it appears to have been drafted on the presumption
that the right to take action should be available in the jurisdiction where the infringing act takes place.
Articles 44.1 and 50.1  of the Agreement contain explicit references to this effect.
69. As regards the choice of law applicable to copyright infringements, guidance is given in
Article 5(2) of the Berne Convention  as incorporated into the TRIPS Agreement, which provides that
"the extent of protection, as well as the means of redress afforded to the author to protect his rights,
shall be governed exclusively by the laws of the country where protection is claimed".  Acharacteristic feature of the Internet is that, once a work is put on the network in one country, it can be
accessed anywhere in the world.  This has led to discussions on the choice of law to be applied to a
work posted on a website.  Under traditional copyright concepts applied to the exploitation of works
embodied in hard copies, the applicable law would appe ar to be that of the jurisdiction in which an act
falling under copyright takes place.  However, the problem that has been seen in this approach whenapplied to the Internet is that posting a work on a website makes that work available worldwide,
potentially giving rise to the application of the laws of all jurisdictions in which the work can be
accessed and liability under them.  It has been argued that it would be preferable to apply only one
law to such exploitation of a work, the law of the jurisdiction from which the transmission originates.
On the other hand, this approach has been seen as having an obvious limitation in that the relevantacts leading to worldwide exploitation of a work could be governed by the law of a country with low
standards of protection.  In recent discussions, attempts have been made to strike a balance between
these considerations.
41
70. Similar questions may arise in respect of trademarks, for example when an owner of a
trademark uses his or her trademark legally on a website, which can be accessed from another countrywhere an identical trademark has been registered by another person for identical goods.
                                                     
40 This is a general question that is not limited to the protection and enforcement of intellectual
property, but concerns also other areas such as defamation, obscenity, gambling and other contents and activities
considered illegal in one or more jurisdictions, consumer protection, and validity and enforceablity of
commercial contracts and obligations.
41 The issue of choice of law applicable to the communication to the public by satellite broadcasting
was addressed in the preparatory work that led to the adoption of the WCT in December 1996.  In itsmemorandum for the first session of the Committee of Experts on a Possible Protocol to the Berne Convention,
the International Bureau of WIPO proposed that the question of which national law was applicable to direct
broadcasting by satellite should be settled in favour of the law of the country from which a signal was emittedtowards the satellite.  In keeping with, inter alia , the rule in Article 5(2) of the Berne Convention, it was also
proposed that the law of the country or countries wher e the satellite signal was normally receivable should be
applied in two specific cases:  first, where the law of the country of emission did not protect the right ofbroadcasting or where that law allowed broadcasting under non-voluntary licences, and, second, where the right
of broadcasting was held by different persons in the country of emission and the countries where the signal was
normally receivable (paragraph 142 of WIPO documen t BCP/CE/I/3, dated 8 October 1991).  The Committee
had mixed reactions to this proposal, and a great majority favoured application, without qualification, of the lawof the country from which the signal was emitted towards the satellite (paragraph 89 of a memorandum preparedby the International Bureau for the fourth session of the said Committee contained in document BCP/CE/IV/2,dated 5 October 1994).  At the fifth session of the Committee, held in September 1995, the Chairman of the
Committee noted that the question of applicable law was becoming a more general issue and did not concern
only satellite broadcasting any more.  He was of the opinion that the issue would be taken up again later in abroader context, perhaps in the context of the "digital agenda".  The Committee agreed not to pursue the matter
further at that point (paragraph 84 of the report of the fifth session contained in document BCP/CE/V/9-INR/CE/IV/8).IP/C/W/128
Page 19
71. A related question is what remedies should be available if subject-matter posted on a website
is considered to infringe intellectual property ri ghts, in particular when the transmission originates
from another jurisdiction.  For example, should injunctive relief be available in respect of a
transmission that originates from another jurisdiction and, if so, would such an injunction be enforced
by the authorities of that country?  Or should damages be calculated on the basis of injury in thecountry where the action against the infringement was taken or on a worldwide basis?
72. Even though questions concerning jurisdiction and related matters have already arisen in the
context of traditional ways of exploiting intellectual property, such questions are likely to become
more common given the global reach of the Internet.  The question appears to be whether the existing
rules of public and private international law, in cluding international treaties relating to mutual
recognition and enforcement of judgements, adequately address these types of situations, or whether
additional clarifications are needed.
42
73. An issue that has been widely discussed is the liability of service providers  in respect of the
transmission and storage of material initiated by others.  While this issue concerns any potentially
illegal activities that may occur on the digital netw ork environment, it has been much debated in the
area of copyright and related rights.  In the course of a normal process of transmission of protected
content, a number of temporary reproductions of that content may be produced by service providers.These intermediaries may have only limited knowledge about the information they transmit or store,
as well as limited ability to control or monitor such information.  The question that has arisen is to
what extent service providers, who act as intermed iaries transmitting or storing potentially infringing
content, are or should be held liable for such c ontent and, if so, what remedies should be available.
43
74. In the context of the provisions of the TRIPS Agreement, this question appears to have two
main dimensions.  The first is what activities of service providers might be covered by the substantive
standards of protection under the Agreement.  In this respect, reference is made to the discussion
above concerning the standards of protection.  To the extent that any of such activities are covered by
these standards, taking into account the availability of any exceptions, it would then be a matter for an
examination of what enforcement procedures and remedies might be relevant in respect of anypotentially infringing activities.  Possible remedies that have been referred to in this context include
injunctions as provided under Article 44  and damages as provided under Article 45 .  These provisions
require Members to provide judicial authorities with the authority to order injunctions or damages, but
they leave Members free to exclude from the scope of  such authority acts of innocent infringement,
i.e. cases where the infringer acted without knowing or having reasonable grounds to know that he or
she was engaged in infringing activity.
44
75. While digital reproduction and communication technologies create new risks of piracy, they
also provide possible technical solutions to many problems faced by holders of copyright and related
rights.  Technological measures  that can be used to facilitate the protection of copyright and related
rights include copy protection (limiting the number of copies that can be made from an original
reproduction), encryption (controlling access to on-line, satellite or other services) and watermarking
                                                     
42 These issues are being addressed under the WIPO programme on Intellectual Property Rights
Beyond Territoriality discussed in paragraph 89 below.  Specific issues relating to the interface between the
global domain name system and territorially administered  intellectual property rights systems are addressed in
the Interim Report of the WIPO Internet Domain Name Process referred to in paragraph 86 below.
43 The issue of liability of intermediaries has been addressed in some recent initiatives at the national
level.  For example, the United States Digital Millennium Copyright Act, signed into law on 28 October 1998,limits the liability of service providers, under specified conditions, to certain forms of injunctive relief in respect
of certain common activities involving the transmission or storage of material initiated by a person other than
the service provider.  The conditions include that the service provider complies with a "notice and take down"procedure that allows the right holder to notify it of allegedly infringing material residing on its system andrequire it to take down or disable access to such material after receiving such notice.
44 Articles 44.1 and 45.1 of the Agreement.IP/C/W/128
Page 20
(indicating the original source of material, which can be used in tracking down piracy).  The effective
operation of such solutions may require that legislators provide adequate legal protection and effective
legal remedies against the circumvention of the technological measures that are used by the holders of
copyright and related rights to protect their rights.  Given that this issue was not yet widely discussed
at the time of the negotiations that led to the c onclusion of the Agreement, it was not raised in the
negotiations and no specific provisions concerning technological measures were taken into the TRIPS
Agreement.  However, the more recent WCT and WPPT recognize the role that technological
measures used by right holders have in facilitating effective protection.  The provisions of these
treaties that are designed to ensure the effectiveness of such measures are discussed in paragraph 83
of section VII of this note.
76. Electronic rights management information  can be attached by holders of copyright and related
rights to digital copies of works and other material.  Such information may e.g. identify the work, itsauthors, other right holders, and the terms and conditions of use of the work.  Such information can be
utilized in electronic copyright management systems operated by right holders or by third parties such
as collective management organizations to improve access to licences and protected materials, which
in turn facilitates compliance with intellectual property norms.  Electronic rights management
information and systems may enable collective management organizations to improve the servicesthey provide both to right holders and users of protected materials, and make individual licensing and
distribution of revenue feasible in areas where the vast numbers of works, right holders and users have
until now made collective arrangements necessary.  However, in order to ensure the proper
functioning of copyright management systems, elect ronic rights management information may need to
be protected against unauthorized removal or alteration.  While the TRIPS Agreement does notaddress the issue of rights management information, the WCT and WPPT contain provisions intended
to ensure the integrity of such information.  These provisions are discussed below in paragraph 83 of
section VII of this note.
45
77. WTO Members have agreed to cooperate with each other with a view to eliminating
international trade in goods infringing intellectual property rights ( Article 69 ).  The global reach of the
Internet and other digital networks underlines the need for international cooperation in the area of
enforcement.  Experience in the fight against traditional forms of piracy and counterfeiting, and
increased cooperation between agencies responsible fo r enforcement, will help to prepare for action
against new forms of on-line piracy and counterfeiting.  Databases and digital networks can be used to
improve the efficiency of enforcement agencies, and they provide new means to detect pirated and
counterfeit goods and to rapidly exchange information between agencies responsible for enforcement
within a country and between agencies in different countries as well as with the private sector.46
VI. ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY RIGHTS
78. While the TRIPS Agreement does not deal in detail with procedural questions concerning
acquisition and maintenance of intellectual property rights, Part IV  of the Agreement contains some
general rules on these matters, the purpose of which is to ensure that unnecessary procedural
                                                     
45 See also information on WIPO's work on copyright, related rights and digital technology in
paragraph 90 below.
46 For example, the Customs Administrations of six member States of the European Union, together
with the European Commission and a number of industrial partners, are working towards implementing a"Multimedia System for Customs" (MUSYC) to assist the work of customs officers, providing them withautomated references and expertise when and where it is required.  The scope of the MUSYC projectencompasses the relationship between right holders and the customs administrations (including the provision of
multimedia information on products and known fakes), the detection of counterfeited goods at customs offices,
the exchange of valuable and timely information between administrations of different countries and theintegration of the MUSYC system in the operational procedures and information systems of the customsadministrations.  More information on the MUSYC project can be found athttp://www2.echo.lu/telematics/admin/musyc.html.IP/C/W/128
Page 21
difficulties in acquiring or maintaining intellectual property rights are not employed to impair the
protection required by the Agreement.  These rules allow Members to require, as a condition of the
acquisition or maintenance of rights related to trademarks, geographical indications, industrial
designs, patents and layout-designs, compliance with reasonable procedures and formalities
(Article 62.1 ).  Where the acquisition of an intellectual property right is subject to the right being
granted or registered, the procedures must permit the granting or registration of the right within a
reasonable period of time so as to avoid unwarranted curtailment of the period of protection
(Article 62.2 ).  Procedures concerning the acquisition or maintenance of intellectual property rights
and, where a Member's law provides for such procedures, administrative revocation and inter partes
procedures such as opposition, revocation and cancellation, must be governed by the general
principles concerning decisions and review set out in paragraphs 2 and 3 of Article 41 of the
Agreement ( Article 62.4 ) relating, inter alia , to speed and cost of procedures.
79. Information and communications technology can be used for achieving the objectives of
Part IV of the Agreement by improving the efficiency of intellectual property offices.  New
technologies allow, for example, electronic filing of patent applications and their electronic
processing.  Such modernization of the administration of intellectual property rights benefits the
clients of these offices in the form of better and faster services, including shorter periods in acquiringintellectual property rights.  As discussed in paragraph 24 above, communications networks are
increasingly used also to facilitate access to patent documents and other information stored in
intellectual property offices by persons interested in them.
47  Communications networks can also be
used to speed up and make more efficient private transactions involving licensing or acquirement of
intellectual property rights.
VII. RELEVANT ACTIVITIES OF WIPO AND OTHER INTERGOVERNMENTAL
ORGANIZATIONS
(a) WIPO
80. WIPO has a number of programmes and activities that concern electronic commerce.  The
Council for TRIPS was informed of these activities by a representative of WIPO at its meeting of
1 and 2 December 1998.48  WIPO is also making information on its activities relevant to electronic
commerce available on its website.49  The following review focuses on those activities of WIPO that
relate to the issues discussed above in this note.
81. As was noted above in paragraph 31, two important new treaties on copyright matters were
adopted under the auspices of WIPO in December 1996, namely the WIPO Copyright Treaty (WCT)
and the WIPO Performances and Phonograms Treaty (WPPT).50  The WIPO programme on the
                                                     
47 For example, the Japanese Patent Office has been promoting a Paperless Project since 1984 as a way
of dealing with the gigantic amount of data stored as information relating to applications and technicalinformation.  The Paperless System is designed to computerize operations from filing applications toexamination and distribution of patent information to the public.  In 1996, 67 per cent of applications were filed
on-line, 29 per cent on diskettes, and 4 per cent on paper.   For more information, see the Japanese Patent Office
website at http://www.jpo-miti.go.jp.  For information on WIPO's work on a global information network andintellectual property information services, see paragraph 91 below.
48 See paragraph 107 of the minutes of the meeting circulated in document IP/C/M/21.
49 A website supporting the organization and conduct of regional consultations and an international
conference on intellectual property and electronic commerce is currently under construction by WIPO, and can
be accessed at http://ecommerce.wipo.int.  A special website for the WIPO Internet Domain Name Process can
be found at http://wipo2.wipo.int.  These two websites can also be accessed through the WIPO main website athttp:///www.wipo.int by clicking "Electronic Commerce" or "Internet Domain Names", respectively.
50 The texts of the treaties can be accessed through WIPO's website on electronic commerce at
http://ecommerce.wipo.int, which also contains the documents of the Diplomatic Conference on CertainIP/C/W/128
Page 22
implementation of the WCT and WPPT  is directed at the promotion of the implementation of these
two treaties.  The treaties enter into force three months after 30 instruments of ratification or accession
by states have been deposited with the Director General of WIPO.51  These new instruments are self-
standing treaties, which build on the Berne and Rome Conventions and the TRIPS Agreement52, but
in some respects go further.  The implementation of these new treaties will facilitate the creation of asecure and predictable legal environment that will foster the development of electronic commerce
involving on-line distribution of materials protected by copyright and related rights.
82. The main improvements that relate to the use of works and phonograms on the Internet and
other interactive digital networks concern the right of communication, circumvention of technological
measures and integrity of rights management information.  Authors, performers and phonogram
producers enjoy an exclusive right of authorizing the communication or making available to the
public their protected material, by wire or wireless means, in such a way that members of the publicmay access it from a place and at a time individually chosen by them.  These rights cover, for
example, on-demand delivery of works over the Intern et (Article 8 of the WCT, and Articles 10 and
14 of the WPPT).
53
83. The treaties recognize the role that technological measures used by right holders have in
facilitating effective protection.  In order to ensure the effectiveness of such measures, contractingparties to the treaties must provide adequate legal protection and effective legal remedies against the
circumvention of effective technological measures that are used by authors, performers or producers
of phonograms in connection with the exercise of their rights, and that restrict acts, in respect of their
protected material, which are not authorized by the right holders concerned or permitted by law
(Article 11 of the WCT and Article 18 WPPT).  Individual licensing and collective management ofprotected materials can be facilitated by electronic rights management information that can be
attached to digital copies of works and other material.  The treaties require contracting parties to
provide adequate and effective legal remedies against any person, who, without authority, removes or
alters such information or distributes copies of pr otected material knowing that such information has
been removed or altered without authority, and knows or, with respect to civil remedies, hasreasonable grounds to know that it will induce, enable, facilitate or conceal an infringement of any
right covered by the treaties (Article 12 of the WCT and Article 19 of the WPPT).
84. The WPPT does not cover the rights of performers in the audiovisual fixations of their
performances.  The Diplomatic Conference of December 1996 adopted a resolution calling for further
preparatory work on a protocol to the WPPT concerning audiovisual performances.
54  The WIPO
programme on the protection of audiovisual performances  is aimed at the adoption of new
international norms concerning the rights of performers in respect of audiovisual performances.  Thisissue was latest discussed at the first session of the WIPO Standing Committee on Copyright and
Related Rights held from 2 to 10 November 1998. The Diplomatic Conference of December 1996
also adopted a recommendation on databases that recognized that databases are a vital element in the
development of a global information infrastructure, a nd expressed an interest in examining further the
                                                                                                                                                                    
Copyright and Neighbouring Rights Questions, held in Geneva from 2 to 20 December 1996, a list of signatories
and ratifications of the treaties, and other information on the treaties.
51 The treaties were open for signature until the end of 1996.  There are 51 signatories to the WCT and
50 signatories to the WPPT.  At present, six countrie s have ratified the WCT and four countries the WPPT.
52 For example, the WCT incorporates by reference the substantive obligations of the Paris Act 1971 of
the Berne Convention, and contains provisions on, inter alia , the scope of copyright protection, protection of
computer programs and compilations of data, and limitations and exceptions that follow closely thecorresponding provisions of the TRIPS Agreement.  The provision on the general obligations in the area of
enforcement follows the language of Article 41.1 of the TRIPS Agreement, but the WCT does not contain
detailed provisions in that area.
53 See also the discussion on the right of communication in paragraphs 43-45 above.
54 See the Resolution concerning Audiovisual Performances adopted by the Diplomatic Conference on
20 December 1996 (WIPO document CRNR/DC/99).IP/C/W/128
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possible implications and benefits of a sui generis  system of protection of databases at the
international level.55  The WIPO programme on the protection of databases  is concerned with the
possibility of protection of databases, at the international level, beyond the protection provided for
original databases by copyright.  This issue was also discussed at the first session of the Committee.
The third substantive issue discussed at the first session of the Committee concerned the protection ofbroadcasting organizations. The WIPO programme on the protection of the rights of broadcasting
organizations  is directed at the updating of international norms relating to the rights of broadcasting
organizations.
56  The Committee, at its second session scheduled for 4 to 11 May 1999, will continue
its work concerning the preparation of a protocol or a separate treaty on audiovisual performances, the
issue of harmonization of the protection of databases, and the preparation of a treaty on the protection
of the rights of broadcasting organizations.
85. The WIPO Standing Committee on the Law of Trademarks, Industrial Designs and
Geographical Indications is examining the issues arising from the use of trademarks on the Internet .
The Committee discussed these issues at its first session held from 13 to 17 July 1998, and decided
that they should be included on the agenda for its next session with highest priority.  In preparation for
that session, the International Bureau of WIPO would prepare a study, with the help of consultants, on
the following two questions, for discussion by  the Committee: (i) How can a relationship be
determined between a sign or mark that is used on the Internet and particular goods or services?  and
(ii) How can a relationship be determined between a sign or mark that is used on the Internet and a
particular country or territory?57
86. WIPO has undertaken an international process to develop recommendations concerning the
intellectual property issues associated with Internet domain names , including dispute resolution.  An
Interim Report on "The Management of Internet Names and Addresses: Intellectual Property Issues"
was published on 23 December 1998.58  The Interim Report contains draft recommendations which
have resulted from an ongoing process of international consultations.  All interested parties have been
invited to submit comments on the Interim Report and the draft recommendations contained therein.
WIPO's final recommendations will be reported to its member States and presented to the InternetCorporation for Assigned Names and Numbers (ICANN)
59 in a final report in March 1999.
87. The recommendations contained in the Interim Report are aimed at minimizing and resolving
domain name disputes which have arisen worldwide as a result of the tension between intellectual
property law, especially trademarks, and domain names.  The Interim Report makes recommendations
with respect to the following four topics:  (i) best  practices designed to minimize conflicts arising out
of domain name registrations;  (ii) the need for uniform dispute resolution procedures;  (iii) protection
for famous and well-known marks; and (iv) the impact of adding new top-level domains onintellectual property.
88. The WIPO Standing Committee on the Law of Patents is examining issues related to the
disclosure of technical information on the Internet and its impact on patentability.  The Committee
discussed the matter at its first session held from 15 to 19 June 1998, and decided that the
International Bureau should collect information fr om the existing literature on this subject for
presentation at the next session, and that this issue should be placed on the agenda for discussion at
                                                     
55 See the discussion in paragraph 51 above.
56 For the Committee's recommendations on the future work on these three issues, see paragraph 204 of
the report of the meeting circulated in WIPO document SCCR/1/9.
57 Paragraph 27 of the report of the meeting circulated in WIPO document SCT/1/6.
58 The Interim Report is available at WIPO's Internet Domain Name Process website at
http://wipo2.wipo.int.
59 For information on the ICANN, see footnote 38 above.IP/C/W/128
Page 24
that session, in particular with respect to whether the issue should be broadened to include related
issues such as infringement of patents through use of the Internet.60
89. The challenges to the intellectual property system that are raised by the global nature of
digital networks are addressed under the programme on intellectual property rights beyond
territoriality .  A Group of Consultants on the Private In ternational Law Aspects of the Protection of
Works and Objects of Related Rights Transmitted Through Global Digital Networks met in Geneva
from 16 to 18 December 1998.  The presentations made at this meeting and a summary of the
discussions are being made available by the International Bureau of WIPO.
90. The programme on copyright, related rights and digital technology  covers a variety of topics
relating to the impact of digital technology on copyright and related rights, including electronic
management systems and the management of copyright and related rights in the digital environment.
The first session of an Advisory Committee on Management of Copyright and Related Rights inGlobal Information Networks was held in Geneva on 14 and 15 December 1998. The presentations
made at this meeting and a summary of the discussions are being made available by the International
Bureau.
91. The programme on global information network and intell ectual property information services
is broadly concerned with infrastructure for the electronic delivery of intellectual property services.WIPO is preparing to establish a worldwide network infrastructure that makes available, through
public networks, intellectual property information to the public and also provides sufficient
telecommunication capacities and security mechanisms to allow intellectual property offices to access
information useful for grant and registration activities.   In this context, WIPO intends to support the
deployment of information technology infrastructure in intellectual property offices, with special
support to offices in developing countries, assisting them in developing the necessary infrastructure
and in training for use of the system.
92. WIPO is preparing three regional consultation meetings on intellectual property and
electronic commerce, which are planned to take pl ace in Africa, Asia and Latin America in 1999, in
order to generate greater awareness of the ways in which electronic commerce is affecting intellectualproperty and to assist in formulating a timely and swift response to those issues.  These meetings are
to be followed by a major international conference in Geneva from 14 to 16 September 1999.  The
Conference will address the impact of electronic commerce on intellectual property and will include
plenary sessions on general developments in electronic commerce, the technology supporting it, the
business opportunities created by these activities, and their implications for intellectual property.
There will also be workshops on intellectual property issues in the affected industries, such as the
music publishing and film industries. The various areas of WIPO's work programme associated withelectronic commerce, such as Internet domain names, the WCT and the WPPT, work on a protocol to
the WPPT on audiovisual works, the use of trademarks on the Internet and the use of electronic
commerce tools in the delivery of intellectual property services will also be discussed.  An issues
paper will be published in order to define more clearly the impact of electronic commerce on the
intellectual property system.  The paper will seek to identify and examine the major policy challengesposed to the intellectual property system by electronic commerce and the ways in which the WIPO
programme is addressing, or could in the future address, those challenges.
(b) Other intergovernmental organizations
93. A number of other intergovernmental organizations have activities related to electronic
commerce.  The Secretariat of the Organization for Economic Co-operation and Development(OECD) prepared recently a comprehensive "Report on International and Regional Bodies:  Activities
and Initiatives in Electronic Commerce" for the OECD Ministerial Conference "A Borderless World:
                                                     
60 Paragraph 13 of the Summary by the Chair, contained in WIPO document SCP/1/6.IP/C/W/128
Page 25
Realising the Potential of Global Electronic Commerce", held in Ottawa from 7 to 9 October.61  The
report sets out the key contributions to the current framework for global electronic commerce
(instruments, agreements, reports, etc.), and outlines current and possible future work programmes of
the international and regional bodies concerned.  The OECD itself is addressing issues related to
electronic commerce through several of its committees and working parties.  Issues covered includeamong others taxation, consumer and privacy protection, cryptography, authentication and
certification of transactions, as well as access and infrastructure questions.
94. Many of the activities referred to in the above-mentioned documents may be of interest also
in respect of trade in goods and services protected by intellectual property rights, such as activities
related to commercial law.  However, in general these activities do not address specifically the
protection and enforcement of intellectual property rights.  The above-mentioned OECD survey,
which is based on the contributions of the organizations concerned, mentions, inter alia , the following
activities that concern intellectual property.  The International Labour Organization (ILO) monitors
the impact of digitalization on the protection of the rights, performances, works and remuneration of
performers and journalists.  The United Nations Educational, Scientific and Cultural Organization
(UNESCO) organizes international and regional m eetings on the protection of intellectual property
rights in the digital environment.  The World Bank is hosting TechNet seminars and discussiongroups on promoting and strengthening IPR protection in developing countries.  The United Nations
Conference on Trade and Development (UNCTAD) wi ll work, in cooperation with WIPO, to develop
awareness and understanding of IP issues in developing countries.
__________
                                                     
61 OECD document SG/EC(98)10/FINAL.  This and other documents from the OECD Ministerial
Conference can be found at http://www.oecd.org/dsti/sti/it/ec.