A Review of Canada’s
Intemational Copyright Obligations
Sunny Handa
The intellectual-property policy of a country was
often considered in the past to be a reflection of its po-
litical philosophy and was used for the protection of its
culture and economic health. However, in recent dec-
ades, with the development of global markets in goods
and the increase in global trade in products of intellec-
tual innovation, countries have come under tremendous
pressure to harmonize their intellectual-property laws
with those of their trading and treaty partners. These
pressures of harmonization often cause a country’s in-
tellectual-property laws to be based upon extra-national
rather than the narrower national concerns.
This article examines the global economic and
treaty-related forces that are driving this push for har-
monization, and the consequent patterns of the emerg-
ing laws on intellectual property. It specifically exam-
ines the evolution and current status of Canadian laws
on copyright, and Canada’s commitments under the
Berne Convention and other multilateral intellectual-
property treaties, and under the F.T.A. and N.A.F.T.A.
On a souvent consider6 que la politique d’un pays
en mati~re de propri6t6 intellectuelle 6tait le reflet de sa
philosophie politique et visait A prot~ger sa sant6 6co-
noique et son identitd culturelle. Toutefois, suite au
d6veloppement de marches globaux de biens et A
l’augmentation
international
d’innovations intellectuelles, les ttats ont commenc6 A
subir de fortes pressions en vue d’harmoniser leurs rd-
gimes de protection de la propridt6 intellectuelle. Ces
pressions ont souvent amen6 les ttats t adopter un r6-
gime de protection de la proprit6 intellectuelle qui re-
flte des int&rets extranationaux pluttt que des soucis
purement domestiques.
commerce
du
Le prsent article examine les forces 6conomi-
ques ainsi que les traitds intemationaux qui alimentent
cette poussde vers ‘harmonisation, ainsi que les modU-
les de regime de protection de ]a proprit6 intellectuelle
qui en ddcoulent. II examine de mani~re plus spdcifique
l’6volution et le statut actuel du droit canadien en ma-
ti~re de droits d’auteur, ainsi que les engagements du
Canada en vertu de Ia Convention de Berne et d’autres
accords internationaux, et de l’Accord de libre-6change
avec les ttats-Unis et de ‘ALtNA.
. B.Comm. (McGill), LL.B. (Toronto), LL.M. (McGill), D.C.L. (candidate McGill). Barrister and
solicitor (Law Society of Upper Canada). Law lecturer at McGill University in copyright law, com-
munications law and computers and the law. Legal counsel to the law firm of Martineau Walker.
Contact by e-mail: sunny@zoo.net.
McGill Law Joumal 1997
Revue de droit de McGill
To be cited as: (1997) 42 McGill L.L 961
Mode de rdf&ence : (1997) 42 R.D. McGill 961
962
MCGILL LAW JOURNAL/REVUE DE DROITDE MCGILL
[Vol. 42
Introduction
I. Protecting Foreign Nationals -Reciprocity
II. The Berne Convention
A. Updating The Berne Convention: New W.LRO. Treaties
B. The Berne Convention and Canadian Membership in N.A.FTA.
Ill. The Universal Copyright Convention
IV. International Trade, G.A.T.T. and Copyright
A. G.A. TT and Intellectual-Property Protection
B. The TRIPs Text and Intellectual-Property Rights
V. Regional Treaties -The F.T.A. and N.A.F.T.A.
Intellectual Property under N.A.F TA.
A.
B. N.A.F TA. Copyright Provisions
C. Canadian Implementation of N.A. FTA. Copyright Provisions
VI. Unilateral Trade Sanctions: The U.S. Example
VII. Other Global Developments: The European Union
Conclusion
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
963
Introduction
The forces of globalization are occurring in a variety of interrelated dimensions.
Economists tend to focus on their impact on the international flows of goods and
services. Among the intangible flows is the spread of ideas and knowledge, which in
certain cases can be designated the intellectual property of the originator. Such intel-
lectual property is often but not always embodied in the form of a physical product
such as a book, videotape or computer software. In today’s world, information in-
creasingly travels as electrical impulses over computer networks and crosses the
globe at the speed of light. Two of the most compelling and interesting trends of the
last few decades and in the foreseeable future are those towards redefining the owner-
ship of intellectual property, whether or not it is embodied in a physical form when
crossing borders, and establishing an international set of laws and rules to govern
such ownership within countries and across countries.
The recognition of the ownership of intellectual property occurs through the grant
of state-sanctioned monopolies such as patents, trademarks and copyrights, or through
the operation of the common law as with unregistered trademarks. Our concern in this
article is with copyright laws and treaties. Industrialized countries, especially the
United States, can expect large net gains from the effective enforcement of copyright.
They therefore exert strong pressure on the rest of the world to harmonize its copy-
right laws to industrial-country standards and to enforce these laws vigorously. A
major part of this harmonization is achieved through bilateral treaties and multilateral
agreements.
The need for international-copyright treaties is not new, nor is the recognition of a
linkage between copyright and international trade. In fact, one of the original reasons
for the adoption of copyright-like rules in sixteenth-century England was to assist the
development of a domestic printing trade by regulating foreign imports. Formalized
multilateral copyright treaties, however, did not come into existence until the late
nineteenth century. The Berne Convention, the most successful copyright treaty so far
and still in force today, dates from 1886.
The balancing mechanics of devising a copyright regime are the same today as
they were in the nineteenth century, with one difference. Trading frictions or transac-
tion costs, such as the transportation of goods, are gradually being reduced or elimi-
nated as copyrighted works are transmitted across borders in digital form. It is as easy
to send a copy of a digitized manuscript across the world as it is to send it across the
hallway. Further, in these cases of digital transmission, there is a separation between
the intangible creation and its physical manifestation in the originating country, with
the former entering into world trade without necessary accompaniment by the latter.
Without the trading frictions that act as trade barriers to the physical flows of prod-
ucts, copyright regimes face competitive forces such as “nation shopping” for the re-
lease or multiple release of the underlying intellectual creation.
The grant of a copyright has three consequences. It establishes a barrier to the free
flow of trade (in information). It also establishes the “ownership” of an intellectual
MCGILL LAW JOURNAL/REVUE DE DROITDE MCGILL
[Vol. 42
product and the corresponding right to income from that product in much the same
way as ownership of something physical entitles one to its benefits. The latter is part
of the fundamental nature of private property, and is appropriate to a capitalist econ-
omy. This ownership imposes restrictions on the free availability of the product to
others, so that they have to pay the price demanded by the owner in order to obtain it.
Copyright ownership is important in determining the level of “output” of the good in
question, and therefore the extent of its dissemination. From the international per-
spective, this ownership determines the gains from cross-border flows to the con-
cerned countries. Finally, copyright bestows upon the creator of a work a moral right
to be associated with a work (or to remain anonymous) and to maintain the integrity
of a work. Moral rights remain with the author, subject to waiver, even after the eco-
nomic rights are transferred.
This paper broadly outlines the forces at work in globalizing copyright laws in
both the international and Canadian contexts. Part I examines the models of reciproc-
ity used in international copyright arrangements, and Canada’s selection from among
them. Part II focuses on the most important multilateral arrangement, the Berne Con-
vention for the Protection of Literary and Artistic Work,’ and Part III on the Universal
Copyright Convention2 (“U.C.C.”). Parts IV and V deal, respectively, with the Gen-
eral Agreement on Tariffs and Trade (G.A.T.T.) and the North American Free Trade
Agreement (N.A.F.T.A.)’/Canada-U.S. Free Trade Agreement (F.T.A.)’ PartsVI and
‘Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, Can. T.S.
1948 No. 22, 828 U.N.T.S. 221, revised most recently by Paris Act relating to the Berne Convention,
24 July 1971, 1161 U.N.T.S. 3 [hereinafter Berne Convention]. Canada has only signed the Rome
(1928) revision of this Convention; however, substantively it protects works up to the Paris (1971)
revision.
2 Universal Copyright Convention, 6 September 1952, 216 U.N.T.S. 132, U.K.T.S. 1957 No. 66,
Can. T.S. 1962 No. 13, revised in Paris on 24 July 1971, 943 U.N.T.S. 178 [hereinafter U.C.C.].
3 GeneralAgreement on Tariffs and Trade, 30 October 1947, 55 U.N.T.S. 194, Can. T.S. 1947 No.
27 [hereinafter G.A.T.T.]. The agreement was signed at the 1947 Bretton Woods Conference. In fact,
three institutions were created at that Conference: the World Bank, the International Monetary Fund
and the International Trade Organization (I.T.O.). The latter institution did not survive ratification by
some member states and consequently died a quick death. The Contracting States, however, agreed to
follow the spirit of the I.T.O. principles agreed to at the Bretton Woods Conference.
(including G.A.TT
Following completion of the Uruguay Round of G.A.T.T. talks, the participants agreed to estab-
lish the World Trade Organization (W.T.O.) to administer the G.A.T.T. (see The Final Act and Agree-
ment Establishing the World Trade Organization (WTO.). General Agreement on Tariffs and Trade,
Uruguay Round
1994), Marrakesh,
1994,
http:llananse.irv.uitno/tradelaw/documents/freetrade/wta-94/nav/toc.html
(May 1997) [hereinafter
GA7T 1994: Final Act and Agreement]). This Act, combined with the General Agreement on Tariffs
and Trade 1994, are collectively referred to as the World Trade Agreement (W.T.A.).
4 North American Free Trade Agreement Between the Government of Canada, the Government of
the United Mexican States and the Government of the United States of America, 17 December 1992,
32 I.L.M. 289 [hereinafter N.A.F.T.A.]. See also North American Free Trade Agreement Implementa-
tion Act, S.C. 1993, c. 44 [hereinafter NAFTA Implementation Act].
15
April
5 Canada-United States Free Trade Agreement, 22 December 1987, Can. T.S. 1989 No. 3, reprinted
in 27 I.L.M. 281 [hereinafter ET.A.].
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
965
VII deal, respectively, with U.S. and European trade policy which, while not directly
involving Canada, have dramatic effects on Canadian copyright policy.
I. Protecting Foreign Nationals -Reciprocity
Canada’s Copyright Act’ generally utilizes a model of national treatment, also
sometimes referred to as formal reciprocity. National treatment involves granting the
nationals of other designated countries, with which there are copyright agreements or
where adequate protections are granted to one’s own nationals, the same level of pro-
tection/rights as one extends to one’s own nationals.
As a member of the Berne Convention and the U.C.C. (discussed below), Canada
applies the national-treatment model of protection vis-at-vis other member-states. Un-
der Canadian law, copyright does not prima facie apply with respect to works
authored by individuals who are not British subjects, from Berne Convention or
U.C.C. member-states, or from Her (British) Majesty’s Realms and Territories. It also
does not apply to works whose first publication was not within either a Berne Con-
vention or U.C.C. member-state or Her Majesty’s Realms and Territories.! However,
the minister of consumer and corporate affairs may extend copyright rights to these
other countries on a national-treatment basis.’ Countries that do not fall into either of
these categories are not granted protection under the Act. Authors who are citizens of
and ordinarily resident in those countries do not receive copyright protection in Can-
ada. Similarly, works first published in those countries are not afforded protection
II. The Berne Convention
Prior to the Berne Convention,'” the international copyright regime was largely
made up of bilateral treaties founded on the premise of material reciprocity.” First
6 Copyright Act, R.S.C. 1985, c. C-42.
7 See ibid., s. 5(l).
‘ This will occur where that other country grants or undertakes to grant “the benefit of copyright on
substantially the same basis as to its own citizens or copyright protection substantially equal to that
conferred by this Act …” (ibitt, s. 5(2)).
9 According to ibi&c, s. 5(1.2):
Copyright shall not subsist in Canada otherwise than as provided by subsection (1), ex-
cept in so far as the protection conferred by this Act is extended as hereinafter provided
to foreign countries to which this Act does not extend.
There is an exception to this general principle. Under s. 5(1.1), if following the first publication, the
work is, within 30 days, published in either a Berne Convention member-state or within Her Maj-
esty’s Realms and Territories, then copyright is applied under the Act. Until the United States joined
the Berne Convention (Paris (1971) revision) in 1989, it did not qualify for protection under the Berne
rules. In order to obtain Berne protections, Americans would publish in the U.S. and Canada simulta-
neously. This would provide Americans with Canadian copyright protection and a first publication in
a Berne country, thereby entitling the work to protections in all Berne countries.
‘0Supra note 1.
“See P Goldstein, Copyright’s Highway: From Gutenberg to the Celestial Jukebox (New York:
Hill and Wang, 1995) at 183.
MCGILL LAW JOURNAL/REVUE DE DROIT DE MCGILL
[Vol. 42
signed on 9 September 1886 in Berne, Switzerland, the Berne Convention continues
to serve as the definitive global minimum standard of copyright protection. The initial
signatories included France, Belgium, Great Britain, Germany, Spain, Italy, Haiti,
Switzerland, and the Bey of Tunis.’2 By the turn of the century, Luxembourg, Monte-
negro, Monaco and Norway had also joined.” Since that time, many of the world’s
countries have signed the Berne Convention, including Canada, the United States, and
most recently China.”
In addition to national treatment, the Berne Convention provides a system of
minimum standards, so that a state cannot implement specific protectionist trade
policies aimed at defending a particular domestic industry. For example, a member
with a comparative advantage in one copyright industry might provide low protec-
tions to those works, knowing that market forces would keep that industry successful,
whereas it might shore up copyright laws in areas of comparative weakness in order
to stimulate the local industry by keeping out imports. To rule out such selectivity, the
signatories created a scheme whereby minimum standards would be adopted by
member states throughout the economy. In this way, all members would be forced to
provide similar protections below a given threshold.
Numerous revisions to the Berne Convention have occurred, with these revisions
incorporating new categories of works which did not previously exist, and gradually
increasing the minimum standards of protection. Each revision has moved the Berne
Convention one step closer to replacing the national-treatment standard with common
measures of protection.
The 1908 Berlin revision freed copyright protection from the requirement of for-
malities. It accepted as a desirable standard that the general term of protection should
be fifty years following the death of the author; it also recognized the right of a copy-
right holder to make a translation of the work. The Rome revision of 1928 recognized
moral rights as being essential to copyright protection. In 1948, the Brussels revision
established a term of fifty years following the death of the author as being mandatory
and shored up other minimum rights. In 1967, Berne members met in Stockholm to
address the issue of preferential treatment under the Berne Convention –
essentially
low-rate compulsory licenses –
for developing countries which were finding the
minimum standards demanded by the Berne Convention unduly onerous. Out of the
discussions came a protocol, entitled A Protocol Regarding Developing Countries,
which, for qualifying developing countries, reduced the minimum copyright term to
twenty-five years, and granted them low-cost compulsory licenses for the reproduc-
tion, broadcast and translation of works that were essential to education and culture.
The Protocol, however, was controversial and strenuously opposed by many indus-
trialized countries, who refused to ratify the rules. The members met again in Paris in
” See A. Birrell, Seven Lectures on the Law and History of Copyright in Books (London: Cassel &
Co., 1899) photo reprint (South Hackensack, NJ.: Rothman Reprints, 1971) at 31.
‘3 See ibid.
‘” The Convention now has 125 member states, a number that increases each year.
“See Goldstein, supra note 11 at 188.
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
967
1971 to resolve the problem. The Protocol was abandoned in favour of relaxing some
of the Berne Convention rules.”
By this time it was quite clear that the Berne Convention was in difficulty. It had
reached a critical point at which further proposed changes to copyright rules would
inevitably result in demands for concessions by members. Consequently, the Berne
Convention has not been amended since.
The Berne Convention reflects the droit d’auteur approach to copyright.” It pro-
tects authors’ rights but does not protect neighbouring rights.” Several other conven-
tions, including the Rome Convention,” Geneva Phonograms Convention2′ and
ienna
Convention,” have been set up with this purpose, although they do not have the large
membership of the Berne Convention.’
A. Updating The Berne Convention: New WLP.O. Treaties
The Berne Convention is currently administered by the World Intellectual Prop-
erty Organization (W.I.PO.) in Geneva. In addition to administering various intellec-
tual property treaties, W.I.P.O. also monitors the intellectual property field and pro-
poses changes for consideration by the member states.
After a lengthy stalemate of some twenty years, during which no amendment to
the Berne Convention was passed, in 1992 W.I.P.O. proposed a Possible Protocol to
the Berne Convention for the Protection of Literary and Artistic Works.’ The pro-
posed Protocol’s primary purpose was to bring various technological advancements
into the fold. Most notably, the Protocol contained provisions for computer programs,
‘6 See Appendix to the Berne Convention, supra note 1, regarding developing countries (added by
Paris Act relating to the Berne Convention, supra note 1).
‘7 See discussion of droit d’auteur in note 46, infra.
“See discussion in note 47, infra, and accompanying text.
‘9 International Convention for the Protection of Performers, Producers of Phonograms and Broad-
casting Organizations, 26 October 1961,496 U.N.T.S. 43, U.K.T.S. 1964 No. 38, asamended in Ge-
neva in 1985 [hereinafter Rome Convention].
20 Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of
Their Phonograms, 29 October 1971, 25 U.S.T. 309, 866 U.N.T.S. 67, U.K.T.S. 1973 No. 41
[hereinafter Geneva Phonograms Convention].
2′ Vienna Agreement for the Protection of Typefaces, and Optional Protocol, 12 June 1973, U.K
Cmnd 5754, reprinted in World Intellectual Property Organization, Records of the Vienna Diplomatic
Conference on the Protection of Typefaces 1973, (1980).
2 At present, Canada is not a signatory to any of the aforementioned neighbouring-rights conven-
tions, illustrating Canada’s past copyright/neighbouring-rights policy, which emphasized not a rights-
based but a trade/remuneration-based approach.
2’Committee of Experts on a Possible Protocol to the Berne Convention for the Protection of Liter-
ary and Artistic Works (Geneva: World Intellectual Property Organization, 1991) in B.B. Sookman,
Computer Law: Acquiring and Protecting Information Technology (Toronto: Carswell, 1989)
(looseleaf) at Appendix 8 (1992, Rel. 2) [hereinafter Possible Protocol to the Berne Convention].
MCGILL LAW JOURNAL! REVUE DE DROITDE MCGILL
[Vol. 42
a public lending right, the express protection of databases, and computer produced
works. The Protocol was not adopted, however, and was abandoned.
Building out of this failure, W.I.P.O. has recently concluded drafting two interna-
tional copyright treaties that complement the Berne Convention. The W.LP.O. Copy-
right Treaty and the WI.PO. Performances and Phonograms Treaty, both adopted by
the W.I.P.O. Diplomatic Conference on 20 December 1996, update the Berne Con-
vention to reflect newer technologies, including computer programs and digital
works. These treaties represent the latest attempt by W.I.P.O. to modernize copyright
law and raise the minimum standards of protection. At present, the treaties are not in
force, as they require accession by at least thirty WI.P.O. member states; they will
enter into force three months after this has been achieved. The treaties have a sunset
clause whereby this level of membership must be reached by 31 December 1997; oth-
erwise, the treaties will not enter into force.
Among other things, the WI.RO. Copyright Treaty provides copyright holders
with rights over computer programs (and their rentals), database creations, and works
telecommunicated to the public. These rights already exist in the Canadian law. The
treaties also discuss the marking, e.g. digital coding, of information which can be
transmitted in cyberspace.’ Under the W.LRO. Copyright Treaty, interfering or
changing the information without the copyright holder’s consent is prohibited, as is
assisting or facilitating such acts. The WI.RO. Performances and Phonograms Treaty,
among other things, provides that performers be granted the exclusive rights over the
recording and distribution of their performances regardless of the medium. Similarly,
producers of phonograms (a term that encompasses digital sound recordings) are
given rights over distribution of their works regardless of form. Of course, in order
for a phonogram to be produced, producers and artists must reach an agreement.
For Canadians, these treaties serve to internationalize existing trends in our law.
Once the treaties take effect and Canada’s membership is confirmed, there will be
very little change to the law, with the exception of recognizing the distribution of
works regardless of medium (i.e., digital works will be expressly covered) and the
marking provisions.
Whether W.I.P.O.’s latest initiatives will meet with widespread success remains to
be seen. Raising the minimum standards of copyright combined with the increased
number of Berne Convention member states, all with differing interests, wealth and
industrial profiles, has created a situation where it is extremely difficult to achieve
consensus on the express protection of new technological works such as computer
programs and computer databases. The difficulties posed by digitized works and the
Internet only serve to further exacerbate the inertia that has now beset the Berne Con-
vention. Bringing the new WI.P.O. treaties into force will, if nothing else, break this
international copyright deadlock.
2″ WI.PO. Copyight Treaty, adopted by the Diplomatic Conference on 20 December 1996, 36
I.L.M. 76.
2′ See ibid, arts. I1 & 12.
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
969
B. The Berne Convention and Canadian Membership in N.A.FT.A.
Although Canada did not become a signatory to the Berne Convention in its own
right until 10 April 1928, the Berne Convention did apply to Canada as a colony of
Britain, one of the original signatories.” Canada signed the Rome (1928) revision7 to
the Berne Convention on 2 June 1928. It officially ratified the treaty with passage of
the 1931 amendments to the Copyright Act.”‘ Until it signed N.A.FT.A. in 1992, Can-
ada had resisted adhering to revisions of the Berne Convention after the Rome revi-
sion (2 June 1928). Chapter 17 of N.A.F.T.A., however, requires that with respect to
copyright each of the parties (Canada, Mexico and the United States) shall, as a
minimum, comply with the substantive provisions of both the Berne Convention and
the Geneva Phonograms Convention.” Under N.A.ET.A., compliance with these in-
ternational conventions is mandatory; however, formally becoming a signatory to
them is not a requirement.’ On the other hand, adherence to these conventions is to be
regarded as a minimum standard; each state is free to implement stronger protections
if it should so choose. 2
In order to comply with N.A.ET.A., Canada had to amend its copyright laws to
reflect the changes which occurred in the Berne Convention between 1928 and 1971. 3
The United States, on the other hand, has pushed hard to convince the Canadian gov-
ernment to become a signatory to the Berne Convention of 1971′
3
26 Canada originally adhered to the Berne Convention in 1923. At that time there had already been
two revisions: the Berlin revision of 1908, and the additional Protocol of Berne (20 March 1914) (see
N. Tamaro, The 1995 Annotated Copyright Act, trans. C. McGuire (Canada: Carswell, 1995) at 14).
27This is also frequently referred to as the Rome Copyright Convention, 1928. This, however, often
leads to confusion with the neighbouring-rights treaty entitled the International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting Organizations, supra note 19,
which is often (and in this paper) referred to as the Rome Convention. Accordingly, in this text, the
successive amendments to the Berne Convention are referred to using the term “revision”, e.g. the
Rome revision.
28An Act to Amend the CopyrightAct, S.C. 1931, c. 8.
29N.A.ET.A., supra note 4, art. 1701(2)(a)&(b).
3oSupra note 20.
See N.A.F.T.A., supra note 4.
See ibid, art. 1702.
3 For example, art. 1705(6) of N.A.F.T.A., ibid., limits any N.A.ET.A. party from granting compul-
sory translation and reproduction licenses under the Appendix to the Berne Convention (see supra
note 16), where, but for that party’s actions or laws, the rights holder would have been in a position to
offer the work voluntarily. This Appendix to the Berne Convention was aimed at encouraging devel-
oping countries to join the Berne Convention, but is inapplicable as between the N.A.F.T.A. parties.
Clearly, this N.A.FT.A. provision was aimed at preventing Mexico, which could potentially qualify
for this exception as a developing country under the Berne Convention, from obtaining access to
compulsory copyright licenses from Canadian and American copyright holders. Both Canadian and
American governments have been vigorously opposed to such a scheme, and have used the
N.A.ET.A. to exclude Mexico from its use.
‘ In his 1987 address before the U.S. House of Representatives Subcommittee on Courts, Civil
Liberties, and the Administration of Justice, Ambassador Clayton Yeuterr, the then U.S. trade repre-
sentative, stated,
970
MCGILL LAW JOURNAL / REVUE DE DROIT DE MCGILL
[Vol. 42
At the time of this writing, Canada has still not ratified these conventions, al-
though its laws are substantively in compliance with their requirements.”
Under the Canadian government’s latest copyright revision proposal (a bill pro-
posed by the ministry of heritage), compliance with the provisions of the Rome Con-
vention has been recommended.” Once again, however, there has been no stated in-
tention of actually becoming a signatory to that convention.
This is further evidence of what seems to be a fairly consistent government policy
towards copyright and neighbouring rights. Canada continues to resist formalizing its
relations with other countries so long as the principle of national treatment remains in
place, combined with measures of reciprocity in other countries’ legislation. In this
way, Canadian copyright holders can reap the benefits of protection abroad while the
government maintains the flexibility to implement those protections that it considers
beneficial to domestic authors both at home and abroad.
III. The Universal Copyright Convention
The U.C.C2′ was originally proposed by the United States in 1947 as a multilat-
eral copyright treaty alternative to the Berne Convention. The United States had re-
fused to sign the Berne Convention primarily because the 1908 Berlin revision had
prohibited the requirement of formalities such as registration and marking and be-
U.S. adherence to Berne has become an important issue in our free trade talks with
Canada. We are asking the Canadians to make major improvements in their intellectual
property regime, including implementation of the obligations of the most recent text of
the Berne Convention. Acceptance of new Berne obligations is at the heart of impor-
tant improvements we hope that Canada will make in copyright protection (Amb. C.
Yeuterr, Address (before the Subcommittee on Courts, Civil Liberties, and the Ad-
ministration of Justice, U.S. House of Representatives, 23 July 1987) at 3-4).
31 Canada’s acceptance of these provisions has been regarded with some skepticism. According to
one commentator, the placement of copyright provisions in the N.A.F.T.A.
answers the question whether it is policy to accede to the 1971 text of the Berne Con-
vention, and all that it implies. The N.A.F.T.A. goes against conventional wisdom, and
previously expressed intentions, of restricting outflows….
When N.A.F.T.A. enters into force, with the required changes in copyright law, Can-
ada’s deficit in copyright trade will increase once again. The undisclosed benefits to
Canada in non-copyright areas must surely be considerable to warrant giving high-
level Berne protection not only to the United States and Mexico but to all Berne coun-
tries and, by operation of the national treatment rule, to all member countries of the
Universal Copyright Convention as well (A.A. Keyes, “What is Canada’s International
Copyright Policy?” (1993) 7 I.RJ. 299 at 318-19).
‘6 Supra note 19.
3’ Bill C-32, An Act to Amend the Copyright Act, 2nd Sess., 35th Parl., 1996.
“‘ Supra note 2. The U.C.C. is also sometimes referred to as the Geneva Convention. However, as
with the Berne Convention, reference to the U.C.C. by city name leads to confusion with the Geneva
Phonograms Convention, supra note 20. Accordingly, the term U.C.C. is used in this text. This
should not be confused with the U.S. Uniform Commercial Code.
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
971
cause protection under the Berne Convention reflected an author-centered, rather than
a work-centered, approach to protection. The utilitarian copyright regime in the U.S.
did not accommodate moral-rights protection, which the Berne Convention required.”
However, the United States, quickly becoming one of the world’s largest producers of
copyrightable works, was becoming isolated in the field of international copyright.
The U.C.C. proposal was an offer to countries, many of which were already members
of the Berne Convention, to enter into a less restrictive copyright treaty with the
United States. The 1952 U.C.C., administered by the United Nations Educational,
Scientific and Cultural Organization (U.N.E.S.C.O.), was ratified by the U.S. in 1954,
and came into force in that country in 1955.’ Canada ratified the 1952 U.C.C. on 10
May 1962.”
The U.C.C. generally provides a lower level of standardized protection to mem-
ber states than the Berne Convention. While also employing the system of national
treatment,42 the U.C.C.’s minimum standards of protection are different. For example,
with regard to the issue of formalities, the U.C.C. allows member states to require
formalities.” In a U.C.C. member state that requires formalities, foreign nationals
seeking protection must affix the familiar copyright symbol in addition to “the
name of the copyright proprietor and the year of first publication placed in such man-
ner and location as to give reasonable notice of claim of copyright.”‘ As most coun-
tries were Berne Convention signatories, the marking requirement was typically used
with foreign works being distributed in the United States.
The United States benefitted greatly from this situation as the Berne Convention
countries had to impose higher minimum standards. With the national treatment
principle at work in the U.C.C., American authors distributing works in countries that
adhered to both the Berne Convention and the U.C.C. typically benefitted from a
9 See Berne Convention, supra note 1, art. 6bis.
, Goldstein, supra note 11 at 185.
4, See MJ. Bowman & DJ. Harris, Multilateral Treaties: Index and Current Status (London: But-
terworths, 1984) at 181.
41With respect to the national treatment principle, art. II of the U.C.C., supra note 2, provides that:
1.Published works of nationals of any Contracting State and works first published in
that State shall enjoy in each other Contracting State the same protection as that other
State accords to works of its nationals first published in its own territory, as well as the
protection specially granted by this Convention.
2.Unpublished works of nationals of each Contracting State shall enjoy in each other
Contracting State the same protection as that other State accords to unpublished works
of its own nationals, as well as the protection specially granted by this Convention.
43 Art. III, para. 2 of the U.C.C., ibid, states:
2. The provisions of paragraph 1 [where requirements deemed satisfied] shall not
preclude any Contracting State from requiring formalities or other conditions for the
acquisition and enjoyment of copyright in respect of works first published in its terri-
tory or works of its nationals wherever published.
“Ibid., art. m, para. 1.
972
MCGILL LAW JOURNAL! REVUE DE DROITDE MCGILL
[Vol. 42
higher level of protection. Furthermore, because of article 5(4) of the Berne Conven-
tion, American authors publishing works both at home and in a Berne member coun-
try –
typically Canada – were protected to the full extent of Berne’s minimum stan-
dards. 5
With the United States finally joining the Berne Convention on 1 March 1989,
protections afforded under the U.C.C. have been superseded. Consequently, while the
latter treaty is still in force, it has largely become redundant.
IV. International Trade, G.A.T.’r. and Copyright
It is increasingly evident that the two copyright treaties –
the Berne Convention
and the U.C.C. – have reached a point of saturation, where achieving consensus from
members to amend the treaties has become extremely difficult. Further, the two under-
lying philosophies –
the Anglo-American utilitarian view and the Continental droit
d’auteur natural-rights view –
of copyright are increasingly coming into conflict at
the international level.” This philosophical divide produces difficulties when trying to
raise the minimum standards of protection. The divisive view concerning neighbour-
ing rights is a good example of this rift: utility-based countries tend to treat neighbour-
ing rights as part of copyright whereas droit d’auteur countries do not.” Further, in
“‘Art. 5(4) of the Berne Convention, supra note 1, states:
(4) The country of origin of the work shall be considered to be
(b)
in the case of works published simultaneously in a country outside the [Berne]
Union and in a country of the Union, the latter country;
According to one commentator,
[this] so-called back door to Berne –
enabled [American authors] to get high-level
Berne treatment worldwide by the simple expedient of publishing simultaneously in
the United States and in a Berne country such as Canada. (This is one of the reasons so
many American books of the era bear the legend “Published simultaneously in Can-
ada”) (Goldstein, supra note 11 at 186).
“6Anglo-American systems focus their ultimate legislative goals on a societal – collectivist – basis.
The rules protecting copying are put in place in order to achieve some societal goal, such as the ad-
vancement of knowledge and progress, or the maximization of wealth. Droit d’auteur systems, also
known as Continental systems, on the other hand, focus on the rights of the creator. These systems
often presume that protecting the creation from copying is necessary for reasons of fundamental jus-
tice or natural right. The term “natural righf’ refers to principles said to exist a priori the positive law.
Natural principles find their way into law because they are recognized by the state, not because they
are created. Notable proponents of natural rights of property are, among others, Locke, Hegel, von
Humboldt and Kant. Although positioning these views as diametric opposites in this way is conven-
ient for the purposes of discussion, in truth no completely pure system exists. Each copyright system,
whether it be copyright or droit d’auteur, consists of elements of the other.
” Neighbouring rights consist of those rights that are not “pure” copyrights. Examples of neigh-
bouring rights include broadcast/retransmission rights, performance rights, mechanical-contrivance
and phonogram rights. The distinction is typically made in Continental systems. Anglo-American
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
973
terms of incentives to join and amend the minimum standard of rights, the existing
copyright treaties operate on a reciprocal basis. A country will only agree to amend
the treaty if it sees a tangible copyright benefit from the change, or if another copy-
right benefit is offered in exchange for its agreement.
Increasingly frustrated with the relative inability to make changes to these trea-
ties, countries supporting large copyright interests, such as the United States, have be-
gun to adopt a broad trade-based approach to intellectual-property issues. For these
countries, which are currently at the forefront of the information revolution, intellec-.
tual property represents very profitable economic products. It is for this reason that
intellectual-property rights have recently appeared in the texts of various multilateral
trade agreements involving Canada, including the F.T.A., the N.A.F.T.A. and, most
recently, the G.A.T.T. At one level, tying intellectual-property rights to international
trade is part of the basic economic nature of intellectual property. These rights require
universal recognition in order to function effectively. However, at another level, the
notion of intellectual property is about cultural sovereignty. It is about protecting cul-
ture, and its very ethic is reflective of the national “soul”. It is increasingly apparent
that the economic forces are winning this debate.’ With each successive trade initia-
tive, the world moves one step closer to a universal homogeneous treatment of intel-
lectual property.
A. G.A. TT. and Intellectual-Property Protection
Following the global economic upheaval caused by the Second World War,
twenty-three nations signed the G.A.T.T.” in 1947. This multilateral treaty is aimed at
improving trade flows through the elimination of non-tariff barriers and the gradual
reduction of tariffs on imported goods.” Under G.A.T.T. 1947, the participants meet
“in successive rounds of reciprocal bargaining” –
there have been eight such rounds
in order to lower tariff barriers to trade.” Once lowered, a tariff can-
to the present –
not be subsequently raised under the Agreement unless agreed to by the participants.
copyright regimes, on the other hand, do not typically distinguish between the rights, choosing instead
to make their legislation a melting pot of all rights associated with copyrightable works.
41 In a recent case, a W.T.O. Panel (Canada – Certain Measures Concerning Periodicals,
WT/DS31IR, 14 March 1997, upheld on appeal (WT/DS31/AB/R, 30 June 1997)) ruled that the Ca-
nadian government’s practice of imposing tariffs on magazines that run split-run editions sold in Can-
ada violates the W.T.O. Agreement Split-run editions are those where a foreign magazine modifies
mostly the advertising content in its issues so that they may be sold in another jurisdiction. Some U.S.
magazine publishers add Canadian content in this way and sell their magazines in Canada. This
would expand their market at a relatively low cost through the creation of economies of scale as com-
pared with Canadian producers. The W.T.O. claim was brought by the U.S. who argued that the
measures gave Canada a monopoly on the sale of magazines within its borders. Canada unsuccess-
fully argued that it was entitled to enact such measures in order to protect the cultural distinctiveness
of its magazines industry which was being besieged by more powerful American publishers.
41 Supra note 3.
‘0 See J.-G. Castel, A.L.C. deMestral & W.C. Graham, International Business Transactions and
Economic Relations (Canada: Emond Montgomery, 1986) at 41.
51Ibid.
974
MCGILL LAW JOURNAL! REVUE DE DROITDE MCGILL
[Vol. 42
Other basic principles of G.A.T.T. include a national-treatment rule and a most-
favoured-nation (M.FN.) rule, whereby a member offering preferential treatment to
any other country must also offer similar treatment to all member states. Unlike the
two copyright conventions, G.A.T.T. provides for enforcement through retaliatory
trade sanctions and provides a dispute-resolution mechanism through which members
can attempt to resolve their differences. Roughly 120 countries presently subscribe to
G.A.T.T., a number that testifies to its success.
The use of intellectual-property provisions in G.A.T.T. was limited for the first
forty years. As one of the key principles of the Agreement was to condemn non-tariff
barriers, there was a conceptual problem. Intellectual-property protections, because
they are creatures of law consciously created by a state, can legitimately be catego-
rized as non-tariff barriers to trade. Take the example of a book. The value of a book
is two-fold: it has a value associated with its physical form, i.e. the paper and binding,
and it has a value associated with the words and ideas expressed in it. The 1947
G.A.T.T. agreement, without question, dealt firmly with the physical aspect of goods.
However, through intellectual-property rules, a state could easily affect the trade dy-
namic of these physical goods. Using the book example, the stronger the protection of
the intellectual property (copyright) in the book, the greater the increase in the do-
mestic prices of the imported books.
With a regime of national treatment, foreign authors receive the same treatment as
nationals. However, if a country does not have a strong “book industry”, it may lower
copyright protections with respect to books, applicable to both domestic and foreign
authors, so as to render the outflow of royalties to a minimal level. Of course, that
country would also be harming domestic authorship, although the effects on net socie-
tal wealth of such a policy would be beneficial. The converse is also true. A country
with a relatively strong domestic authorship would keep copyright protections high in
order to keep wealth in the country.
The problem multiplies in complexity when one considers the availability of for-
eign substitutes. In such a case, keeping the protections low for such goods may cause
the population to shift from the domestic to the foreign goods. Keeping the protec-
tions and price high for foreign goods may result in a large outflow of wealth through
foreign royalty payments. This is the intellectual-property-trade dilemma. To properly
construct an intellectual property regime that maximizes one’s trade balance requires
heightened attentiveness to consumer purchase patterns and a profound understanding
of the nature of the products being protected. A country is further limited by multilat-
eral multi-product trade. Trade in one area, such as books, may affect trade –
through
reactive trade policies –
in another area, such as cars.
G.A.T.T. 1947 does make reference to intellectual property rules. Generally, Ar-
ticle I: “General Most-Favoured-Nation Treatment”, Article III: “National Treatment
on Internal Taxation and Regulation”, Article IX: “Marks of Origin”, Article XXII:
“Consultation”, and Article XXIII: “Nullification or Impairment”, are all applicable to
intellectual-property rights. Specific mention, however, of intellectual property is
made in three G.A.T.T. articles: Article XII: “Restrictions to Safeguard the Balance of
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
975
Payments”,52 Article XVIII: “Governmental Assistance to Economic Development”, 53
and most importantly, Article XX: “General Exceptions”.’ Whereas the former two
articles concern themselves with specific points of sale-of-goods rights, Article XX
provides a clear statement that exempts intellectual-property rules of a country from
its G.A.T.T. obligations. It does, however, impose a good-faith requirement that
countries use their intellectual-property rules for purposes other than manipulation of
trade balances. Thus the aforementioned situation – where a country would manipu-
late its intellectual-property laws to maximize its trade balance on an ongoing basis –
is precluded under G.A.T.T., although the prohibition is weakly worded and requires a
demonstration of intent which is difficult to prove.
With trade in intellectual-property products becoming central to their economies,
western industrialized nations, most notably the United States and the European Eco-
nomic Community (E.E.C. – now the European Union), through successive G.A.T.T.
rounds, had tried to put intellectual property rights on the G.A.T.T. agenda. One early,
“The article states:
1…. [A]ny contracting party, in order to safeguard its external financial position and
balance of payments, may restrict the quantity or value of merchandise permitted to
be imported, subject to the provisions of the following paragraphs of this Article.
3. (c) Contracting parties applying restrictions under this Article undertake:
(iii) not to apply restrictions which would prevent the importation of commercial
samples or prevent compliance with patent, trade mark, copyright, or similar
procedures.
5 The article states:
10. In applying these restrictions, the contracting party may determine their incidence
on imports of different products or classes of products in such a way as to give priority
to the importation of those products which are more essential in the light of its policy
of economic development; … Provided … that the restrictions are not so applied as to
prevent the importation of commercial samples or to prevent compliance with patent,
trade mark, copyright or similar procedures.
‘The article states:
Subject to the requirement that such measures are not applied in a manner which would
constitute a means of arbitrary or unjustifiable discrimination between countries where
the same conditions prevail, or a disguised restriction on international trade, nothing in
this Agreement shall be construed to prevent the adoption or enforcement by any con-
tracting party of measures:
(d) necessary to secure compliance with laws or regulations which are not inconsistent
with the provisions of this Agreement, including those relating to customs enforce-
ment, the enforcement of monopolies operated under paragraph 4 of Article II and Ar-
ticle XVII, the protection of patents, trade marks and copyrights, and the prevention of
deceptive practices; …
976
MCGILL LAW JOURNAL/REVUE DE DROITDE MCGILL
[Vol. 42
but failed, attempt was a proposed Anti-Counterfeiting Code introduced by the U.S.
and E.E.C. near the completion of the Tokyo round of G.A.T.T. talks in 1979. Al-
though the initiative failed, it planted the seed for future consideration by G.A.T.T.
members. This was followed, in 1985, by the formation of an expert group on coun-
terfeit goods in trade. Once again, the initiative eventually failed.” One year later, at
the Tokyo Summit, a proposal to place intellectual property rights on the agenda of
the eighth (Uruguay) round of G.A.T.T. talks was made. It was opposed by some de-
veloping countries, including Brazil and India, which argued that intellectual-property
matters were best left to the expert organizations, such as the World Intellectual Prop-
erty Organization (WI.P.O.) and U.N.E.S.C.O., which were already administering
treaties in the field. This argument was not enough to derail the momentum that had
been building for two decades. On 20 September 1986, the then seventy-four member
states of G.A.T.T. released a statement’ that intellectual property would be part of the
agenda at the eighth-round talks, but that any agreement was to avoid conflict with
W.I.P.O. initiatives.”
B. The TRIPs Text and Intellectual-Property Rights
The Uruguay round of talks produced a general intellectual-property agreement
the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs
text”)” –
applicable to the 116 member countries of G.A.T.T. The TRIPs text ad-
dresses a broad range of intellectual-property concerns, including copyright and re-
lated rights, trademarks, geographical indications, industrial designs, patents, layout-
designs (topographies) of integrated circuits, protection of undisclosed information
(trade secrets) and control of anti-competitive practices in contractual licenses.
The TRIPs text begins by stating that the substantive requirements it sets out are
to be construed as minimum standards and that members are free to apply more strin-
gent protections provided they do not conflict with the agreement. The General Pro-
visions also contain both a national-treatment requirement, similar to the two afore-
mentioned copyright conventions, and a most-favoured-nation treatment (M.F.N.)
clause which remains consistent with the G.A.T.T. generally. Under the M.EN. prin-
ciple, where a member provides a foreign member with treatment more favourable
” See AJ. Bradley, “Intellectual Property Rights, Investments, and Trade in Services in the Uru-
guay Round: Laying the Foundations” (1987) 23 Stan. J. Int’l L. 57 at 65.
‘ Punta Del Este Ministerial Declaration, 20 September 1986.
7 It is clear that the United States, which had transformed itself from a net importer to a net exporter
of intellectual-property products, was the strongest voice in favour of including intellectual property
in the Uruguay Round. According to one author,
[a]fter seven successive rounds of multilateral negotiations aimed at expanding
G.A.T.T.’s reach, the United States, concerned over billions of dollars lost to intellec-
tual property pirates, succeeded in expanding the agenda of the eighth set of G.A.T.T.
negotiations, the Uruguay Round, to include intellectual property (Goldstein, supra
note 11 at 226-27).
“Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex IC to G.A.TT 1994:
FinalAct andAgreement, supra note 3 [hereinafter TRIPs text].
19971 S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
977
than it does its own nationals – which is permitted under the national treatment rule
it must extend the privilege to all other member states as well.” The M.F.N. provi-
–
sion, however, does allow existing reciprocal agreements that deviate from this prin-
ciple to survive.
The General Provisions also contain an important, albeit often overlooked, state-
ment of objectives. It unequivocally states that the purpose of the protections afforded
under the agreement is to enhance “the promotion of technological innovation and …
the dissemination of technology, to the mutual advantage of producers and users of
technological knowledge and in a manner conducive to social and economic welfare
… ‘ The statement is reflective of an Anglo-American understanding of copyright. It
ignores the author-centered philosophy found in droit d’auteur schemes of protec-
tion.” This spirit is reflected in Part II, Section 1 of the TRIPs text, which deals with
copyright and related rights. The TRIPs text does require that members comply with
the substantive provisions (articles 1 through 21) of the Beme Convention, 1971 as
applied to G.A.T.T. members; however it does not require that members become sig-
natories to Berne.2 It also exempts members from rights or obligations under article
6bis of the Berne Convention which requires that members protect moral rights. This
limitation arises from the unwillingness of the United States to “subject itself to the
possibility of scrutiny by a panel under G.A.T.T. rules of its obligations under the
Berne Convention.”” In addition to its objections to article 6bis of the Berne Conven-
tion, the United States also objected to article 18 which dealt with the protection of
works existing at the convention’s entry into force. With the inclusion of a mandatory
Berne adherence provision, the U.S. power to negotiate continued exceptions to these
sections would have been significantly reduced.”
In addition, the TRIPs text placed new technologies and rights under copyright, a
goal that had alluded W.I.P.O. since its last significant revision of the Berne Conven-
tion in 1971. Computer programs and databases (compilations) are both addressed in
the TRIPs text.” The treatment of computer programs is similar to that in the Cana-
dian, U.S. and British acts: computer programs are protected as literary works.”
Databases/compilations are protected under copyright where there is a sufficient
level of selection or arrangement. This provision departs from the traditional principle
‘Ibid, art. 4.
60lbid., art.7.
6! See note 46, supra, and accompanying text for an explanation of the two competing philosophies
of copyright.
UTRIPs text, supra note 58, art. 9.
63 J. Reinbothe & A. Howard, “The State of Play in the Negotiations on Trips (G.A.T.TJUmguay
Round)” (1991) 5 E.I.RR. 157 at 159.
“Although the U.S. is a signatory to the Berne Convention, supra note 1, that treaty lacks effective
enforcement measures. The U.S. and Canada are very careful about signing copyright treaties that
provide members with enforcement powers.
65TRIPs text, supra note 58, art. 10.
“See, respectively, Copyright Act, supra note 6, s. 2; 17 U.S.C. 101-102; Copyright, Designs
and Patents Act 1988 (U.K.), 1988, c. 48, s. 3(l)(b).
MCGILL LAw JOURNAL! REVUE DE DROITDE MCGILL
[Vol. 42
in international copyright law that determinations of originality are left to member
states. In the case of databases/compilations, the American technique set out by the
U.S. Supreme Court in Feist Publications Inc. v. Rural Telephone Service Inc.’ –
of
denying copyright protection where originality is essentially minimal, consisting only
of the “sweat of the brow” of the auth6r-
is embraced. Canada has implemented its
own compilation section which strictly adheres to the TRIPs requirements. It remains
unclear whether Canada continues to embrace the “sweat of the brow” principle in
protecting database creations, or whether the statutory provision has displaced it. It
also remains to be determined whether “sweat of the brow” protection is valid under
the TRIPs agreement, as constituting “more extensive protection”, or whether it
“contravenes the provisions of [that] Agreement”.” More broadly, whether general
principles of originality –
embraced by Anglo-American regimes of copyright since
their inception –
are to be disturbed by the new database/compilation doctrine is an
issue central to copyright reform today.’
Another notable enactment in the TRIPs text that eluded other international multi-
lateral copyright treaties is the inclusion of rental rights for both cinematographic
works and computer programs.’ Both types of work are easily copied using modern
technology –
technology that was not widely available at the last Berne Convention
revision in 1971. Video-cassette rentals and computer-program sales have become es-
sential elements of an information economy. Rights associated with ensuring their ef-
ficient and effective distribution in such a manner as to avoid prejudicing revenues to
the rights holders are essential to such an economy. The TRIPs text recognizes that
the right to authorize such use is essential to maintaining the utilitarian balance of en-
couraging the dissemination of works while also continuing to encourage their crea-
rith digital media (such as computer programs and CD-ROMs) more so than
tion.
with traditional forms of media (such as paper and analog magnetic recordings), the
ability to reproduce works at low cost without any loss of quality has made the rental
right necessary. The idea of a rental right is use-based and represents the future of
digital-rights legislation. The rental right was brought into the Canadian Copyright
Act one year earlier, in 1993, as part of Canada’s obligations under N.A.ET.A.”
67499 U.S. 340 (1991).
68TRIPs text, supra note 58, art. 1.
“The recent case of U&R Tax Services Ltd. v H&R Block Canada Inc. (1995), 62 C.RR. (3d) 257
(F.C.T.D.) [hereinafter U&R Tax] would seem to eschew this new standard of originality with respect
to databases.
70 TRIPs text, supra note 58, art. 11.
7, Section 3(I)(h) of the Copyright Act, supra note 6, was added by the NAFTA Implementation Act,
supra note 4, s. 55(2). It states that a copyright holder has the right,
in the case of a computer program that can be reproduced in the ordinary course of its
use, other than by a reproduction during its execution in conjunction with a machine,
device or computer, to rent out the computer program.
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
979
V. Regional Treaties -The F.T.A. and N.A.F.T.A.
In addition to the multilateral treaties mentioned, Canada also has international
copyright obligations arising from regional agreements such as the F.T.A.’ and the
N.A.ET.A.” Although at the time of these agreements G.A.T.T. rules were in force,
because of the large number of states ascribing to G.A.T.T., changes to trading prac-
tices moved at a slow pace. The intellectual-property initiatives taken in both the
FT.A. and N.A.F.T.A. arose from dissatisfaction with certain measures, or lack
thereof, under G.A.T.T. At the time, G.A.T.T. was unequipped to deal with certain.
trade-related issues, including “intellectual property protection, investment regula-
tions, agricultural trade, trade in high-technology products, and trade in services”. ‘
Canada and the United States, which continue to share the largest bilateral trading re-
lationship in the world,”5 were forced to look towards complementary trading ar-
rangements.
In addition to these G.A.T.T. failings, the dispute-resolution mechanisms outlined
by G.A.T.T. generally make actions under G.A.T.T. a last resort, as the delays and
procedural technicalities involved in their use set a high hurdle for complaining states.
Under the original G.A.T.T., there are numerous mechanisms for resolving disputes.
Article XXII of the Agreement allows consultations by members on any issue. Article
XXIII provides that where a member wishes to lodge a complaint, it must first refer
the complaint to the member whose conduct is in issue. Once done, the complaining
member may then refer the matter to the other contracting members who may appoint
a panel to investigate the dispute and then provide recommendations on its resolution.
This system of dispute resolution takes a long time to complete and is often blocked
by a member state, as the system requires consensus. Other forms of dispute resolu-
tion addressed by the G.A.T.T. include non-tariff barrier codes (added to the G.A.T.T.
in the Tokyo Round), as well as special procedural rules which are applied in the
cases of lesser-developed member states.
The impetus for negotiating N.A.F.T.A. was largely American and arose imme-
diately following the conclusion of the ET.A. negotiations with Canada. N.A.FT.A.
was designed not merely to complement the earlier F.T.A., but to create a new rela-
tionship between the three parties (Mexico, of course, being the third), resulting in
significant overlap with the measures negotiated between the United States and Can-
ada in the F.T.A. In fact, article 103(2) of N.A.FT.A. explicitly states that “in the
event of any inconsistency between this Agreement and such other agreements, this
Agreement shall prevail to the extent of the inconsistency, except as otherwise pro-
vided in this Agreement.”
7 Supra note 5.
7
‘ Supra note 4.
‘ J.A. McKinney, “Dispute Settlement under the U.S. – Canada Free Trade Agreement” (1991)
25:6 World Trade 117 at 117.
7 According to 1991 figures, this trading relationship accounts for roughly 75 percent of Canada’s
foreign trade and for just under 20 percent of U.S. trade (see ibid.).
MCGILL LAW JOURNAL / REVUE DE DROITDE MCGILL
[Vol. 42
N.A.FT.A. addresses trade as it exists between the three participant nations. No
longer is this trade, however, related solely to goods; it now involves invest-
ment/financial services, telecommunication services and intellectual property as
well. ‘ As with the FT.A. and G.A.T.T., N.A.FT.A. is a comprehensive document
which includes detailed measures to provide for the reduction and eventual elimina-
tion of barriers to trade. In order to achieve this goal, N.A.F.T.A. employs various
trade enhancing strategies including national-treatment rules, most-favoured-nation
treatment, the elimination of tariffs, increases in intellectual-property protections, and
the establishment of various dispute-resolution procedures.
A. Intellectual Property under N.A.FT.A.
Surprisingly, one set of provisions that has not raised any great controversy is that
relating to the protection of intellectual property.” Many forms of intellectual property
are covered under N.A.F.T.A., including copyright, trademarks, patents, trade secrets,
industrial designs, integrated circuits, satellite signals and sound recordings. There are
also measures outlining the necessary procedures for enforcing these rights that must
be implemented by each member’s domestic legislation. The inclusion of increased
intellectual-property protections is well within the overall spirit or objective of
N.A.F.T.A., as harmonizing these protections facilitates the freer flow of trade be-
tween the three nations. The United States pushed hard for the inclusion of these
provisions as part of a larger strategy aimed at increasing global intellectual-property
protections. One reason for this action came as a result of increasing domestic pres-
sures to alleviate the U.S. trade deficit. With N.A.FT.A. terms paralleling those of
various other U.S. intellectual-property initiatives, the United States assured itself of a
fallback position –
should those
other initiatives, including the TRIPs text, have failed.
albeit with respect to Canada and Mexico only –
In terms of generally applicable dispute-resolution provisions, N.A.FT.A. pro-
vides for the creation of a Free Trade Commission.” As with the F.T.A., should a
76 The preamble of the N.A.FT.A., supra note 4, states, inter alia:
The Government of Canada, the Government of the United Mexican States and the
Government of the United States of America, resolved to:
FOSTER creativity and innovation, and promote trade in goods and services that are
the subject of intellectual property rights;
“Ibid.,c. 17.
76Under N.A.F.T.A., ibid., art. 2001, the role of the Free Trade Commission is to,
(a)
(b)
(c)
… and
(e)
supervise the implementation of this Agreement;
oversee its further elaboration;
resolve disputes that may arise regarding its interpretation or application;
consider any other matter that may affect the operation of this Agreement..
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
981
party wish to use G.A.T.T. dispute-settlement measures, it may do so. If the other
party disagrees, then N.A.F.T.A. procedures shall govem.’ With respect to disputes
relating to antidumping and countervailing duty matters, disputes are to be settled by
binational panels made up of experts, much like the procedure employed by the
E.T.A.” Also, as with the F.T.A., there is an extraordinary challenge procedure
whereby judicial officials of each country form a committee which may review and
pass final judgment on panel decisions.
Chapter 17 of N.A.FT.A. deals specifically with the protection of intellectual
property. Article 1701 begins by stating generally:
Each Party shall provide in its territory to the nationals of another Party ade-
quate and effective protection and enforcement of intellectual property rights,
while ensuring that measures to enforce intellectual property rights do not
themselves become barriers to legitimate trade.”
With this statement of the general spirit of chapter 17 in place, the Agreement
goes on to state that with respect to copyright, each of the parties shall, as a minimum,
comply with the substantive provisions of both the Berne Convention and the Geneva
Phonograms Convention.’ Becoming a signatory to them, however, is not a require-
ment.” The United States, after years of declining, finally acceded to the Berne Con-
vention in 1989. Consequently, it has, in the past few years, had to adapt its domestic
legislation to meet the requirements of the Paris (1971) revision of the Berne Con-
vention. Mexico was already a signatory to the Berne Convention prior to negotiating
the N.A.F.T.A. As Canada was not a signatory to any revision of this convention after
the Rome revision (1928), it seems clear that this provision was directed specifically
at Canada.
Under N.A.F.T.A., adherence to these conventions is to be regarded as a mini-
mum standard; each state is free to implement stronger protections if it should so
choose. Also contained in chapter 17’s general section is a re-affirmation of the na-
tional-treatment principle which states that each signatory must afford nationals of the
other signatories “… treatment no less favorable than that it accords to its own na-
tionals with regard to the protection and enforcement of all intellectual property
rights.””
B. N.A.FT.A. Copyright Provisions
Following N.A.F.T.A.’s general intellectual-property provisions, article 1705
contains specific provisions that apply only to copyright. Protected works include
those covered by the Berne Convention, 1971, as well as two important additions:
computer programs and databases. Computer programs, as in the Possible Protocol to
‘9 Ibid, art. 2005.
“0 Ibid, art. 1904.
“Ibid, art. 1701(1).
82 Ibic, art. 1701(2)(a)&(b).
“Ibid, art. 1701(2).
Ibid, art 1703(1).
982
MCGILL LAW JOURNAL / REVUE DE DROIT DE MCGILL
[Vol. 42
the Beme Convention,” are to be protected as literary works within the meaning of
article 2 of the Berne Convention. Compilations of material which form databases al-
ready arguably protected, at the time, as collections under article 2(5) of the Berne
Convention, were re-affirmed as protectable by article 1705(1)(b) of N.A.F.T.A.,
which states that
compilations of data or other material, whether in machine readable or other
form, which by reason of the selection or arrangement of their contents consti-
tute intellectual creations, shall be protected as such.
This database protection, of course, only extends to the arrangement of the work as a
whole, and does not affect the copyrightability, whether it exists or not, of the con-
stituent elements that make up the database.
Article 1705(4) deals with the duration of copyright and qualifies the copyright
term of “the life of the author and fifty years”, as fixed for most works (subject to
some exceptions) by the Berne Convention.’ The article states that, with the exception
of photographic works or works of applied art, where a party derogates from the term
under one of the Berne exceptions, it shall not fix the term at a period less than
50 years from the end of the calendar year of the first authorized publication of
the work or, failing such authorized publication within 50 years from the mak-
ing of the work, 50 years from the end of the calendar year of maldng.”‘
C. Canadian Implementation of N.A.RT.A. Copyright Provisions
In addition to adhering to the 1971 Berne Convention requirements, Canada was
obligated, as a result of N.A.F.T.A., to include the concept of a rental right in the Ca-
nadian Copyright Act.” Prior to the provision’s enactment, it was unclear whether or
not copyrightable computer programs could be commercially rented by persons with-
out express authorization from the copyright holder. Under Canadian law there was
no express copyright protection for rentals of original or legitimate copies of a work.
The Copyright Act merely prohibited the “let[ting] for hire [of] … any work that to the
knowledge of that person [the lessor] infringes copyright or would infringe copyright
if it had been made within Canada.”‘ This section was designed to catch the further
offence of distributing already infringing works, and not to prohibit rentals generally.
Protection of compilations was added to the Copyright Act following N.A.F.T.A.”
Prior to 1993, the definition of “literary work” included “tables, compilations, trans-
5 Supra note 23.
Berne Convention, supra note 1, art. 7.
“7N.A.ET.A., supra note 4, art. 1705(4).
See text above, accompanying note 70.
“Copyright Act, supra note 6, s. 27(4).
9Section 2 of the Copyright Act, ibid (as am. by the NAFTA Implementation Act, supra note 4, s.
53(3)), defines compilation as:
(a) a work resulting from the selection or arrangement of literary, dramatic, musical or
artistic works or parts thereof, or
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
983
lations, and computer programs.” The definition has since been amended to clarify
that “compilation” under the category of literary works only refers to literary compi-
lations. Literary works are currently defined as including “tables, computer programs,
and compilations of literary works.”‘” What the difference is between “literary compi-
lations” and “compilations” generally is not clear. It would appear to make the former,
narrower definition redundant. The area of database protection is relatively new to the
courts. Given the importance of compilation protection in an information economy, it
is certain that further juridical guidance will be forthcoming in the near future. The
first great debate that will undoubtedly occur is whether or not the Copyright Act ex-
tends compilation protection to cases where there is only “sweat of the brow” –
that
is, mere labour –
expended in the creation of the compilation, or whether the new
section in the Copyright Act is exclusive and requires that protection only be granted
where there is a sufficient level of “selection and arrangement”.’
Other notable provisions that relate to copyright concern the protection of sound
recordings and semi-conductor chips. Although protection of the recordings of songs
may, in some countries, be considered neighbouring rights, in Canada and the U.S., it
forms a part of copyright. Article 1706 of N.A.F.T.A. requires that each member state
protect sound recordings in a manner similar to copyright and provides the rights
holder with rights of first publication and rental. It fixes the minimum term at fifty
years from the fixation of the recording.
VI. Unilateral Trade Sanctions: The U.S. Example
Arguably the most important recent development in international trade, which di-
rectly affects Canadian and other foreign intellectual-property policy, is the increas-
ingly aggressive approach to trade taken by the United States. It has served as a cata-
lyst for the recent treaty proposals and general heightened activity in the area of intel-
lectual-property law. In 1985, for the first time in decades, the United States became a
net debtor in trade. The effect of this situation prompted the U.S. government to ag-
gressively step up efforts to seek trade benefits in areas other than manufacturing, in
which the U.S. has been increasingly unable to compete on the world market. Can-
ada’s situation is no different in this respect, except in the fact that Canada has good
access, both geographical and by virtue of trading agreements, with a much larger
the United States. Intellectual property, on the other hand, continues
trading partner-
to remain an American strength. The linking of intellectual property to a proactive
American trade policy is, therefore, not surprising.
The United States put this policy into action in the mid-1980s, immediately fol-
lowing a period of severe economic recession. The U.S. Trade Act of 1974″ was
(b) a work resulting from the selection or arrangement of data;
9, Copyright Act, ibid, as am. by the NAFTA Implementation Act, ibid., s. 53(2).
2 In the case of U&R Tax, supra note 69, the court held that “sweat of the brow” was in and of itself
sufficient to afford a work copyright protection. See also Handa, “Addendum: Copyright As It Ap-
plies To Computer Programs In Canada” (1995) 26 I.I.C. 527 at 530-3 1.
9′ 19 U.S.C. 2101-2495.
984
MCGILL LAW JOURNAL! REVUE DE DROITDE MCGILL
[Vol. 42
amended in 1988, as part of the Omnibus Trade and Competitiveness Act of 1988,” to
include the protection of intellectual-property rights as a “priority”. Under those
amendments, the U.S. Trade Representative (“U.S.T.R.”) was given the power to in-
stitute special “301 actions”9′ against countries that he or she feels do not respect U.S.
intellectual-property rights. These amendments were preceded by the passage of the
U.S. Trade and Tariff Act of 1984,” which provided the president with the power to
take retaliatory action against countries whose intellectual-property laws did not live
up to American standards.
In addition to these provisions, there is also a special review procedure conducted
annually to evaluate which countries fail to meet American standards of intellectual-
property protection or do not provide “fair and equitable” market access to those
products and businesses that rely on intellectual-property protection. These countries
may eventually be designated “priority foreign countries”, but are first placed within
one of two further categories –
de-
pending on the severity of their failure. These fists serve as stepping stones towards
being named a “priority foreign country”. The lists are also publicized as a warning to
American businesses considering intellectual-property-related investments in those
countries.
“priority watch list” and “watch list” countries –
For developing countries, there lies the additional risk of losing beneficiary status
in the U.S. under the Generalized System of Preferences (G.S.P). The G.S.P provides
preferential trade treatment to qualifying countries such that certain products from
these countries may be imported into the U.S. at reduced tariff rates.’ The Trade Act
amendments link the G.S.P. program and intellectual property such that the G.S.P.
status is to be granted taking into account “the extent to which such country is provid-
ing adequate and effective protection of intellectual property rights”.” Use of the
G.S.P. has the potential to change the pattern and extent of the world’s intellectual-
property protection to that which is endorsed by the United States. Many developing
countries lack strong regimes of intellectual property and are not economically ad-
vanced to the point at which they would demand toughening up. Trading the enact-
ment of intellectual-property protections, which may only marginally affect a strug-
94Pub. L. No. 100-418, 1301-1303, 102 Stat. 1107 at 1164-81 (codified as amended at 19 U.S.C.
2411ff.).
9 Section 301 of the Trade Act of 1974 (Pub. L. No. 93-618, 88 Stat. 1978) empowered the presi-
dent to take retaliatory measures (e.g., withhold trade-agreement concessions or impose tariffs)
against foreign countries that imposed restraints on or were interfering unreasonably with U.S. com-
mercial access to those markets. The section was modified by the Omnibus Trade and Competitive-
ness Act of 1988, ibid. Under the amendments, a new mechanism was introduced whereby t1e
U.S.T.R. could identify (review the legislation and investigate practices of the foreign country and in-
vestigate specific complaints), and take retaliatory action against, countries that did not adequately
protect intellectual-property rights held by American commercial interests.
“Pub. L. No. 98-573, 304, 98 Stat. 2948 at 3002.
919 U.S.C. 2242(a)(1).
” 19 U.S.C. 2461.
“19 U.S.C. 2462(c)(5).
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
985
gling economy, for preferential trade status in the U.S. is often beneficial in the short
run. But the long-run benefits of the change are generally uncertain.
The effectiveness of the section 301 mechanism in the international intellectual-
property field should not be underestimated. On 23 May 1993, the U.S.T.R. com-
menced a section 301 investigation against Brazil for failing to provide adequate intel-
lectual-property protection to American products. The U.S.T.R. terminated the inves-
tigation on 28 February 1995, after the Brazilian government agreed to implement a
course of legislative action that assuaged American demands. This situation was mir-
rored in 1994 with China. On 30 June 1994, the U.S.T.R. named China a “priority
foreign country” and launched a section 301 investigation. China finally capitulated
and promised to improve its enforcement of intellectual property laws.’ Examples of
other countries that have agreed to comply with American special 301 pressure in-
clude Thailand, India, Egypt, South Africa, Korea, Poland and Italy.”‘
Canada has not escaped the watchful eye of the U.S.T.R.. Under the 1995 special
301 review, Canada was named to the “watch list”, along with twenty-three other
countries. Eight countries were named to the “priority watch list”, but no one was
named a “priority foreign country”. Canada also found itself the subject of a section
301 investigation with respect to a Canada Radio-television and Telecommunications
Commission (“C.R.T.C.”) decision that revoked the broadcast license of Country
Music Television (“C.M.T.”), an American-based cable company.”3 C.M.T. filed a
petition with the U.S.T.R. alleging that the revocation of its broadcast license by the
C.R.T.C. constituted an unfair trade practice The C.R.T.C. issued the license to a Ca-
nadian competitor of C.M.T., New Country Network (“N.C.N.”). The U.S.T.R. agreed
and launched a section 301 investigation on 6 February 1995, which was privately
settled in March 1996 by the privdte parties involved (C.M.T. and N.C.N.).”‘ The
U.S.T.R. has since withdrawn its investigation. The case is instructive as an indicator
of U.S. policies regarding intellectual property vis-?&-vis Canada. Canadian opponents
to the U.S. move had argued that the license decision was allowed as part of the cul-
tural exemption under the F.T.A. If there is a valid treaty exemption, such as the cul-
tural exemption, then the 301 powers cease to apply. The U.S.T.R. disagreed with this
F.T.A. interpretation.
In this way, the U.S. trade amendments of 1988 have created an environment
where it is in a country’s interest to enter into a negotiated agreement with the U.S. in
” At the time of this writing, China had still not complied in full with U.S. demands. In May 1996,
the U.S. announced sanctions of 100 percent on Chinese exports unless intellectual-property laws
were enforced against organized piracy copying everything from American movies to computer soft-
ware (see D. Fagan, “U.S. Slaps China with Massive Trade Sanctions” The [Toronto] Globe and Mail
(16 May 1996) Bl).
‘”‘ See “VIII. Trade Enforcement Activities” in 1996 Annual Report of the President of the United
States on the Trade Agreements Program, http:llwww.ustr.gov/reports/tpa/1997/part8.html (20 July
1997) [hereinafter “Trade Enforcement Report’].
” C.R.T.C. Public Notice 1994-59, C. Gaz. 1991.1.3034 and C.R.T.C. Public Notice 1994-61, C.
Gaz. 1991.1.3038.
‘a’ See “Trade Enforcement Report’, supra note 101.
986
MCGILL LAW JOURNAL/REVUE DE DROITDE MCGILL
[Vol. 42
affected fields such as intellectual property. Not to do so risks investigations and
sanctions for the most minor of deviations from U.S. policy. Whether one agrees with
this form of economic bullying or not, one cannot deny its effectiveness.
VII.
Other Global Developments: The European Union
The practice of associating intellectual-property rights with trade in other goods is
not new; it has, however, been increasing recently. For example, the European Eco-
nomic Community (E.E.C.) (now the European Union (E.U.)), did not deal with intel-
lectual-property issues upon its inception. The purpose of its founding treaty –
the
Treaty of Rome” – was to form a common economic market by encouraging the free
flow of goods and services through the elimination of trade barriers between member
states.” The Treaty of Rome was expanded in 1992 by the Treaty of Maastricht.”4 The
area of intellectual property, and more specifically copyright, is not addressed by
these treaties. It was not initially recognized as a barrier to trade and has since been a
difficult area to harmonize.”7 The European trade calculus is no different than for
other countries or regions: a lack of harmonized protections in a member state can
lead to an influx of products, effectively wiping out one’s own industry. Overprotec-
tion, on the other hand, may cross the line and be considered an infringement upon
the free movement of goods, and act as a non-tariff barrier, giving rise to internal mo-
nopoly situations in a member state. Although harmonization has proven difficult, the
need has intensified for clear inter-state intellectual-property rules as trade in infor-
mational products has increased.”4 Although little has been written with respect to
1o4 Treaty Establishing the European Economic Community, 25 March 1957, 298 U.N.T.S. 4,
U.K.T.S. 1979 No. 15 [hereinafter Treaty of Rome].
Ibid, arts. 30-34.
Treaty on European Union, 7 February 1992, O.J. (1992) No. 191/1, 31 I.L.M. 247.
I0, n 1959, the E.E.C. charged working parties to look into issues of patents and trademarks. Copy-
right was ignored because it represented the rights of authors which had traditionally been quite stable
and of little economic importance. These working parties attempted to devise intellectual-property
rules for the E.E.C. as a whole which could be grafted onto national laws. By 1962, these initiatives
had been abandoned. Instead, national laws have since then been worked on to achieve the same
goals (see T.M. Cook, “Copyright in the European Community” (1992) 2 Legal Issues of European
Integration 67 at 68).
‘ Patent protection has been successfully standardized in the E.U. through the use of both the Con-
vention on the Grant of European Patents, 5 October 1973, U.K.T.S. 1978 No. 20, 13 I.L.M. 270
[European Patent Convention] (“E.P.C.”) and the Patent Cooperation Treaty, 19 June 1970, U.K.T.S.
1978 No. 78, 28 U.S.T. 7645 (“P.C.T.”). A central filing office known as the European Patent Office
(E.P.O.), which follows the E.P.C., has also been set up for states who are participants in the E.P.C.
(members include Germany, Greece, the Netherlands, Spain, the United Kingdom, Switzerland,
Liechtenstein, Luxembourg, Italy, France, Sweden, Austria, and Belgium). Under the E.PC., a filing
with the E.P.O. will cause individual national patents to be registered in all of the member countries.
Both international patent regimes (E.P.C. and P.C.T.) have developed into an effective way to protect
computer software and its related processes, paralleling patent protections available in the U.S. There
also exists the Convention for the European Patent for the Common Market, 15 December 1975, O.J.
Legislation (1976) No. 17/1, 15 LL.M. 5 [Community Patent Convention] (“C.PC.”), which has yet to
take effect. Ireland and Denmark have still not ratified the terms of this convention, which when in
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
987
gaming”‘ and intellectual property in trade relationships, as a theory that explains re-
sistance to harmonization it clearly deserves attention.
Clearly EU rules do not directly apply to Canada and do not directly affect Ca-
nadian legislation or policy. Many countries of the world support trading arrange-
ments that affect copyright and intellectual-property rights but do not directly affect
Canada. There may, of course, be indirect effects. Typically these will be small. How-
ever, in the case of a large trading block such as the EU, the effects are magnified.
Their copyright arrangements are therefore of interest to Canadians.
The European situation also provides a good example of the inherent inconsis-
tency of nationally-based intellectual-property rules in the context of a trading rela-
tionship where the primary goal is to abolish non-tariff barriers. From Canada’s per-
spective, with current membership in G.A.T.T. and N.A.ET.A., the EU model pro-
vides an example of a more developed trading relationship. The dilemma arises from
the fact that intellectual-property protections, including copyright rules, serve as non-
tariff barriers to trade and allow the division of markets along national boundaries.
The existence of such laws, of course, runs counter to the mandate and objectives of a
trading block, such as the EU, N.A.FT.A. or G.A.T.T.”‘ This incongruity has consis-
tently put great pressure on the European Commission to push for standardized com-
munity-wide protections.”‘ The differences in domestic laws and their philosophical
force will allow for a Community wide patent to exist, as opposed to the individual filing system cur-
rently effected under the E.PC.
“”Gaming” in trade refers to the ability for a state to withhold its approval in creating new trade
rules in order to enhance its trade balance. With intellectual-property rules, this can be achieved by
loosening and tightening rules depending on the comparative position of a particular industry (e.g.,
film production or computer software development). Enhancing one’s position is a tricky job and re-
taining the ability to manipulate the rules is vital. By signing a treaty that fixes the rules at a mini-
mum, one loses the ability to manipulate them for advantage in the future.
“‘The three competing provisions in the Treaty of Rome, supra note 104, relevant to intellectual
property, as discussed by the European Court of Justice in S.A. CNL-SUCALNVv. HAG GFAG (No.
10/89), [1990] C.J.E.C. Rep. 3711 at 3728, (1990) 3 C.M.L.R. 571 at 578-579 [hereinafter CNL-
SUCAL cited to C.J.E.C. Rep.], are:
Article 30 …Quantitative restrictions on imports and all measures having equivalent ef-
fect shall, without prejudice to the following provisions, be prohibited between Mem-
ber States.
Article 36 …The provisions of Articles 30 to 34 shall not preclude prohibitions or re-
strictions on imports, exports or goods in transit justified on grounds of … the protec-
tion of industrial and commercial property. Such prohibitions or restrictions shall not,
however, constitute a means of arbitrary discrimination or a disguised restriction on
trade between Member States.
Article 222 …
governing the system of property ownership.
‘ The European Court of Justice recognized that,
This Treaty shall in no way prejudice the rules in Member States
Articles 30 and 36 articulate a conflict between two competing interests. On the one
hand, Article 30, together with the succeeding articles, lays down the fundamental
principle of the free movement of goods. On the other hand, Article 36 safeguards,
MCGILL LAW JOURNAL / REVUE DE DROITDE MCGILL
[Vol. 42
underpinnings combined with the gaming of member states has prevented this from
happening in the copyright arena.”2 According to one commentator, “there will not be
a unified European copyright law in the near future. The national copyright laws of
member states will continue to apply …
Conclusion
Several documents prepared by and for the Canadian government in recent years
have recognized that the level of copyright protection granted in Canada, a net im-
porter of copyrighted material, can seriously affect Canada’s trade deficit, and have
warned that Canadian copyright policy must proceed with caution. These warnings
have existed for half a century, beginning with the Ilsely Commission Report”‘ in
1957, and have to some degree shaped Canada’s copyright policy to date. In that re-
port, it was suggested that Canada should not adhere to the 1948 Brussels revision of
the Berne Convention.”‘ Part of the problem was the inclusion of a retransmission
right in the 1948 revision which would have resulted in a net outflow of Canadian
dollars to the United States. The report did, however, recommend accession to the
U.C.C. as there would be a perceived benefit to Canadian rights holders through the
measures set out therein.’ ‘6
amongst other things, intellectual property rights, which, owing to their territorial na-
ture, inevitably create obstacles to the free movement of goods. Article 36 goes some
of the way towards explaining how that conflict is to be resolved (CNL-SUCAL, ibid.).
,,2 The situation is not altogether bleak. There have been several directives passed concerning
copyright and neighbouring rights. Member states must implement the directives into their national
laws, although they are permitted to change the language (and consequently, often the exact intended
effect). Examples of recent directives that effect copyright include: European Council Directive
91/250 of 14 May 1991 on the Legal Protection of Computer Programs; European Council Directive
93/98 of 29 October 1993 Harmonizing the Term of Protection of Copyright and Certain Related
Rights; European Council Directive 96/229 of 11 March 1996 on the Legal Protection of Databases;
European Council Directive 93/83 of 27 September 1993 on the Coordination of Certain Rules Con-
cerning Copyright and Rights Related to Copyright Applicable to Satellite Broadcasting and Cable
Retransmission; European Council Directive 92/100 of 19 November 1992 on Rental Right and
Lending Right and on Certain Rights Related to Copyright in the Field of Intellectual Property.
,, S. von Lewinski, “Copyright in the European Communities: The Proposed Harmonization
Measures” (1992) 18 Brooklyn J.I.L. 703 at 703. In an attempt to strengthen copyright law within the
E.E.C., in 1990 the European Commission adopted a proposal that would require accession, by all
member states, to various international copyright and neighbouring-rights treaties, including the
Berne Convention, supra note 1 and the Rome Convention, supra note 19 (ibid. at 708).
“” Canada, Royal Commission on Patents, Copyright, Trade Marks and Industrial Design, Report
on Copyright (Ottawa: Government of Canada, 1957).
… See ibid at 15-16.
,,6 Canada eventually acceded to the U.C.C., supra note 2, in 1962. At the time, the United States
was a member of the U.C.C., having joined in 1955, but continued to refuse membership to the Berne
Convention, supra note 1. Today, most countries have acceded to the more rigorous Berne Conven-
tion, most notably the United Stated (1989), and China (1993). The U.C.C., administered by
U.N.E.S.C.O., has therefore lost much of its strength as an international agreement, since its protec-
tions are dwarfed by those in the Berne Convention.
1997] S. HANDA – CANADA’S INTERNATIONAL COPYRIGHT OBLIGATIONS
989
Another report released twenty years later, entitled Copyright in Canada,”‘ also
focused its proposals to amend the Canadian Copyright Act on the financial concerns
of Canadian rights holders by comparing potential copyright inflows and outflows.
The report recommended that Canada avoid extending protection of retransmission
rights to works protected under both copyright conventions while extending retrans-
mission rights to Canadian broadcasts, thus conferring a net benefit on Canadian
rights holders.”‘ Other recommendations of the report included keeping the protection
of computer programs outside the Copyright Act, as well as joining the Geneva Pho-
nograms Convention,”” as the reciprocity requirements would result in a net gain for
Canadian record producers.’20 In reflecting upon what Canada’s policy approach to the
Berne Convention and U.C.C. should be, the report noted that
the two international copyright conventions lack flexibility to deal with an in-
creasing array of subject matter, as illustrated by the growing incidence of in-
ternational treaties that deal with subject matter outside the scope of the two
copyright conventions….
Mhe fully developed nations, largely exporters of copyright material, have a
stronger voice in international copyright conventions, and a tendency has ex-
isted over the past half century for developing countries, including Canada, to
accept too readily proffered solutions in copyright matters that do not reflect
their economic positions.’2 ‘
The latter part of this statement has proved most prophetic in the last five years,
with the United States deciding to actively pursue intellectual-property rights as part
of a global trade initiative.'” Other areas of American activity in securing stronger in-
tellectual-property protections are evidenced by increased regional protection agree-
ments (such as the F.T.A. and now N.A.ET.A.); increased U.S. involvement in inter-
national intellectual-property organizations such as W.I.P.O.; multilateral trading
agreements such as G.A.T.T., with the U.S. introduction of the TRIPs text; and in-
creased U.S. participation in multilateral intellectual-property agreements such as the
Berne Convention.
Both N.A.ET.A. and G.A.T.T. provide strong evidence that Canadian intellectual-
property policy is being increasingly dictated by external pressures from trading part-
ners. This is not necessarily an unfavourable shift as copyright law is, in a Canadian
context, largely designed to create and accommodate the transfer of rights with a
utilitarian objective. With Canada moving towards the development of comparatively
strong export markets in informational products, it is in the Canadian interest to en-
sure that these products receive universal protection. The cost of such a move has
” A.A. Keyes & C. Brunet, Copyright in Canada: Proposals for a Revision of the Law (Ottawa:
Consumer and Corporate Affairs, 1977).
” See ibid at 106-107.
” Supra note 20.
0 See Keyes & Brunet, supra note 117 at 111 (computer programs), 227 (joining the convention).
See also Keyes, supra note 35 at 302-303.
12 Keyes & Brunet, ibid. at 234.
1’ See text above, accompanying notes 93-103.
990
MCGILL LAW JOURNAL/REVUE DE DROITDE MCGILL
[Vol. 42
been the loss of control, primarily due to American influences, of what rights copy-
right should protect. Canadian philosophical, social and political values, while similar
to those of the Americans, have some noticeable differences. The increasing inability
to use copyright as a tool to ensure cultural protection will be a loss of power for Can-
ada. To hold out for the expression of those values in the field of intellectual property,
however, will no doubt prove to be a difficult, if not futile, maneuver, yielding few
gains. With increased economic reliance on intellectual-property products, the U.S.
has made intellectual-property rights compliance a high priority and has equipped its
president with strong trade-sanction powers to ensure such compliance. For Canadian
legislators and policy makers, a careful exploitation of those differences, in order to
achieve concessions in other areas of trade, as was done during the F.T.A. negotia-
tions with respect to retransmission rights, is an opportunity that should not be
missed.
Finally, as trading barriers are reduced and global markets unified, there will be
pressure to harmonize copyright rules. The tension between competition law and
copyright, largely unexplored in Canadian jurisprudence, will likely be brought to the
fore. It may provide Canadians with yet another tool to be deployed in the intema-
tional arena. The modem trend is clear: the national nature of copyright law is being
pushed aside in favour of unified copyright rules within blocs of nations. The rules
governing intellectual property are brought one step closer to this end with each
passing trade agreement. Canadians need not fear this change. Rather, they may em-
brace it. As the information highway continues to develop, Canada should take advan-
tage of its privileged position'” to foster the development of content industries.
‘3Canada boasts the highest per-capita telecommunication connectivity rates with respect to cable
and telephone in the world. Recent estimates put the percentage of homes with cable at 79 percent (of
the 96 percent of households with access to it), and telephone at 99 percent. Furthermore, it is esti-
mated that 40 percent of homes now have personal computers (see Canada, Connection, Community,
Content: The Challenge of the Information Highway (Final Report of the Information Highway Advi-
sory Council) (Ottawa: Supply and Services Canada, 1995) c. 1).
