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Vincent Porther

The Subject Matter of Protection
part 3

Article 2(1) of the Berne Convention has a dual structure. It provides that:

"The expression 'literary and artistic works' shall include every production in the literary artistic and scientific domain, whatever may be the mode or form of its expression, such as ..."

There then follows a long list of forms of works. In effect the list of different forms of expression, such as books, pamphlets and other writings, dramatic or dramatico-musical works, cinematographic works etc., constitutes a mandatory minimum requirement for signatory states. But in addition, many states have granted more extensive protection within their territory to other pseudo-literary works, such as compilations, which are not universally protected.

The TRIPS agreement also requires the protection of computer programs as literary works and the protection of databases if the way in which the data is selected or arranged constitutes an intellectual creation. In this, the TRIPS agreement echoes article 2(5) of the Berne Convention, which requires signatory states to afford protection to collections of literary and artistic works (but not data) "which by reason of the selection and arrangement of their contents constitute intellectual creations." However, the TRIPS Agreement does not protect the data and any other material the database may contain, although in some states they may enjoy protection per se. As a result, negotiations are currently under way to establish a Protocol to the Berne Convention which, among other things, would afford protection to computer programs and to databases which constituted intellectual creations by reason of the selection, coordination or arrangement of data or other material. However some countries, notably the USA, also want to protect compilations of data or unprotected materials as literary or artistic works. Even though the US Supreme Court has already required originality in the selection and arrangement of materials in order to justify the protection of compilations, the US Government is still concerned "that many factually-oriented databases may be denied copyright protection or that courts may determine infringement in ways that severely limit the scope of copyright protection for databases." But at the present time, it therefore seems unlikely that the international community will accept the suggestion of the United states to protect collections of data or other unprotected materials as literary or artistic works.

One of the key difficulties for the international community is to agree a standard of originality. In general, the Anglo-American or common law system requires a relatively low level of originality for protection, whereas in continental countries, the civil-law system requires a relatively high level of originality. In some countries, database owners may also call on unfair competition laws to defend their interests. The solution of the European Union has been to propose a sui generis right of unfair extraction, although individual Member States still have different unfair competition laws.

This caution by the international community in extending the subject matter of protection is wise. For the advent of digitisation means that it is necessary for the international community to draw a clear distinction between protected works and unprotected information. Because information can be digitised, it does not follow that it should be protected. Conversely, even if a protected work, such as a cinematograph film, can be stored or transmitted in digital form, it is more than mere information, and should continue to be protected. But in establishing the GII, there will need to be international agreement as to which packets of digitised information are protected and which are not. Under the present system, the answer varies according to the details of the national jurisdiction under which protection is claimed.

The extent of protection may involve the interplay of at least three elements in a national law, none of which are precisely defined in the Berne Convention. They are the subject matter protected, the level of originality and the protection afforded by unfair competition law. There are thus essentially two options for the international community when it establishes the GII. The first is to continue with the present system. If so, the GII will be regulated by linked national jurisdictions, and thus as a series of linked national networks, analogous to the system developed for terrestrial goods and services. The second would be to establish a new international regime for the GII which would address its specific problems by putting in place new internationally agreed definitions of the subject matter to be protected, the level of originality demanded for protection and the nature of unfair competition in the supply and consumption of digitized works. The simplest way to achieve this would be to establish a separate international jurisdiction to protect IPRs on the GII, above and beyond national jurisdictions. If the international community were unable to agree on this, the European Union could establish its own autonomous European regime.

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