RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/233
7 December 2000
(00-5329)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
ELECTRONIC COMMERCE WORK PROGRAMME
Submission from Australia
The following communication, dated 27 November 2000, has been received from the
Permanent Mission of Australia with the request that it be circulated to Members.
_______________
1. Based on the interventions made by Australia at the TRIPS Council meeting on
21-22 April 1999 and 20-21 September 2000, recorded in IP/C/M/23  and IP/C/M/28 respectively, and
an earlier communication from Australia (IP/C/ W/144, 6 July 1999), this paper comments on the
range of intellectual property issues raised by the WTO electronic commerce work programme, tofacilitate further discussion of these issues at the TRIPS Council's November 2000 meeting.
2. The following proposals are intended to be consistent with, and to support, the approach
outlined in the TRIPS Council's July 1999 Progress Report to the General Council (IP/C/18) and the
recent communication from the European Communities and their member States (IP/C/W/224,
17 November 2000), while building further on that foundation in some respects.
I. OVERVIEW OF INTELLECTUAL PROPERTY AND THE ELECTRONIC
COMMERCE WORK PROGRAMME
3. The most striking development in the field of intellectual property since the conclusion of the
TRIPS Agreement has been the rapid increase in the use of digital technology and digital-based
telecommunications technology in the commercial domain.  The harmonized international intellectual
property system fostered by the advent of the TRIPS Agreement, and the general trend towards
coordinated protection of intellectual property rights, have themselves contributed significantly to thegrowth of electronic commerce, and the fresh trad e opportunities that electronic commerce now offers
to small and medium enterprises in all economies.  For example, the underlying principles of national
treatment and MFN treatment, embodied in the TRI PS Agreement, lend themselves directly to the
digital environment, and have already clarified and facilitated a supportive legal framework for the
growth of electronic commerce.  Equally, the well-established principle under the TRIPS Agreementthat there should be limited exceptions to intellectual property rights to promote such objectives as
research and education apply to the digital environm ent, giving public policymakers an important new
tool in promoting social and economic development.  The WTO work programme on electronic
commerce should recognize the value of the existing TRIPS-based intellectual property system in
supporting the widespread growth and sharing of the benefits of electronic commerce, and the valueof clarifying that TRIPS standards apply in the digital environment.IP/C/W/233
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4. The Secretariat's factual background paper on TRIPS-related electronic commerce issues1
serves as an excellent basis on which to advance substantive discussions in the remaining time-frame
of the work programme.  It provides a thorough, practical analysis of the application of current
commitments, and facilitates a clear assessment by Members of exactly how and where the current
rules apply, and where the gaps and limits to those rules arise.
5. The work programme provides, at the least, an opportunity for Members to articulate a
general common position on the operation of certain TRIPS provisions in the digital environment.  A
first practical step would simply be to confirm the applicability of the existing rules to the digital
environment, recognizing that the increasing utilisation of electronic commerce technologies does not
require the creation of a wholly new, parallel set of intellectual property norms and principles.  This,
essentially, is the principle of "technology neutrality " that has been the subject of some debate in the
past:  the emergence of a new technology does not mean that existing rules and principles do notapply.  For example, commercial use of a trademark or geographical indication in a misleading way
is, in principle, an infringement of intellectual property rights, whether the mark or indication is used
in print, on a label, on a signboard, on broadcast media, or on a website.
6. The work programme is also an opportunity to consider what clarification of specific TRIPS
provisions may be necessary in order to encourage their consistent application in the digitalenvironment.  It may also consider what adaptations of or extensions to existing provisions may be
desirable, consistent with the objectives of the TRIPS Agreement and other international standards,
and the possible procedures for progressing the development of TRIPS standards.
7. The following comments draw on and follow the general format of the Secretariat's paper,
highlighting some possible outcomes for the work programme which should strengthen theapplication of TRIPS provisions in the digital environment.  To provide a focus for discussions, we
have included a number of indicative proposals for specific work programme outcomes.
II. GENERAL APPLICABILITY TO ELECTRONIC COMMERCE OF
INTELLECTUAL PROPERTY PRINCIPLES AND TRIPS OBJECTIVES AND
PROVISIONS
8. Australia supports the Secretariat's comments regarding the applicability to electronic
commerce of the traditional objectives of the intellectual property system, and the relevance of TRIPS
provisions in the digital network environment.  This is in line with the work programme's general
premise that electronic commerce is simply another means of transacting commerce: at the level of
principle, it is no different from other forms of inte rnational commerce.  The corollary to this general
principle is that all WTO commitments relating to trade, including rights and obligations under the
TRIPS Agreement, apply regardless of whether trade is conducted electronically or otherwise.
9. Consideration of the implications of electronic commerce would be more beneficially focused
on clarifying and exchanging experience on the application of existing technology neutral norms to
the digital environment, rather than focusing on an assumption that there are already "shortcomings"
in the TRIPS Agreement.  As noted in a communication from Australia to the September 2000 TRIPS
Council meeting (IP/C/W/210) about the review of the implementation of the Agreement underArticle 71.1, "existing TRIPS standards can apply to certain activities in the digital environment, such
as unauthorized reproduction of copyright works on the Internet or the conduct of electronic
commerce under an unauthorized trademark or geographical indication".
10. The Council for TRIPS could emphasize the fundamental importance of the WTO principle of
non-discrimination, in its particular application in preserving the technology neutrality of rules, and itsrole as a ready-made facilitator of electronic commerce.  Similarly, it could note how the established
                                                     
1 IP/C/W/128.IP/C/W/233
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principles of national treatment and most-favoured-nation facilitate the development of commerce in a
digital environment.
11. From the perspective of both intellectual property and other WTO rules, non-discrimination
establishes the basic framework by which to ensure that borderless commercial exchanges are
conducted fairly and freely.  For example, copyright in a literary work may be infringed when it isreproduced in its entirety and sold in commercial quantities, whether it was reproduced by traditional
typesetting or by digital scanning, and whether the reproductions are sold on vellum or as CD-ROMs.
It is no defence to trademark infringement if a connection in the course of trade is asserted through
digital communications rather than by a physical manifestation of the trademark.
Proposal :  That the TRIPS Council consider including in the final report to the
General Council an agreed statement regarding the applicability to electronic
commerce of the traditional objectives of the intellectual property system, thegenerally technology-neutral nature of TRIPS provisions, and the relevance of
TRIPS provisions in the di gital network environment.
III. CLASSIFICATION OF PRODUCTS IN THE DIGITAL ENVIRONMENT
12. The trade of products via electronic means challenges the existing framework for
classification of transactions and confronts the boundary between goods and services.  Can, forexample, a transaction involving the electronic transmission of computer software via the Internet be
classified as a trade in a good or a service?  Could the overall transaction, depending on the
circumstances, be placed in both or either categories?  Indonesia and Singapore (WT/GC/W/247)
raised these issues in a noteworthy communication done in preparation for the 1999 Ministerial
Conference.  The paper outlined a number of approaches to the classification of digitized products,including consideration of whether products with a tangible counterpart (e.g. a computer disk) could
be a good, or whether products such as software and music are more appropriately considered as
services.  The paper suggested that a more fruitful approach to the issue may be to consider these
products as intangible goods that can be considered in terms of trade in intellectual property rights,
rather than in trade in goods or services.  As the paper notes, the overarching concern in theclassification debate should be to ensure legal certainty in how the good, service or intellectual
property right is treated.
13. It is important to note that there is an increasing, highly valuable, set of cross-border
transactions concerning intellectual property that are not necessarily captured by either goods or
services – these are financial transfers for licence fees or royalties paid for the use of intellectual
property.  These transactions can occur independently of any transaction concerning the carrier
medium, whether this is physical or electronic in form.  Even when a consumer "purchases" a product,such as a music CD or a software application on CD-ROM, the true legal nature of the transaction is
somewhat different from a simple purchase of a physical product – what is really happening is that the
consumer is taking out a limited licence to use a sound recording (and musical work) or a software
application, in a limited range of circumstances.  Equally, in the case of software, the licence may
extend to future use of software code yet to be written, in the form of upgrades that can bedownloaded electronically.  While the overall issue of classification is rightfully considered a
cross-cutting issue, not the domain of any one subsidiary body in the WTO, the Council for TRIPS
should focus its particular expertise in intellectual property onto this issue – especially given the
nature of some international transactions as concerning intellectual property rights as an object of
trade in themselves.IP/C/W/233
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Proposal :  That the Council for TRIPS keep under consideration the issues
associated with the classification of tr ade in intellectual property products,
particularly in the context of electronic commerce, given especially that some
international transactions appear to in volve intellectual property rights as an
object of commercial exchange in themselves.
IV. DISTINCTIVE FEATURES OF INTELLECTUAL PROPERTY IN THE DIGITAL
ENVIRONMENT
14. As a general principle, intellectual property objectives and TRIPS provisions apply equally in
the digital environment as to conventional commerce:   indeed, no practical distinction can be drawn
between digital or electronic intellectual property and "other" intellectual property.  However, there
are two distinctive features of intellectual property in the digital environment that should be
acknowledged.
• First, trade conducted electronically generally has a relatively high intellectual property
content.  TRIPS provisions are therefore not only relevant in principle to electroniccommerce, but in fact highly significant from a practical perspective.  Electronic
commerce is greatly affected by intellectual property rules - proportionately more so than
general commerce.  The rapid growth of electronically conducted trade will therefore
bring further emphasis to ensuring the ef fective implementation and enforcement of
existing TRIPS provisions.
• Second, the administration and enforcement of national intellectual property laws in the
digital environment are confronted with significant challenges as regards the definition
and enforcement of copyright and related rights, and the delineation and enforcement of
trademark rights, as well as the trademark/domain name overlap.  The practical necessity
of territorially based jurisdiction can also be problematic in the enforcement ofintellectual property rights in relation to electronic commerce.  These challenges are not
always confined to electronic commerce - to some extent they are apparent in the general
trend towards more geographically distributed or borderless trade patterns.  At the same
time, electronic commerce offers a new generation of practical solutions to long-standing
problems of enforcement and widespread benefit sharing.
V. ENFORCEMENT:  BORDER MEASURES
15. Hence, while posing new enforcement challenges, advances in digital technology also create
practical mechanisms for facilitating enforcement.  One of the significant advances in the TRIPS
Agreement was its detailed arrangements for border control measures, reflecting the high practical
value of such measures in dealing with internatio nal trade in counterfeit and pirated goods.  One of
the broader benefits of the electronic commerce work programme will be to promote understanding of
how electronic commerce technology can facilitate trade and reduce the transaction costs and
administrative overheads of international trade.  Hence, it may be valuable to consider possible
practical linkages between border control measures for intellectual property right enforcement, and
trade facilitation.  The TRIPS Agreement does not and should not prescribe specific technological
approaches to the implementation of border control measures, properly leaving this to national
authorities to determine.
16. Nonetheless, it may be useful to identify and draw attention to the concrete benefits from
practical coordination between the implementation of intellectual property border control measures
and trade facilitation through electronic commerce technologies.  Suitable information systems could
serve the combined function of easing the administrative burden of customs procedures, and targeting
and focusing border enforcement efforts.  It should be emphasized that this would remain at apractical level as a means of optimising the use of resources in implementing the TRIPS Agreement,IP/C/W/233
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rather than a mandatory norm or expected practice.  Even so, harnessing the potential of electronic
commerce in this way could benefit all Members.  By facilitating the effective implementation of
TRIPS provisions related to border controls, it could lead to increased compliance with national laws
implementing the substantive provisions of the Ag reement.  At the same time, it could reduce the
resource demands and administrative burdens on governments that these enforcement obligations cancreate.  By focusing the enforcement effort more effectively, electronic commerce technologies could
reduce any impediments to legitimate trade caused by border control measures, while targeting
infringing trade more accurately.
Proposal :  That Members consider the ways in which electronic commerce
technologies could be used to enhance customs procedures at the border, as a
means of facilitating compliance with TRIPS provisions for border control.
VI. ENFORCEMENT:  INTERNATIONAL COOPERATION (ARTICLE 69 OF THE
TRIPS AGREEMENT)
17. Some of the challenges for effective enforcement of copyright posed by the growth of
electronic commerce are essentially practical in nature.  There will be a continuing need for Members
to explore options for addressing enforcement issues, with as much practical coordination and
cooperation as possible, and sharing of the fruits of national experience.  We therefore suggest that theterms of Article 69 of the TRIPS Agreement, under which Members have agreed to cooperate with
each other with a view to eliminating internationa l trade in goods infringing intellectual property
rights, should be interpreted to include infringeme nts occurring in the electronic environment.  This
could be used to promote a valuable exchange of information on electronic trade in infringing goods
or the use of electronic commerce to facilitate trade in infringing goods.  The Secretariat couldcoordinate the exchange of national experiences in this regard.  The collation of information on the
practical problems experienced by Members would be a useful basis for ongoing discussions on how
best to tackle the issues, and would itself serve a useful role in training and awareness-raising
activities.
Proposal :  That the implementation of Article 69 of the TRIPS Agreement
should include intellectual property infringements occurring in the digital
environment, and that a statement to th is effect be included in the TRIPS
Council's final report to the General Council; and that the Secretariat facilitate
the exchange of information about national experiences with regard to
enforcement of intellectual property  rights in the digital environment.
VII. JURISDICTION ISSUES
18. The TRIPS Agreement and the earlier internatio nal agreements it incorporates (notably the
Paris and Berne Conventions) respond to the distinctive nature of intellectual property as a component
of trade:  international cooperation in this domain has been considered essential for more than a
century because of the particular vulnerability of intellectual property to differing, conflicting or
nationally oriented forms of protection.  The earlier focus was on the grant and availability of
intellectual property rights.  The long-established national treatment principle in Berne and Paris, andthe no-formality protection afforded under Berne, are practical responses to the challenges of
defining, creating and maintaining rights in the in ternational market-place.  They remain of direct
significance and practical value in relation to intellectual property rights associated with electronic
commerce.
19. However, the development of a digital domain of commercial activities, characterized by
increasingly borderless or "virtual" trading patterns and the growth of trade in intellectual
property-rich products, creates new enforcement challenges which have raised questions about the
continuing efficacy of territorially based jurisdiction.  Conflict between jurisdictions is not, in itself, aIP/C/W/233
Page 6
new problem, and the general principles that have  applied in the past will continue to apply to
intellectual property right infringement.  However, the potential scope and geographic spread of
intellectual property right infringement will continue  to grow.  To some extent, the greater spread of
TRIPS-consistent intellectual property systems and the movement towards convergence of national
systems should ease these problems.  Nonetheless, should widely divergent approaches tojurisdictional issues in relation to intellectual prope rty rights emerge in the digital environment, this
could lead to the kind of trade-distorting effects that the TRIPS Agreement was developed in response
to.
20. A further aspect of national jurisdiction is th e international enforcement of judgements.  A
joint meeting is to be held in January 2001 be tween WIPO and the Hague Conference on Private
International Law (HCPIL) to discuss intellectual property aspects of the HCPIL Convention on
Recognition and Enforcement of Foreign Judgements in Civil and Commercial Matters.  The TRIPSCouncil should follow this and any other relevant developments in the question of determining the
scope of national jurisdiction in relation to intellectual property rights in the digital environment.  Any
further, more substantive work on this issue would probably be premature at this stage.
Proposal:  That the work programme monitor developments in the application of
national jurisdiction in relation to inte llectual property rights in the digital
environment.
VIII.  PATENT ISSUES
21. With the growth of electronic commerce, new business methods and models have been
developed, tailored to the digital environment.  Issu es have been raised about the patentability of new
online business methods.  As part of the continuing review of implementation of the TRIPSAgreement, Members could be encouraged to exchange information about the operation and use of
patents in the digital environment, so as to promote greater common understanding about the legal
and administrative issues involved.
Proposal:  That Member countries exchange information about, and the work
programme monitor developments in, the operation and use of patents in thedigital environment, particularly in re lation to software and business methods.
IX. NEW TECHNOLOGIES, ACCESS TO TECHNOLOGY AND INTELLECTUAL
PROPERTY RIGHT ADMINISTRATION
22. Electronic commerce technologies have vastly improved global access to technological
information in patent documentation.  The entire cost structure with regard to accessing patent
documentation has been revolutionized by its availability on the Internet:  researchers and other
interested parties in any part of the world are now able to access large quantities of state of the artpatent documentation effectively free of charge, provided they have basic internet access.  The TRIPS
Agreement requires, under Article 29, that patent applicants disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a person skilled in the art.  Most patent
systems give effect to the further TRIPS standard th at the applicant also indicate the best mode for
carrying out the invention.  The TRIPS norm requiring disclosure of technological informationtherefore combines with the revolution in the av ailability of information and telecommunications
technology, with the effect of greatly facilitating the flow of technological information and reducing
its cost in line with the fundamental objectives of the TRIPS Agreement.
23. Further, the fact that the patent system may, under the TRIPS Agreement, extend to new
technologies has led to increased accessibility to state-of-the-art technologies in rapidly advancingareas.  This quality of the patent system represents a very considerable improvement over the tradeIP/C/W/233
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secrets model, as it has shifted the balance between the protection of rights and disclosure of
information in favour of the user.
24. As noted in the Secretariat's paper (paragraph 24), electronic commerce technologies are also
being used to practical advantage to improve the communication of information between national,
regional and international intellectual property offices, and increased access to that information bypeople external to such organizations.  The use of electronic commerce in this way is enhancing the
quality and speed of the intellectual property administration services provided by intellectual property
offices around the world, and increasing the access to mechanisms which offer intellectual property
right protection.  It therefore provides useful ways  of reducing the costs and administrative burden of
implementing TRIPS obligations concerning the administration of intellectual property rights.
25. The improvements brought by electronic commerce in increasing access to technologies and
facilitating the effective administration of intellectual property rights are an important aspect of theinterface between electronic commerce and intellectual property rights.  In light of the already evident
benefits in this area, and the emphasis given to this topic in the TRIPS Council's mandate under the
work programme, Australia suggests that appropriate recognition of the advantages of electronic
commerce in this area should be made in the final report to the General Council.  Further, Australia
considers that a useful outcome from the work programme would be to encourage Members tomaximize, wherever possible, the opportunities presented by electronic commerce to facilitate access
to technology and intellectual property right administration.
Proposal :  That the final report to the General Council include an
acknowledgement of the existing and potential advantages brought by electronic
commerce technologies to accessing new technology and administeringintellectual property rights.
Proposal :  That Members be encouraged wherever possible to maximize the
opportunities presented by electronic commerce in the areas of access to
technology and the administration of intellectual property rights, with a view to
promoting the widespread dissemination of new technologies and reducing thecosts to governments of intellectual prop erty right administration, and that this
be given due emphasis in technical cooperation activities.
X. ANTI-COMPETITIVE PRACTICES IN THE DIGITAL ENVIRONMENT
26. As with the paper-based trading environment, anti-competitive issues are potentially raised by
electronic commerce, particularly in relation to intellectual property licensing arrangements.
Article 40.1 of the TRIPS Agreement notes that "some licensing practices or conditions pertaining to
intellectual property rights which restrain competition may have adverse effects on trade and mayimpede the transfer and dissemination of technology".  The need for the intellectual property system
to function effectively as a means of promoting transfer and dissemination of technology is vitally
important in relation to electronic commerce techno logy, as for other forms of technology, especially
considering the infrastructure concerns of developing countries.
27. There are possible instances of anti-competitive behaviour in relation to some online licensing
arrangements.  For example, a click-through licence for the use of a website could be anti-competitive
according to national law implemented in line with  Article 40 of the TRIPS Agreement.  Such a
licence may also conflict with permitted exceptions intended to balance rights and obligations in a
TRIPS framework.  Particular difficulties may arise where exceptions to exclusive rights in
TRIPS-compliant domestic legislation differ in some respects across jurisdictions.  As part of thecontinuing review of implementation of the TRIPS Agreement, Members could be encouraged to
exchange information about anti-competitive issues in the digital environment, so as to promote
greater common understanding about the legal and administrative issues involved.IP/C/W/233
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Proposal:  That Member countries exchange information about, and the work
programme monitor developments in, anti-competitive issues in relation to
intellectual property protection  in the digital environment.
XI. COPYRIGHT:  WIPO COPYRIGHT TREATIES:  LINKAGE TO THE TRIPS
AGREEMENT
28. Electronic commerce reached its current signif icance on the international trading scene almost
entirely since the conclusion of the TRIPS Agreement.  Hence the substantive TRIPS provisions on
copyright do not fully address issues arising in the digital environment.  The negotiation by WIPO
member states of the WIPO Copyright Treaty  (WCT) and the WIPO Performances and Phonograms
Treaty (WPPT) was in part prompted by this lacuna in TRIPS and the Berne and Rome Conventions.
The WCT also responds to some copyright provisions of the TRIPS Agreement itself.  The WIPO
Diplomatic Conference of December 1996 also adop ted a number of Agreed Statements concerning
certain provisions of the WCT, which clarify how the provisions are to be interpreted, and thereby
facilitate their practical operation.  A good example of this is the Agreed Statement concerning
Article 1(4) of the WCT, which clarifies that storage of a protected work in digital form in an
electronic medium constitutes a reproduction within the meaning of Article 9 of the
Berne Convention.  Also noteworthy are the agreed statements on Article 10 of the WCT andArticle 16 of the WPPT concerning the applicability of existing exceptions to the digital environment
and the devising of appropriate new exceptions for that environment.
29. Support for the WCT and WPPT, as measured by signature and ratification/accession, is not
confined to any one economic or geographic group, suggesting that the new norms they establish have
broad international support.  This breadth of acceptance, and the requirement under the workprogramme to avoid duplication of work dealt with in other bodies, are compelling reasons for
Members to consider how the provisions of the WCT and WPPT relate to the TRIPS Agreement and
how they might be used further to enhance the relevance of the TRIPS Agreement in the digital
environment.  The likelihood of the negotiation by WIPO of a new legal instrument governing
performers' rights in the audiovisual domain should also be taken into account, and if this outcomeattracts similarly broad support it could be taken up in the TRIPS review process.
30. In this context, it is useful to consider Article 71.2 of the TRIPS Agreement which provides
an accelerated amendment process in relation to higher levels of protection accepted in other
multilateral agreements by all Members of the WTO.  The intention of this provision seems to be that,
where new international intellectual property standards emerge and are universally accepted, the
TRIPS Agreement should be amended in response to such developments.  It is very unlikely, given
practical constraints, that the exact terms of Article 71.2 will ever be met.  However, this principle is auseful starting point when considering the relationship between the TRIPS Agreement and such new
international agreements as the WCT and WPPT.
31. A significant proportion of the norms embodied in the TRIPS Agreement are provided by the
incorporation, by reference, of key WIPO treaties - the Paris, Berne, Rome and Washington
Conventions.  This close linkage in their substa nce means that consistency and coordination between
TRIPS norms and WIPO treaties is vitally important to the efficacy of international cooperation in the
intellectual property domain.  This was recognized in the drafting of the WCT.  For instance, since the
conclusion of the TRIPS Agreement, the drafters of the WCT took account of the contributions of the
TRIPS Agreement to copyright norms (e.g. in relation to protection of software).  In light of the work
already done in WIPO towards creating appropriate amendments to copyright protection that assistsits efficacy in the on-line environment, Members could consider making one outcome of the work
programme an encouragement of a continued mu tually supporting linkage between the TRIPS
Agreement and the provisions of the WCT and WPPT and their agreed statements.IP/C/W/233
Page 9
32. Australia does not at this stage advocate any specific linkage between these instruments, but
suggests that it would be appropriate to consider the possibilities.  It is important to consider this issue
in detail now, as the development of new intellec tual property standards will continue in coming
years, and the approach taken in this case may be drawn on again in future.  In theory, the WCT and
WPPT could be given recognition in the context of the TRIPS Agreement in one of at least threedifferent ways, depending on the degree of consensus reached by Members on the appropriateness of
the WCT provisions.  One option is a statement on the part of the Council for TRIPS that recognizes
the value of the WCT and WPPT in giving effect to the objectives of the TRIPS Agreement, and
specifically acknowledges the relevance of its provis ions to copyright law in the digital environment.
Alternatively, relevant parts of the WCT and WPPT could be incorporated into the TRIPS Agreement
by reference.  A third option is that Members could use existing WCT provisions as a starting point
for the negotiation of new TRIPS provisions.  Any new provisions should not, however, impose more
onerous standards than those already contained in the WCT and WPPT.
33. Which of the above options is the most appropriate will depend on the extent to which
Members can agree on the content of the WCT and WPPT provisions, and the nature of the future
TRIPS review process.  It is important to note that the review process of Article 71 would probably
take into account such developments in time, even in the absence of a specific WTO work programmeon electronic commerce.  The three options cited above are suggestions only, and Australia would
encourage other Members to think of other alternatives.  At this stage, Australia does not seek to
suggest which form of linkage between the TRIPS Agreement and the WCT/WPPT standards is the
most desirable.  However, we would strongly encourage other Members to consider agreeing to make
a recommendation that one of the outcomes of the work programme should be an explicit statementacknowledging the beneficial relationship between these instruments.
Proposal :  That Members consider means by which the WIPO Copyright Treaty
and WIPO Performances and Phonograms Treaty might be recognized in the
context of the TRIPS Agreement, and that the Council for TRIPS make a
statement which explicitly recognizes the relevance of the WCT and WPPT toregulating copyright and related rights in the online environment in a manner
that supports the existing provisions and general objectives of the TRIPS
Agreement.
XII. COPYRIGHT:  WIPO COPYRIGHT TREATIES:  HARMONIZATION OF
NATIONAL LAWS
34. In addition to articulating the relationship between the TRIPS Agreement and the WCT and
WPPT, countries could in the meantime make a practical contribution to copyright protection in thedigital environment by bringing their laws into line with relevant provisions of the WCT and WPPT.
35. Australia has developed legislation to implement certain provisions of the WCT and WPPT.
As an example of the manner in which national legislation can be amended to take account of the
WCT, and to address copyright issues in the digita l environment more generally, following are details
of some of the features of the Australian Copyright Amendment (Digital Agenda) Act 2000:
• a new, broadbased technology-neutral right of communication to the public, which will
apply to works made available on the Internet and other on-line services, as well as workstransmitted (including broadcast) to the public;
• reasonable access for libraries and educational institutions to copyright material in
electronic form, including material available on-line;
• limitation and clarification of liability for carriers and ISP for copyright infringements
done by third parties using the facilities of the carrier or ISP;IP/C/W/233
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• two new enforcement measures providing criminal sanctions and civil remedies against
the dealing in, and manufacture of, devices for the circumvention of technological
protection measures, and the intentional removal or tampering with electronic rights
management information;  and
• introduction of a statutory licence scheme for the retransmission of free-to-air broadcasts,
e.g., via pay-TV (this change being in accordance with obligations under theBerne Convention).
36. The overall objectives of the TRIPS Agreement would clearly be served if Members were
encouraged to revise national laws to bring them in line with the provisions of the WCT and WPPT.
Proposal :  That Members be encouraged to consider revising their national laws
to bring them in line with the WIPO Copyright Treaty and WIPO Performancesand Phonograms Treaty.
XIII.  MANAGEMENT OF INTELLECTUAL PROPERTY RIGHTS:  APPLICATION OF
ELECTRONIC COMMERCE TECHNOLOGIES
37. The collection of revenue from the licensing of various copyright and related rights is one
area where electronic commerce technologies may help bring the benefits of intellectual propertyprotection to a wider range of beneficiaries.  Electronic commerce may provide a cost-effective and
technically feasible means of collecting and distributing revenue from international markets for
right holders who have not, due to infrastructure, cost or logistical reasons, had the capacity to pursue
their commercial interests.  This applies especially to performers, composers and artists in developing
countries, whose works are attracting increasing inte rest in international markets, but who may not be
receiving due rewards due to the lack of the necessary infrastructure.  The progressive implementation
of the TRIPS Agreement in many WTO Members is steadily increasing the legal scope for
administration of copyright and related rights.  It is therefore timely to consider how the strengthened
legal framework can be complemented by enhanced practical mechanisms for copyright
administration.  The electronic commerce work programme could reflect the special needs ofdeveloping countries in this regard, and encourage technical cooperation with the aim of extending the
benefit of collective mechanisms for rights administration.
Proposal :  That Members be encouraged to enhance cooperation, including in
conjunction with relevant international organizations such as WIPO, with the
aim of using digital and telecommunications technologies to extend the effectivebenefits of intellectual property rights to right holders in developing countries.
XIV. TRADEMARKS:  GENERAL
38. Judicial authorities in many countries have had to consider what constitutes relevant use of a
trademark on the Internet.  This applies in the context of defining trademark infringement in the
digital environment, and determining what will qualify as "use" in connection with goods or services
for the purposes of establishing a registration or defending a registration from a removal action.
Given the overall benefits of harmonized law in this area, and the fact that in electronic commerce,use of a trademark will tend to take place concurrently in multiple jurisdictions, it would be beneficial
for greater information exchange and coordination of legal developments.  Ultimately, practical
experience and legal analysis may lead to a strong consensus that the trademark standards articulated
by the TRIPS Agreement could be clarified or supplemented for the general benefit of enterprises in
all Members.IP/C/W/233
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39. It would, however, be premature to consider developing specific recommendations in the
framework of the current electronic commerce work programme.  In addition, valuable work is under
way in WIPO on this issue, under the Standing  Committee on the Law of Trademarks, Industrial
Designs and Geographical Indications ("SCT").  An y outcome of this programme may help facilitate
greater coordination of law in this field, and may form the basis for any future work by the Councilfor TRIPS.
Proposal :  That the work programme take no te of the value of greater exchange
of information on this issue, and continue to monitor developments, including
the work currently in progress in WIPO , with a view to possible further
substantive consideration of the issue.
XV. TRADEMARKS:  WELL-KNOWN MARKS
40. The provisions of the TRIPS Agreement on well-known marks, Article 16.2 and 16.3, expand
on Article 6 bis of the Paris Convention for the Protection of Industrial Property (1967).  The TRIPS
Agreement extends the scope of Article 6 bis to cover services, and goods and services which are not
similar to those in respect of which a trademark is registered, and also builds directly on the terms of
that Article to clarify the method for determining whether a trademark is well-known.
41. WIPO has since 1995 been examining the issue of the protection of well-known marks,
including in the context of their use on the Internet.  A Recommendation containing provisions
dealing with this issue, develope d by the WIPO SCT, was adopted as a joint resolution of the WIPO
General Assembly and the Assembly of the Paris Union, in September 1999.  The Recommendation is
intended to be used as a guideline for national legislation to consolidate and supplement the protection
provided by existing international norms such  as the Paris Convention.  The Recommendation has
also been approved by the Asia-Pacific Economic Cooperation Intellectual Property Experts Group.
The Recommendation has already been drawn on in the trademark legislation of at least one WTO
Member.
42. Given the importance of this issue, and the existing interrelationship between the TRIPS
Agreement and Paris Convention provisions on well-known marks, in considering the issue ofwell-known marks in the context of electronic commerce, the Council for TRIPS should take account
of WIPO's work in this area.  The Council for TRIPS could consider the outcomes of that process and
discuss their possible implications for the TRIPS Agreement.
Proposal :  That the Council for TRIPS take account of the work being done in
WIPO on the issue of the protection of well-known marks in the digital
environment, and consider its possible implications for the provisions on well-
known marks in the TRIPS Agreement.
43. Further, any consideration by the Council for TRIPS of the protection of well-known marks in
the online environment should be based on the principle that the obligation to protect well-known
marks in the digital environment should not be applied in a way that extends the effective scope of
protection available in the conventional commercial sphere.  An appropriate balance must be struck
between the interests of the trademark owner and those of other traders.
XVI. TRADEMARKS:  INTERNET DOMAIN NAMES
44. The issue of trademarks and Internet domain names was the subject of an extensive
international consultation process by WIPO, the final report of which was published on 30 April 1999.
That report was then submitted to the Internet Corporation for Assigned Names and Numbers
(ICANN) (the corporation established to manage  the domain name system).  At a meeting in
May 1999, ICANN considered the report's recommendations on a range of issues arising out of theIP/C/W/233
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interface between domain names and intellectual property rights.  ICANN has largely implemented
the WIPO recommendations, having improved registration practices and established a uniform dispute
resolution procedure in relation to trademark-based domain name disputes.  Through their application
to generic top level domain names (notably ".com" domain names), the dispute resolution policy and
procedures have arguably become a de facto international standard.
45. The domain name dispute resolution procedures have been enthusiastically utilised, with over
2,280 proceedings commenced (518 of those pending) since the process was instituted in
December 1999.  WIPO is one of the accredited providers of dispute resolution services under this
system.  Since the introduction of the procedures, there has been less opportunity for bad faith
cyber-squatting of trademarks in the generic top-level domains .com, .org and .net.
46. At the request of several WIPO member states, including Australia, WIPO has begun a
Second Internet Domain Name Process to investigate the need for protection against bad faith domainname registrations of identifiers other than trademarks.  This study is focusing on the bad faith,
abusive, misleading or unfair use in the domain name system of personal names, International
Non-proprietary Names for Pharmaceutical Substances, names of international intergovernmental
organizations, geographical indications and trade names.  WIPO is seeking comments on these issues
by 29 December 2000 with a view to publishing an interim report in February 2001 followed byfurther consultations and a final report in July 2001.
47. The issue of the domain name registration of abbreviations of international intergovernmental
organizations is particularly relevant to the TRIPS Agreement in light of its incorporation by
reference of Article 6 ter of the Paris Convention.  Further, the domain name registration of
geographical indications should be considered in light of Articles 22-24 of the TRIPS Agreement, anissue already raised by two delegations in this forum.
48. WIPO has also instituted a programme aimed at country code top-level domains (ccTLDs), at
the request of several member states, including Australia.  The WIPO ccTLD programme
encompasses a range of activities including advice on the design of registration policies to take
account of intellectual property rights and advice on, and provision of, dispute resolution services.WIPO intends to publish (February 2001) voluntary in tellectual property guidelines to assist ccTLD
administrators to control abusive and bad faith domain name registration of protected names.
49. In light of these developments, Australia submits that the Council for TRIPS should take
account of the WIPO work in its consideration of domain name issues.  As in the case of well-known
marks, Australia proposes that consideration should be given to whether and how it might be
appropriate to take account in the TRIPS Agreement of the outcomes from the WIPO processes.
Despite these developments, it is important to note that intellectual property rights, particularly trademarks, geographical indications and the names of international organizations, continue to be defined,
exercised and enforced at the level of domestic law, and that the TRIPS Agreement provides the legal
framework underpinning these rights internationally.  WTO Members will have a collective, systemic
interest in ensuring that the relationship between domain name arbitration mechanisms and national
intellectual property law within the framework of the TRIPS Agreement is clearly understood and
articulated, and that the overall legal framework is developed in an inclusive manner.
Proposal :  That the Council for TRIPS take note of the outcomes of the WIPO
Internet Domain Name Process, monitor further developments on this issue, and
consider their implications for TRIPS provisions on trademark and other rights.
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