Expert Report of Dr. Mihaly Ficsor, March 6, 2013-OTT_LAW-35392_1

7/29/2019 Expert Report of Dr. Mihaly Ficsor, March 6, 2013-OTT_LAW-35392_1

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Dr. Mihly Ficsor

Member and Honorary President of the

Hungarian Copyright Experts Council,

former Assistant Director General of WIPO

[email protected] March 2013

Expert opinion on the international norms on the right of making available to

the public and on its application in countries where it has been implemented

I. Introduction

This expert opinion has been prepared at the request of the Society of Composers, Authors

and Music Publishers of Canada (SOCAN).

SOCAN has asked me to answer the following four questions in this expert opinion:

Question 1: What was the intention of the drafters of the provisions on the making

available right in the WIPO Copyright Treaty (WCT) and the WIPO Performances and

Phonograms Treaty (WPPT) and how this is reflected in the Treaties?

Question 2: What influence, if any, the nature/purpose of subsequent transmission

(streaming or downloading) is supposed to have on the completion of the act of

making available covered by this right?

Question 3: How has the making available right been implemented in other countries?

Question 4: How is the making available right in musical works licensed in other

countries, and how the remuneration is distributed depending on the nature/purpose

of the transmission (streaming or downloading)?

SOCAN has made available to me certain documents concerning recent legislative and case

law developments in Canada (which I otherwise had followed with interest also before).

Thus, I may take into account for my opinion (i) the decision of Copyright Board adopted on

18 October 2007, approving SOCANs Tariff No. 22.A (InternetOnline Music Services) 1996-2006; (ii) the above-mentioned rulings of the Supreme Court of Canada adopted still

before the entry into force of the CMA in which the Court found that the right of

communication to the public is not applicable in the case of download online services; (iii)

the decision of the Copyright Board adopted on 5 October 2012 (that is, still before the

entry into force of the CMA) on SOCANsTariff 22.A (InternetOnline Music Services), 2007-

2010 and CSI Online Music Services Tariff, 2008-2010 in accordance with the said ruling of

the Supreme Court.

I declare that, although it is SOCAN which has requested me to prepare this opinion, I do not

represent SOCAN (or any other parties in the proceeding in front of the Copyright Board) in


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the examination procedure and I submit my expert opinion in accordance with the relevant

facts to my best knowledge and my professional persuasion on the issues involved.

II. Relevant professional experience

From May 1985 to January 1999, I served as Director, and, from September 1993, as

Assistant Director General of WIPO in charge of copyright. My tasks included the preparation

of documents for, and acting as the head of the Secretariat at, meetings on various copyright

issues; advising governments and legislative bodies on the interpretation of international

copyright norms; proposing, and commenting on, draft legislation (in particular, concerning

the interpretation and implementation of the Berne Convention, the Rome Convention, the

WCT and the WPPT); and the representation of the Organization at meetings of other

intergovernmental and non-governmental organizations.

In this capacity, I was the main responsible of the preparation of the two so-called Internet

Treaties; the WCT and the WPPT. I participated in all the Committee meetings, in all worldforums on the issues of digital technology, in all the regional consultations, and in all

sessions of the Diplomatic Conference adopting the Treaties (of which I was the Secretary),

including all the informal consultations where certain provisions were negotiated.1

As the key representative of WIPO in the preparatory work and in the negotiations, there

were several issues where I had to act as a catalyst to forge some reasonable and generally

acceptable compromise solutions. The legal characterization of the applicable exclusive

right or rights for the acts of including works and objects of related rights in the Internet

for interactive use (for any kind of use by those who may get access to them) was one of

these issues. In fact, it seemed to be the biggest issue as potential obstacle to agreementbetween such key negotiating parties as the United States and the European Community.

This thorny problem was solved through the so-called umbrella solution serving as a basis

of the recognition of the right of (interactive) making available to the public which had been

worked out by me and offered to the negotiating parties in the way described below.

After the Diplomatic Conference, still in the position of Assistant Director General of WIPO

until my retirement at the end of 1998, I played active role in the promotion of ratification

of, accession to and due implementation of the two Treaties. Also since my retirement I have

spoken about the Treaties, including their provisions on the right of making available to thepublic, at a great number of meetings around the world and have published several articles

and books on them.

1

For a detailed description of the preparation of the two Treaties (as regards the provisions on the makingavailable right), see Mihly Ficsor: The Law of Copyright and the Internet The 1996 WIPO Treaties, their

Interpretation and Implementation, Oxford University Press, 2002 (hereinafter: Ficsor, Oxford (pp. 145-254).


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At the request of the Organization, I have prepared the WIPO Guides to the WCT and the

WPPT published in 20032

and I am the author of one of the two basic treatises on the two

Treaties published by Oxford University Press in 2002.3

A short biography is attached to this opinion also reflecting my other professional activities,

of which I only mention here that (i) before joining WIPO, between 1976 and 1985, I was theDirector General of the Hungarian Copyright Bureau (and in that capacity, I represented my

country at the copyright meetings of, WIPO and Unesco, and chaired several of them); (ii) I

have had different roles in WTO dispute resolution procedures; inter alia, I was a member of

the WTO panel which, in 2000, interpreted for the first time the three-step test for the

application of IP exceptions; (iii) I was the Chairman of the Working Group which prepared

the first draft of the Unesco Convention for the Protection and Promotion of the Diversity of

Cultural Expressions finally adopted in 2007; and (iv) in my country, after my retirement

from WIPO, since 2000 I have been a member of the Board of the Copyright Experts Council4

of which, until 2011 I was also the President and since then I have been the Honorary

President.

III. Executive summary

short answers to the questions

Question 1: What was the intention of the drafters of the provisions on the making available

right in the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms

Treaty (WPPT) and how it is reflected in the Treaties?

Answer: The intention which is duly reflected in the text of the relevant provisions of

the two Treaties and which is also confirmed by their preparatory work was toprovide for an exclusive right in order to control the decisive act of uploading and

making accessible for interactive use of protected works and objects of related rights

on the Internet irrespective of the nature/purpose of the transmissions that may take

place in the course of such use. The relevant provisions of the WCT and the WPPT

were adopted by the 1996 Diplomatic Conference on the basis of a unanimous

understanding that the making available right is applicable both where the resulting

interactive use takes the form of transmissions only allowing perception of and where

they may result in downloading of the works (performances and/or phonograms) thus

made available.

2Mihaly Ficsor: Guide to the Copyright and Related Rights Treaties Administered by WIPO ,WIPO publication

No. 891 (E), 2003, (later also published by WIPO in translation into French (No. 891(F)) and into other official

languages of WIPO) (hereinafter: WIPO Guide).3See note 3 above.

4The 150-member Council, its 15-member Board and its President are appointed by the Minister of Justice, and

the Hungarian Intellectual Property Office fulfills the role of its secretariat. It acts as an advisory body on

governmental copyright policy issues; provides experts opinions for the courts, prosecutor offices and other

authorities; and functions as a mediation forum in copyright disputes, in particular between collecting societiesand users of works and objects of related rights as regulated in Articles 101 to 105 of the Hungarian Copyright

Act (Act LXXVI of 1999 amended several times).


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Question 2: What influence, if any, is the nature/purpose of subsequent transmission

(streaming or downloading) supposed to have on the completion of the act of making

available covered by this right?

Answer: The act of making available to the public is completed as soon as the work or

the object of related rights is made available by uploading it for interactive accessirrespective of what kind of interactive use (streaming or downloading) is made

possible, and it exists whether or not the work or object of related rights is actually

transmitted at all.


Answer: In the key markets, in general (in the overwhelming majority of countries),

the right of making available to the public has been implemented adequately in

accordance with the nature of the right reflected in the text of the relevant provisions

of the WCT and the WPPT; that is, as an exclusive right to control the uploading ofworks and objects of related rights by offering interactive access irrespective of the

nature/purpose of the use (streaming and/or downloading) and irrespective of the

whether or not any actual interactive transmissions takes place.

Question 4: How is the making available right in musical works licensed in other countries,

and how the remuneration is distributed depending on the nature/purpose of the

transmission (streaming or downloading)?

Answer: The licensing of the making available right in musical works, in general, takes

place by collecting societies managing performing (or representation) rights andmechanical rights. Where these rights are managed separately by performing

rights and mechanical rights organizations, the two organizations normally offer

joint licenses. The nature/purpose of the interactive use (whether streaming or

downloading) irrespective of whether the repertoire of same organization covers

these rights or two organizations grant joint licenses is taken into account in the

shares due to the owners of the respective rights; usually in a way that, in the case of

streaming, a bigger share goes to performing rights, while in the case of

downloading, a bigger share goes to mechanical rights (on the understanding that

the making available right is applicable in all these cases).

IV. Answers to the questions in detail

Question 1: What was the intention of the drafters of the provisions on the making

available right in the WIPO Copyright Treaty (WCT) and the WIPO Performances and

Phonograms Treaty (WPPT) and how it is reflected in the Treaties?

The WIPO Guide to the WCT describes the intention of the drafters of the provision on the

right of making available to the public included in Article 8 of the WCT:

CT-8.1. In the course of the preparatory work of the WCT and the WPPT, there was agreementthat the inclusion of works and objects of related rights in, and their transmission through,


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the Internet and in similar possible future networks should be subjected to an exclusive right

of authorization of authors. There was also quite a general wish to try to apply existing

norms to this new phenomenon (since, on the basis of such norms, established practices had

emerged, long-term contractual relations had been based, and so on).

CT-8.2. When the existing rights were considered for the application of interactivetransmissions, it had to be seen that digital interactive transmissions somewhat confused the

borderline between the two traditional and clearly separated groups of rights: copy-

related rights and non-copy-related rights.5

CT-8.3. Digital interactive transmissions have confused the borderline between these two

groups of rights in two ways. First, commercial dissemination of protected material in

interactive networks may and certainly will take place with the application of technological

measures which allow access and use only if certain conditions are met by the members of the

public. Thus, the actual extent of the use is not necessarily determined at the moment of

making available of a work or object of related rights and by the person or entity alone who

or which carries out the act of making available. It is the given member of the public, who,through a virtual negotiation with the system, may obtain access and the possibility to use the

protected material, and who, through this system, chooses whether the use will be deferred

(on the basis of obtaining a more than transient copy) or direct (such as on-line studying of a

database, on-line watching of moving images, on-line listening to music). Second, with digital

transmissions, some hybrid forms of making available of works and objects of related rights

emerge which do not respect the pre-established border between copy-related and non-

copy-related rights (when a copy is obtained, it is also through the transmission of electronic

impulses, and, when protected material is used on-line, even in real time, it also involves the

making of at least temporary copies).

CT-8.4. In view of this nature of interactive transmissions, it was hardly a surprise that, when it

came to the question of which existing rights should be applied to cover such transmissions,

the various countries did not find themselves necessarily on the same side of the copy-related

rights/non copy-related rights border. Two major trends emerged: one trying to base the

solution on the right of distribution; and the other one preferring some general

communication to the public right. It was not merely on some theoretical bases that this or

that country favored this or that solution. The positions very much depended on the existing

national laws (which rights, for whom, and to what extent, existed), on the practices

established, the positions obtained on the basis of those laws, and, as a consequence, on the

related national interests involved.

CT-8.5. When it became clear that the international copyright community was faced with two

basic options the application of the right of distribution or the application of the right of

communication to the public and, of course, also with the further possibility of combining

these options somehow, it was soon recognized that the adoption of those options was not so

5[Original note 226 in the Guide] Copy-related rights (such as the right of distribution, the right of rental or the

right of public lending (where recognized)) cover acts by means of which copies are made available to the

public; typically for deferred use, since the act of making available and the perception (studying, watching,

listening to) of the signs, images and sounds in which a work is expressed or a sound recording (that is, the

actual use) by the members of the public differ in time. Non-copy-related rights (such as the right of public

performance, the right of broadcasting, the right of communication to the public by wire), on the other hand,

cover acts through which works or objects of related rights are made available for direct That is notdeferred use (perceiving, studying, watching, listening to) by the members of the public.


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easy, and certainly not something which would only require a simple decision and then the

rest would be arranged automatically.

CT-8.6. First, it did not seem possible to apply the traditional concepts of distribution and

communication to the public directly without some clarification. As far as distribution is

concerned, in many countries, its concept closely relates to the transfer of property and/orpossession of tangible copies. Thus, if the right of distribution was to be applied, it had to be

accepted and clarified that distribution through reproduction through transmission that is,

making available copies by making such copies, through transmission of electronic signals, in

the receiving computers and/or in their terminals is also covered by the concept of

distribution. Similar clarifications were needed in respect of the concept of communication to

the public. It had to be accepted and clarified that this concept extends not only to the acts

that are carried out by the communicators themselves (that is, to the acts as a result of

which a work or object of related right is, in fact, made available to the public and the

members of the public do not have to do more than, for example, switch on equipment

necessary for its reception), but also to the acts which only consist of making the work

accessible to the public, and in the case of which the members of the public still have to causethe system to make it actually available to them. Further clarification was needed in respect of

the notion of the public, more precisely in respect of what is to be considered to be made

available (accessible) to the public. It had to be made clear that on-demand transmissions

were also covered.

CT-8.7. Second, as far as the international norms were concerned, the said clarifications

were not sufficient, since the Berne Convention does not provide for a right of distribution for

all categories of works, but only for cinematographic works (see Articles 14(1)(i) and

14bis(1)), and, although the coverage of the right of communication to the public (see

Articles 11(1)(ii), 11bis(1), 11ter(1)(ii), 14(1)(ii) and 14bis(1)) is broader, it still does not extend

to all categories of works in all forms. In order that any of the above-mentioned solution

might work, the gaps in the international norms had to be eliminated; the coverage of the

rights involved had to be completed.

CT-8.8. Third, and this seemed to be for a long while the most difficult problem, it had been

found that it would be difficult for the various countries to select only one of the two basic

candidate rights without allowing any alternative choice at the national level.

CT-8.9. In view of these problems, a compromise solution was worked out which contained

the following elements: (i) the act of interactive transmission should be described in a

neutral way, free from specific legal characterization (for example, as making available a

work to the public by wire or by wireless means, for access by members of the public); (ii)

such a description should not be technology-specificand, at the same time, it should express

the interactive nature of digital transmissions in the sense that it should go along with a

clarification that a work or an object of related right is considered to be made availab le to

the public also when the members of the public may access it at a time and at a place freely

chosen by them; (iii) in respect of the legal characterization of the exclusive right that is, in

respect of the actual choice of the right or rights to be applied sufficient freedom should be

left to national legislation; and, (iv) the gaps in the Berne Convention in the coverage of the

relevant rights the right of communication to the public and the right of distribution should

be eliminated. This solution was referred to as the umbrella solution, and it was adopted

by the diplomatic conference as a basis for the provisions concerning interactive

transmissions.6

(Emphasis added.)

6WIPO Guide, pp. 207-209.


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As it is mentioned in the presentation of my relevant professional experience and as it is

well known by the international copyright community it was me who worked out this

solution in order to forge a compromise solution between the conflicting positions of

certain key negotiating parties (and the various stakeholder groups with differing interests)

and I gave the name umbrella solutionto it.

First, I presented this solution, at that time still in the form of a kind of improvisation

(under the usual somewhat schizophrenic disclaimer used on such occasions the views

expressed are those of the author and should not be regarded as the views of the

Organization represented by him) at the Conference on Copyright in the Asia-Pacific

Region Reprography and Digital Technology held in Sidney, Australia, on 17 and 18

January 1995. After having reviewed the various candidate rights considered at that time

as possibly applicable for interactive digital transmissions (in addition to the right of

reproduction about the applicability of which there were hardly any doubts), namely the

right of distribution and the right of communication to the public and having pointed out forwhat reasons their direct and exclusive application would not be suitable options, I

continued my presentation in this way:

What we have discussed so far has reflected how certain existing rights might be adapted

and applied for the phenomena of digital delivery. It seems that, for the time being, many

experts consider that such adaptation is the right approach. Probably also because they are of

the view that there is a better chance to reach an agreement on certain new ways of

interpretation and, as a maximum, slightly adapting existing norms on existing rights than

on the creation of new norms on new rights.

Such an approach, however, might require over-stretched new interpretations of existing

concepts and rules which might not be desirable.

The opposite alternative would be the adoption of new norms that would recognize the

specific nature of on-demand digital transmission/delivery of works and other protected

productions. This could take the form of the recognition of a new, specific exclusive right of

authorization.

The introduction of such a specific new right would not be, however, easy; not only because

of the usual difficulties in reaching agreement at the international level on a new right, but

also because the legal qualification of the various acts that may be involved in the case of a

digital transmission/delivery may concern some established practices, and acquired rights

along with the related fundamental interests of those who own or administer various existing

rights that may or may not be recognized on the basis of such qualification. In this respect,

national legislation and practice differ to a great extent from country to country, and this

would make the adoption of new international norms on such a new right even more difficult.

Between the two opposing alternatives that is, between basing the international

regulation on the interpretation and, as a maximum, on slight modification, of existing

norms on rights, on the one hand, and introducing a new on-demand transmission/delivery

right, on the other a third, compromise alternative would also be possible. This could

consist ofan umbrella provision under which it would be an obligation to grant an exclusive

right or exclusive rights to authorize either any use of works and other protectedproductions, with some possible reasonable exceptions, through on-demand digital


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transmission/delivery, or the exclusive right to authorize certain acts described in as neutral

way(that is, without involving any specific legal qualification) as possible carried out in the

case of such transmission/delivery, but the legal qualification of the right or rights granted

(whether it results in the combination and possible extension of existing rights, and/or in a

new specific right) would be left to national legislation

The continuation of the preparatory work at the national level in various countries, at the

regional level (particularly in the European Community) and at the international level

(particularly in the two WIPO committees) will give an answer to the question which of

these alternatives has better chance to offer an appropriate solution and to obtain a

sufficiently broad acceptance.7

(Emphasis added.)

As it can be seen, at that time, the idea of an umbrella solution was presented only in an

embryonic the form suggesting that a neutral description of interactive digital transmissions

(neutral from the viewpoint of the above-mentioned candidate existing rights was

presented). The description itself was not outlinedyet. However, when back in Geneva I

reported about this idea to Arpad Bogsch, the then Director General of WIPO, he found itbeing worthwhile working out and gave me a go-ahead not to prepare a concrete proposal.

When I was ready, he allowed me not only to speak about it as a WIPO suggestion at

various meetings, but later, when it turned out that the members of the Stockholm

Group8

of the negotiating parties (key industrialized countries trying to work out joint

proposals) were unable to agree between each other on this issue, he also made it available

to them as a possible basis for breaking the deadlock(and finally it truly served as such).

The central element of the solution I had worked out was the technology- and legal-

characterization-neutral description mentioned under (ii) of paragraph CT-8.10 of the WIPO

Guide to the WCT quoted above: making available to the public by wire or by wirelessmeans of a work (or object of related rights) in a way that the members of the public

may get access to it from a place and at a time individually chosen by them. The expression

making available to the public was the key in the expression since it was suitable to avoid

characterizing interactive digital uses exclusively as acts of distribution or exclusively as

acts of communication to the public(in view of the recognition that in the case of such uses

the borderline between copy-related acts and non-copy-related acts is blurred and both of

those aspects are always present even if with differing significance). This expression was

and is available in the international copyright norms in quite a ready-made manner; just

it had to be identified and made use of.

This is so since it may be found exactly in a legal-characterization-free manner (equally

covering both copy-related and non-copy-related aspects of uses) which was needed for the

umbrella solution in certain provisions of the Berne Convention; namely in Articles 7(2)

and (3) on the term of protection of copyright in cinematographic works and anonymous

and pseudonymous works, respectively (but, in another aspect, also Article 10(1)). In the

case of cinematographic works, it is an option, while in the case of anonymous and

pseudonymous works it is a basic rule to calculate the 50-year term of protection from the

7Mihly Ficsor: Digital Technology and Copyright, in: Copyright in the Asia-Pacific Region Reprography and

Digital Copying, Publication of the Australian Copyright Agency Limited, 1995, pp. 151-152.8 The Group had been established specially to deal with the WIPO Digital Agenda and to present joint

proposals. It had named in this way since it held its first consultations in Stockholm.


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first lawful making available to the public. It is clear, and all authoritative commentaries

agree on this, that the concept of making available to the public is broader than making

available the works through distributing copies, it equally covers non-copy-related acts,

such as public performance, broadcasting or other communication to the public.9

In this way, the already internationally recognized legal-characterization-free description ofuses of works and objects of protection was available. What was only needed to adapt it for

the purpose by adding a technology-neutral description of interactive digital making

available as mentioned above.

With the approval of Director General Bogsch, I presented the thus completed umbrella

solution at various high-level meetings in 1995 and 1996 at which the key representatives

of the most important negotiating parties were also present; inter alia, at the WIPO

Worldwide Symposium on Copyright in the Global Information Infrastructure in organized in

Mexico City from 22 to 24 May 1995,10

at the WIPO World Forum on the Protection of

Intellectual Creations in the Information Society held in Naples from October 18 to 20,1995,

11at International Conference on Copyright and Related Rights on the Threshold of the

21st

Century organized by the European Commission in Florence from 2 to 4 June 1996.12

However, it took the form of proposals submitted by a delegation only in May 1996 at the

third joint sessions of the two WIPO Committees working on what became in December

1996 the WCT and the WPPT. It was the result of an approximate consensus reached in the

above-mentioned Stockholm Group, but the delegation of the European Communities

submitted it(inter alia, because the last and most important condition was that an internal

agreement be reached also among the then 15 Member States of the Communities). The

proposals contained already practically the same language as the draft provisions in theBasic Proposals for the two Treaties and as the adopted Article 8 of the WCT and as Articles

10 and 14 of the WPPT:

Without prejudice to the provisions of Articles 11(1)(ii), 11bis (1)(i) and (ii), 14(1)(ii) and

14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the

exclusive right of authorizing any communication to the public of their works, including the

making available to the public of their worksby wire or wireless means,including the making

available to the public of their works in such a way that members of the public may access

9 See Claude Masuy: Guide to the Berne Convention, WIPO publication No. 615(E), 1978; p. 47 and WIPO

Guide pp 48-49.10

Mihly Ficsor: International Harmonization Copyright and Neighboring Rights, in WIPO Worldwide

Symposium on Copyright in the Global Information Infrastructure, WIPO publication No. 746 (E/S), pp. 369-

379, in particular pp. 375-377.10

Mihly Ficsor: International Harmonization of the Protection and Management of Copyright and

Neighboring Rights, in WIPO World Forum on the Protection of Intellectual Property in the Information

Society,WIPO publication No. 751(E), 1996, pp. 133-141, in particular, pp. 135-139.11

Mihly Ficsor: International Harmonization of the Protection and Management of Copyright and

Neighboring Rights, in WIPO World Forum on the Protection of Intellectual Property in the Information

Society,WIPO publication No. 751(E), 1996, pp. 133-141, in particular, pp. 135-139.12

Mihly Ficsor: International Harmonization of Copyright in Preparation for the Digital Age, in InternationalConference on Copyright and Related Rights on the Threshold of the 21st Century,, European Commission

publication, 1966, pp. 47 62, in particular pp. 54-61.


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these works from a place and at a time individually chosen by them.13

(This has become Article

8 of the Berne Convention; the non-substantial changes in contrast with the original proposed

language are highlighted.)

Performers shall enjoy the exclusive right of authorizing the making available to the public of

their fixed performances, by wire or wireless means, in such a way that members of the publicmay access them from a place and at a time individually chosen by them.

14(This has become

Article 10 of the WPPT.)

Producers of phonograms shall enjoy the exclusive right of authorizing the making available to

the public of their phonograms, by wire or wireless means, in such a way that members of the

public may access them from a place and at a time individually chosen by them.15

(This has

become Article 10 of the WPPT.)

As it can be seen, the umbrella solutionwas adopted in different ways, and the right of

making available to the public was granted in different contexts in the WCT and the WPPT.

This is reflected in the comments to the relevant provisions in the WIPO Guides to the WCTand to the WPPT, respectively, in the following way:

Comments to Article 8 of the WCT:

CT-8.10. In Article 8 of the WCT, the umbrella solution is applied in a specific way. Since the

countries which preferred the right of communication to the public as a general option

seemed to be more numerous, the Treaty, first, extends the applicability of the right of

communication to the public to all categories of works, and then clarifies that that right also

covers transmissions in interactive systems described in a legal-characterization-free

manner: including the making available to the public of[.]works in such a way that

members of the public may access [them] from a place and at a time individually chosen bythem. As a second step, however, when this provision was discussed in Main Committee I, it

was statedand no delegation opposed the statementthat Contracting Parties are free to

implement the obligation to grant exclusive right to authorize such making available to the

public also through the application of a right other than the right of communication to the

public or through the combination of different rights as long as the acts of such making

available are fully covered by an exclusive right (with appropriate exceptions). By the

other right, of course, first of all, the right of distribution was meant, but a general right of

making available to the public might also be such an other right.16

(Emphasis added.)

The comments to Article 10 in the WIPO Guide to the WPPT read as follows:

PPT-10.1. In the comments to Article 8 of the WCT, above, there is a description about the

discussions on the candidate rights for interactive transmissions (the right of distribution and

the right of communication to the public with their sub-rights) and the emergence of the

umbrella solution. That description is also relevant here.

PPT-10.2. As discussed in the above-mentioned analysis of Article 8 of the WCT, the basic

element of the umbrella solution is a neutral, legal-characterization-free description of

13WIPO document BPC/CE/VII/1-INR/CE/VI/1, p. 3.

14

Ibid., p. 4.15Ibid.

16WIPO Guide, p. 209.


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interactive transmissions (neutral in the sense that it does not refer either to distribution or to

communication to the public of works and objects of related rights). The diplomatic

conference, in respect of copyright, applied this solution in a special way: first, it included the

neutral description of interactive transmissions in Article 8 of the WCT on a general

communication to the public right, but then accepted the clarification that the obligation to

provide for an exclusive right for such interactive transmissions may also be fulfilled bygranting a right other than the right of communication to the public (with the right of

distribution in mind as such a possible other right) or a combination of rights. In contrast

with this,Article 10as, in respect of the rights of producers of phonograms, also Article 14

of the WPPT applies the umbrella solution in a fully-fledged manner incorporating the

neutral description of interactive digital transmissions directly.17

(Emphasis added.)

The Guide to the WPPT also clarifies the difference between the right of (interactive) making

available to the public and the right of (non-interactive) communication to the public:

PPT-10.4 Article 15 of the WPPT only provides for a right to remuneration for broadcasting

and other traditional forms of communication to the public (including communication bywire). This is due to the fact that, in respect of phonograms and the performances fixed

therein, the majority of countries was not ready to grant exclusive rights for such acts. Since,

in the case of interactive transmissions, the recognition of an exclusive right was

indispensable, the application of the same solution as in Article 8 of the WCT was impossible in

the WPPT context. The two rights at the level of minimum obligationshad to be separated

in Article 10 and 14, on the one hand, and in Article 15, on the other.18

(Emphasis added.)

What is summed up in this way in the WIPO Guides to the WCT and to the WPPT in a couple

pages as quoted above is described and discussed more in detail in my book published by

Oxford University Press in no less than 109 pages in Chapter 4 entitled The Digital Agenda

The Right or Rights Applicable for Interactive Transmissions: The Umbrella Solution.19

Thechapter offers afull description of the preparatory workof the relevant provisions of the

two Treaties the national and regional studies, the discussions and the presentations made

at the WIPO forums dealing with the digital agenda, the negotiations in the two WIPO

Committees working on the new norms etc. which confirms what is summed up in the

WIPO Guides.

It would be impossible to review in detail all subsequent steps of the preparatory work. It

seems, however, justified to present, at least, what happened in the most decisive stage

work; namely at the Diplomatic Conference.

The Basic Proposal for what became the WCT contained practically the same provision (still

numbered as Article 10) as what was finally adopted as Article 8 with the only difference

that the phrase including the making available to the public of their works was still before

the phrase by wire or wireless means:

Without prejudice to the provisions of Articles 11(1)(ii), 11bis (1)(i) and (ii), 14(1)(ii) and

14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the

exclusive right of authorizing any communication to the public of their works, including the

17

Ibid. pp. 247-248.18Ibid., p. 248.

19 Ficsor, Oxford, pp.145-254. ,


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making available to the public of their works by wire or wireless means, including the making

available to the public of their works in such a way that members of the public may access

these works from a place and at a time individually chosen by them.20

(It is indicated by bold

letter and underlining how the draft provisions was modified before finally adopted.)

From the viewpoint of the issues covered by this expert opinion, it is necessary to quote thenotes added to the draft provisions in the Basic Proposalwhich presented the structure and

objectives of the proposed article as follows:

10.9. The provisions of Article 10 consist of two parts. The first part extends the exclusive

right of communication to the public to all categories of works, including any communication

by wire or wireless means. It leaves the provisions of Articles 11(1)(ii), 11bis (1)(i) and (ii),

14(1)(ii) and 14bis(1)applicable as they are in the Berne Convention.

10.10.The second part of Article 10 explicitly states that communication to the public includes

the making available to the public of works, by wire or wireless means, in such a way that

members of the public may access these works from a place and at a time individually chosenby them. The relevant act is the making available of the work by providing access to it. What

counts is the initial act of making the work available, not the mere provision of server space,

communication connections, or facilities for the carriage and routing of signals. It is irrelevant

whether copies are available for the user or whether the work is simply made perceptible to,

and thus usable by, the user. (Emphasis added.)

10.11.One of the main objectives of the second part of Article 10 is to make it clear that

interactive on-demand acts of communication are within the scope of the provision. This is

done by confirming that the relevant acts of communication include cases where members of

the public may have access to the works from different places and at different times. The

element of individual choice implies the interactive nature of the access.21

The text emphasized above made it clear that the way the right of making available to the

public is provided as a subcategory of a broader right of communication to the public

covers both transmissions through which a work is only made perceptible (that is, it is not

downloaded it is only streamed) and transmissions through which copies are made

available (that is, downloaded).

It goes without saying that the coverage of the making available right provided in the WPPT

for performers and producers of phonograms separately from, and in parallel with, the

right of (non-interactive communication to the public) with the same language wasnecessarily the same extending both to streaming-type services and to transmissions

resulting in downloading. The draft provisions on this right of performers and producers of

phonograms were the same in the Basic Proposal as the finally adopted provisions in Articles

10 and 14 of the WPPT.

No proposal was made at the Diplomatic Conference which would have questioned that

there was a consensus about the double nature of the acts of (interactive) making

available to the public; namely that irrespective whether the exclusive right of

20

See Records of the Diplomatic Conference on Certain Copyright and Neighboring Rights Issues Geneva1996, WIPO publication 348(E), 1999, (hereinafter: Records 1996) p. 205.21

Ibid., p. 204.


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authorization is granted as a subcategory of a broadly construed communication right or as a

separate rightthey include both acts where the transmissions result in perception by the

public and acts where they result in downloading.

The same applies as regards the debates on this right in Main Committee I of the

Diplomatic Conference. The issue of the double nature of the making available right wastouched upon only in one aspect; namely in the following statement made by the US

Delegation:

[H]e expressed support for Article 10 of [the draft WCT] [in the final text, Article 8] and Articles

11 and 18 of [the draft WPPT] [in the final text, Articles 10 and 14] concerning the rights of

communication to the public and making available to the public, which were key to the ability of

owners of rights to protect themselves in the digital environment. He stressed the

understandingwhich had never been questioned during the preparatory work and would

certainly not be questioned by any Delegation participating in the Diplomatic Conferencethat

those rights might be implemented in national legislation through application of any particular

exclusive right, also other than the right of communication to the public or the right of making

available to the public, or combination of exclusive rights, as long as the acts described in those

Articles were covered by such rights.22

No other delegation made any comment on this statement (which did not come as a

surprise since, in the informal consultations where agreement was reached on the draft

provisions included in the Basic Proposals of what became the WCT and the WPPT it was

also agreed upon that the US delegation would make such a statement which would be

accepted without any opposition).

The fact that making accessible of works and objects of related rights throughtransmissions for downloading (necessarily not through making available physical, tangible

copies) is covered, under the Treaties, normally by the right of making available to the

public(as a specific category of the broadly construed right of communication to the public)

rather than by a separate right of distribution is also confirmed by the agreed statement

added to the provisions on the right of distribution and the right of rental (in the case of the

WCT provided in Articles 6 and 7) stating as follows: As used in these Article, the expression

copiesand original or copies,being subject to the right of distribution and the right of

rental under the said Articles, refer exclusively to fixed copies that can be put into

circulation as tangible objects. (Emphasis added.)

Thus, the answer to Question 1 may be summed up in this way:

The intention which is duly reflected in the text of the relevant provisions of the two

Treaties and which is also confirmed by their preparatory work was to provide for

an exclusive right in order to control the decisive act of uploading and making

accessible for interactive use of protected works and objects of related rights on the

Internet irrespective of the nature/purpose of the transmissions taking place in the

course of such use. The relevant provisions of the WCT and the WPPT were adopted

by the 1996 Diplomatic Conference on the basis of a unanimous understanding that

22Ibid., p. 675.


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the making available right is applicable both where the resulting interactive use

takes the form of transmissions only allowing perception of and where they may

result in downloading of the works (performances and/or phonograms) thus made

available.

Question 2: What influence, if any, is the nature/purpose of subsequent transmission(streaming or downloading) supposed to have on the completion of the act of making

available covered by this right?

The expression making availableto the public (emphasis added) cannot be interpreted in

any way other than that, as soon as a work or object of related rights is uploaded on the

Internet and thus it becomes available for the members of the public by accessing it from a

place and a time individually chosen by them, the act of making available to the public has

been completed.

Since the text of the treaty provisions is clear in this sense, there is no need for separateconfirmation by the preparatory work. Nevertheless, the preparatory work does

confirm this meaning of making available to the public. The documents of the 1996

Diplomatic Conference make it crystal clear that there was consensus about this among the

delegations.

When the European Community proposed the text which with minor wording differences

was the same as the provision of Article 8 of the WCT, it clarified this already:

[U]nder the proposal, for the completion of the act of communication to the public, it would

not be required that an actual transmission takes place; for this, the mere making availableof works to the public (for example, the uploading a work to a bulletin board) for subsequent

transmission would be sufficient.23

(Emphasis added.)

As quoted above, the notes added to the Basic Proposal of what became Article 8 of the

WCT stated this clearly too: The relevant act is the making available of the work by

providing access to it. What counts is the initial act of making the work available.24

(Emphasis added.)

Thus, the answer to Question 2 is this:

The act of making available to the public is completed as soon as the work or the

object of related rights is made available by uploading it for interactive access

irrespective of what kind of interactive use (streaming or downloading) is made

possible, , and it exists whether or not the work or object of related rights is actually

transmitted at all.

23WIPO document BPC/CE/VII/4-INR/CE/VI/4, p. 4.

24Records 1996, p. 204.


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As discussed above, the provisions on right of making available to the public have been

included in the WCT and the WPPT only with some minor wording changes as proposed

by the European Communities. Thus, it was quite normal that, when the two Treaties were

implemented in the Communities (which became law of the present European Union too) bythe Information Society (Copyright) Directive,

25 the same provisions were adopted as in

Article 8 of the WCT and Articles 10 and 14 of the WPPT (however, the right of making

available to the public has been extended also to other related rights provided in the acquis

communautaire).

Article 3 of the Directive provides as follows:

1. Member States shall provide authors with the exclusive right to authorise or prohibit any

communication to the public of their works, by wire or wireless means, including the making

available to the public of their works in such a way that members of the public may accessthem from a place and at a time individually chosen by them.

2. Member States shall provide for the exclusive right to authorise or prohibit the making

available to the public, by wire or wireless means, in such a way that members of the public

may access them from a place and at a time individually chosen by them:

(a) for performers, of fixations of their performances;

(b) for phonogram producers, of their phonograms;

I for the producers of the first fixations of films, of the original and copies of their films;

(d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts

are transmitted by wire or over the air, including by cable or satellite.

Since the text is the same as what was proposed by the then European Communities and

what has been adopted as Article 8 of the WCT and Articles 10 and 14 of the WPPT, it is

normal that the same considerations apply for its interpretation in the present 27 Member

States of the European Union.

That is, the act of making available to the public is completed as soon as the work or object

of related rights is uploaded in a way that it becomes accessible to the members of the

public from a place and at a time individually chosen by them irrespective of whether the

interactive use thus made possible allows only perception and/or downloading copies.

Recital (25) of the Directive confirms this by pointing out that [i]t should be made clear that

all rightholders recognised by this Directive should have an exclusive right to make

available to the public copyright works or any other subject-matter by way of interactive

on-demand transmissions. Not only certain interactive transmissions are covered by this

right but any interactive transmissions for which the works and objects of related rights are

made accessible; including those transmissions which may result in downloading of copies.

That the latter kind of transmissions are also covered by the making available category of the

broadly construed communication right provided in the Directive (in accordance with the

25Directive 2001/29/EC of the European Parliament and the Council of 22 May 2001 on the harmonisation of

certain aspects of copyright and related rights in the information society.


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WIPO Treaties) similarly to the case of the two Treaties, as discussed above is also

confirmed by the reduction of the concept and right of distribution to the making available

of physical (tangible) copies.

Article 4(1) of the Directive provides as follows:

Member States shall provide for authors, in respect of the original of their works or of copies

thereof, the exclusive right to authorise or prohibit any form of distribution to the public by

sale or otherwise.

In the Directive, the role of the above-quoted agreed statement added to Article 6 of the

WCT clarifying that only the distribution of tangible copies are covered by the right of

distribution is fulfilled by a clear statement in one of the recitals; namely by Recital (28)

which make it clear that [c]opyright protection under this Directive includes the exclusive

right to control distribution of the work incorporated in a tangible article (emphasis

added).

It follows from this, a contario, that interactive transmissions which do not involve the

making available of tangible copies are not artificially carved out from the overall concept

of (interactive) making available to the public; those acts of making available as a result of

which the interactive transmissions may result in downloading are also covered and as

regards the perform the act of making available is completed as soon as the work or

object of related rights is uploaded and, thus, made accessible for interactive use over the

Internet.

The national laws of the 27 Member States correspond to these concepts and rights. This is

the case also where exceptionally see the case of France for the implementation of the

right of making available to the public, the national law has not been modified, but rather

an existing right (in France, the broadly interpreted representation right (droit de

reprsentation)) was considered suitable to also absorb the broadly construed right of

communication to the public including also the right of (interactive) making available of

works the way discussed above (while the right of distribution as provided in the WCT, the

WPPT and the Directive was left to the broadly interpreted reproduction rights).

The von Colson principle is also a guarantee that, even if some more general concepts may

be used in certain national laws (in particular in France), the legal situation correspond to

what is provided, and the way it is provided, in the Directive. This principle has been

established by the Court of Justice of the EU in the following way:

Although the third paragraph of Article 189 of the Treaty leaves Member States free to

choose the ways and means of ensuring that the directive is implemented, that freedom does

not affect the obligation, imposed on all the member states to which the directive is

addressed, to adopt, within the framework of their national legal systems, all the measures

necessary to ensure that the directive is fully effective, in accordance with the objective

which it pursues.

The Member States obligation arising from a directive to achieve the result envisaged by the

directive and their duty under Article 5 of the Treaty to take all appropriate measures,

whether general or particular, to ensure the fulfilment of that obligation, is binding on all the


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authorities of Member States including, for matters within their jurisdiction, the courts. It

follows that, in applying national law and in particular the provisions of a national law

specifically introduced in order to implement a directive, the national court is required to

interpret its national law in the light of the wording and the purpose of the directive in

order to achieve the result referred to in the third paragraph of Article 189.26

(Emphasis

added.)

The application of the making available right in the EU Member States has taken place in

accordance with the two WIPO Treaties and the Directive. This is presented below, by

reference to the three biggest and most influential Member States (France, Germany and

the United Kingdom) and to my own country, Hungary.

France, as mentioned above, has chosen a minimalist way of implementation of the

international and EU provisions on the right of making available to the public leaving it to an

(already) broad interpretation of the representation right. However, as also pointed out, this

means that, in this way, the right of making available to the public is applicable in France

the way it is provided in the Directive (and the two WIPO Treaties).27

This has not been questioned in the legal practice which is also reflected in the licensing

mechanism and distribution rules applied by SACEM and DRM the collecting societies

managing the right of making available to the public as described below.

In Germany, a clarification has been included in Article 19a of the Copyright Law according

to which the right to make available to the public is the right of making a copyright work

accessible to the public, by wire or by wireless means, in a way that members of the public

may access the work from a place and at a time individually chosen by them . (Emphasis

added.)

In accordance with the concept of making available to the public under the WIPO Treaties

and the EUs Information Society (Copyright) Treaty, the act of making available is completed

as soon as a work or object of related rights is uploaded on a website and thus becomes

accessible for any kind of interactive uses. This was confirmed, for example, in a particularly

clear manner, in a 2011 decision by a Munich court.28

It was a special feature of the case that the plaintiff launched the lawsuit after that the

defendant had paid already damages by having uploaded plaintiffs maps on the Internet

without authorization and that had deleted a link to it on its website (homepage).Nevertheless, the maps remained on the defendants server and thus it was still accessible

by the members of the public for interactive transmissions. In the lawsuit, the plaintiff

claimed that by offering such unauthorized access in itself is an infringement of the right of

26Judgment of the Court of 10 April 1984. - Sabine von Colson and Elisabeth Kamann v Land Nordrhein-

Westfalen. - Reference for a preliminary ruling: Arbeitsgericht Hamm - Germany. - Equal treatment for men and

women - Access to employment. - Case 14/83.27

SeePascal Kamina: France, in Brigitte Lindner Ted Shapiro (ed.): Copyright in the Information Society,

Edwards Elgar, 2011. p. 2000.28

Ruling of AG Mnchen adopted on 31 March 3011; case 161 C 15642/09. See the German-language pressrelease published by the court summing up the essence of the ruling at

http://www.justiz.bayern.de/gericht/ag/presse/archive/2011/03024/index.php.


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making available to the public. The court agreed with the plaintiffs position and found in

his favor.29

In the United Kingdom, similarly to the case of Germany, the copyright law was amended to

include language corresponding to the relevant provisions of the WIPO Treaties and the

Information Society (Copyright) Directive. This may be found in Section 20of the amendedCopyright, Designs and Patents Act 1988 in this way:

(1) The communication to the public of the work is an act restricted by the copyright in

(a)a literary, dramatic, musical or artistic work,

(b)a sound recording or film, or

Ia broadcast.

(2)References in this Part to communication to the public are to communication to the public

by electronic transmission, and in relation to a work include

(a)the broadcasting of the work;

(b)the making available to the public of the work by electronic transmission in such a way

that members of the public may access it from a place and at a time individually chosen by

them. (Emphasis added.)

This corresponds to the concept and right of making available to the public under the WIPO

Treaties and the EU Information Society (Copyright) Directive.

The UK courts apply these provisions appropriately also in cases where works are made

available for downloading. Examples for this are the Newsbin cases which were followed by

the international copyright community with great attention.

In Fox v. Newzbin,30

the High Court described the infringing activities in this way:

Access to Newzbin is restricted to members, and the defendant accepts applications for

membership only from users who have an invitation from a current member. The defendant

offers two levels of membership: basic membership for which there is no fee, and premium

membership for those users who agree to pay a fee of 0.30 per week, subject to discount at

different times of the year. Only premium members are given the ability to download the

contents of files sourced using Newzbin. Basic members are merely provided with what was

described in evidence as a sample or taster of what is available to premium members.

There is no doubt that the defendant has developed a very substantial business. It has a

sophisticated and substantial infrastructure and in the region of 700,000 members, though notall premium. Its accounts reveal that for the year ended 31 December 2009, it had a turnover

in excess of 1million, a profit in excess of 360,000 and paid dividends on ordinary shares of

415,000.

29In another case (MyVideoBroadband S.R.L. v. CELAS GmbH), the Munich court (in decision No. 7 O 4139/08

(25 June 2009)) ruled that, under German law, it is not feasible legally to apply mechanical right for online

interactive uses by neglecting the making available right. This ruling is only mentioned but it is not analyzed in

detail due to its still controversial nature. For example a recent EU document refers to it as a source of doubts

endangering online trans-border licensing. SeeCommission Staff Working Document -Impact Assessment; No

SWD/2012/204. final of 7 July 2012 (Accompanying the document to the Proposal for a Directive of the

European Parliament and of the Council on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online uses in the internal market), p. 26, note 121 .30

Twentieth Century Fox Film Corporation and Others v. Newzbin Ltd, [2010] EWHC 608(Ch)


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This Court referred to the above-quoted Section 20 of the Copyright, Designs and Patents

Act and adopted the following ruling: The defendant is liable to the claimants for

infringement of their copyrights because it has authorized the copying of the claimants

films; has procured and engaged with its premium members in a common design to copy the

claimants films; and has communicated the claimantsfilms to the public. In the context ofthe ruling it was clear that the Court found that the acts of making accessible films to the

public for interactive transmissions and as a result for downloading of films qualified as

making available to the public as a subcategory of the broad right of communication to the

public as provided in Section 20(b) of the Act.

In Newzbin 2 the issue was whether or not British Telecom as online service (access)

provider might be obligated by injunction to block access to Newzbin2 which had been

transferred off shore beyond the applicability of UK and EU law. The High Court gave an

affirmative answer to this question. However, what is relevant from the viewpoint of the

issues addressed in this expert opinion is that the Court confirmed that Newzbins illegal actqualified as unauthorized making available to the public under Section 20 of the Act:

In the present case Kitchin Js judgment in 20C Fox v Newzbin establishes that the operators of

the Newzbin 2 website infringe the Studios copyrights in three ways. First, they authorize the

users infringements. Secondly,they are jointly liable for the users infringements. Thirdly, they

infringe by making available. The first two ways are different forms of accessory liability for

acts committed by the users. Once it is concluded, as I have, that the users are using BTs

service to infringe copyright, then it follows that the operators are too. As for the third way,

this consists of the making available to the public of the work by electronic transmission in

such a way that members of the public may access it from a place and a time individually

chosen by them. The operators make the works available in such a way that users can accessthem over BTs network (among others). In my judgment that is sufficient to constitute use of

BTs service to infringe.31

The Newzbin 2 ruling was adopted by Justice Arnold, and, of course, he adopted the same

ruling later in a similar case where the obligation to block access to Pirate Bay, the well-

known website serving for unauthorized uploading and downloading of works and objects of

related rights was at issue. His ruling stated about the illegal activity of the operators of that

rough website again as follows: I consider that they make the recordings available by

electronic transmission in such a way that members of the public may access the

recordings from a place and at a time individually chosen by them within section20(2)(b)

32(emphasis added).

As presented below, the joint licensing practice and distribution rules ofPRS and MCPS, the

UKperforming rights and mechanical rightssocieties also correspond to the fact that

the interactive making accessible of works and objects of related rights for downloading is

also covered by the right of making available to the public as a subcategory of the broadly

construed right of communication to the public.

31

Twentieth Century Fox Film Corporation and Others v. British Telecommunication PLC, [2011] EWHC 1981(Ch).32

Dramatico Entertainment Limited and Others v. Sky Broadcasting Limited and Others , [2012] EWHC 208 (Ch).


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After the three key Member States of the EU, I also refer to the situation in my country

Hungaryas an example of smaller Member States. The situation is quite simple and clear;

the (amended) Copyright Actprovides for the right of making available to the public with in

same language as the WIPO Treaties and the EU Information Society (Copyright) Directive

in Article 26(8) as a subcategory of the broadly construed right of communication to the

public, while in Articles 73(1), 78(1), 80(1) and 82(1) as a separate exclusive right for relatedrights (in performances, phonograms, broadcasts and first fixations of films, respectively.

As mentioned below, the licensing practice and distribution rules of ARTISJUS, the

Hungarian authors society is similar as those of the French, German and UK collecting

societies.

It is well known that the implementation of the right of making available to the public has

been quite special in the United States. The court practice and the licensing system of the

performing rights societies and the agency managing mechanical rightsdoes not seem

to have been settled yet.33 This is due to the fact that, in contrast with the EU Directive andthe national laws of other Parties to the WCT and the WPPT (including Australia, Japan,

China and Russia the relevant legal provisions of which are mentioned below as further

examples and now also Canada), the US Copyright Act does not use the expression

making available to the public in any of the ways mentioned in respect of the other

Contracting Parties; the issue is left to the application of the right of distribution and the

right of communication to the public the same way as existing before the ratification and

the implementation of the two Treaties by the US. Since, in this case, the issues of

interpretation are differentfrom those which may emerge in the overwhelming majority of

the Contracting Parties and in such a country as Canada, where the concept of making

available to the public has been introduced into national laws also in view of the said stillevolving nature of the US practice the complex situation in that country is not dealt with

in the expert opinion.

In turn, it seem necessary to refer to the way the right of making available to the public has

been implemented in such key markets asAustralia, Japan, China and Russia.

The Copyright Act ofAustralia recognizes the making available right in its Section 10(1),

which contains the following definition of communicate in respect of the right of

communication to the public:

communicate means make available online or electronically transmit (whether over a path,

or a combination of paths, provided by a material substance or otherwise) a work or other

subject-matter (emphasis added).

As mentioned below, the fact that this specific form of the broadly construed right of

communication to the public is applicable also in cases where the works and objects of

related rights are made accessible for interactive use through transmissions for downloading

is also recognized by the joint licensing practice of APRA and AMCOS, the Australian

performing rights and mechanical rights societies.

33 See Eric Eric J. Schwarz David Nimmer: United States in Melville B. NimmerPaul Edward Geller (ed.):

International Copyright Law and Practice, LexisNexis, Release 24, October 2012, point 8[1][b][iv][C].


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Japan seems to have considered it so important to reflect in its law that an act of making

available to the public is completed as soon as a work or object of related rights that it

uses the term making transmittable. Under Article 23(1) of the Copyright Act, authors enjoy

the right of public transmission including the right ofmaking transmittable while under Arts.

92bis, 96bis, 99bis and 100quaterof the act performers, phonogram producers, broadcastingorganizations and wire-broadcasting organizations enjoy the right of making transmittable.

As mentioned below, the licensing practice and distribution rules of JASRAC, the Japanese

authors society managing both performing rights and mechanical rights also take into

account that the right of making available (transmittable) also applies where the

interactive use made possible takes the form of transmissions resulting in downloading.

Finally, it is worthwhile mentioning the examples of China and Russia which are similar as

regards the special way ofprovidingnot only for the beneficiaries of related rights but

also for authors and other copyright owners a separate making available right(separateboth from the traditional non-interactive performing rights and from the traditional non-

interactive copy-related rights, including the mechanical rights in music).

Article 10 of the Copyright Law ofChina provides as follows:

Copyright includes the following personal rights and property rights [only the relevant rights

are quoted]:

(5) the right of reproduction, that is, the right to produce one or more copies of a work by

printing, photocopying, lithographing, making a sound recording or video recording,

duplicating a recording, or duplicating a photographic work, or by other means;

(6) the right of distribution, that is, the right to provide the original copy or reproductions of a

work to the public by selling or donating;

(11) the right of broadcasting, that is, the right to broadcast a work or disseminate it to the

public by any wireless means, to communicate the broadcast of a work to the public by wire or

by rebroadcasting, and to publicly communicate the broadcast of a work by loudspeaker or any

other analogous instrument transmitting signs, sounds or images;

(12) the right of communication through information network, that is, the right to make a

work available to the public by wire or by wireless means, so that people may have access to

the work from a place and at a time individually chosen by them(emphasis added).

Article 1270 of Part IV of the Civil Code of the Russian Federation contains the following

provisions concerning exclusive right(s) in works protected by copyright [only the relevant

right are quoted]:

1. The exclusive right to use a work in accordance with Article 1229 of the present Code in any

form and any manner not contrary to law (the exclusive right in the work), including by the

methods indicated in Paragraph 2 of the present Article shall belong to the author of the work.

The rightholder may dispose of the exclusive right in the work.

2. The use of a work, regardless of whether or not the corresponding actions are taken for the

purpose of extracting profit or without such a purpose shall include, in particular:

1) reproduction of the work , i.e., the creation of one or more copies of a work or of part of itin any material form, including in the form of audio or video recording, creation in three


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dimensions of one or more copies of a two-dimensional work and in two-dimensions of one or

more copies of a three dimensional work. In this case the fixation of the work on an electronic

carrier, including fixation in the memory of a computer shall also be considered reproduction,

except for the case when such fixation is temporary and constitutes an inseparable and

essential part of a technological process having the sole purpose of lawful use of the fixation or

lawful communication of the work to the public;2) distribution of a work by sale or other alienation of its original or of copies;

4) the import of the original or of copies of a work for the purpose of distribution;

5) renting out of the original or a copy of the work;

7) communication by wireless means, i.e., communication of a work to the public (including

showing or performance) by radio or television (including by way of retransmission), with the

exception of communication by wire. In this case, communication means any action by which

the work becomes accessible for aural and/or visual perception regardless of its actual

perception by the public. In case of communication of works by wireless means via satellite,

communication by wireless means the receipt of signals from a ground station by the satellite

and transmission of signals from the satellite by means of which the work may be

communicated to the public regardless of its actual reception by the public. Communication ofcoded signals is communication by wireless means if the means of decoding are granted to an

unlimited group of people by the broadcasting organization or with its consent;

8) communication by cable, i.e., communication of the work to the public by radio or television

with the use of a cable, wire, optical fiber, or analogous means (including by way of

retransmission). Communication of coded signals is communication by cable if the means of

decoding are granted to an unlimited group of people by the cablecasting organization or with

its consent;

11) communicating a work to the public in such a way that any person may obtain access to

the work from any place and at any time of his own choosing (communication to the public).

These provisions of the Chinese and Russian laws make it also clear that the right of makingavailable to the public is completed as soon as a work is made accessible for interactive use

irrespective of the nature of the use (whether steaming or downloading).

Thus the answer to Question 3 may be summed up in the following way:

In the key markets, in general (in the overwhelming majority of countries), the right

of making available to the public has been implemented adequately in accordance

with the nature of the right reflected in the text of the relevant provisions of the WCT

and the WPPT; that is, as an exclusive right to control the inclusion of works and

objects of related rights by offering interactive access irrespective of the

nature/purpose of the use (streaming and/or downloading) and irrespective of

whether or not actual interactive transmissions take place.

Question 4: How is the making available right in musical works licensed in other countries,

and how the remuneration is distributed depending on the nature/purpose of the

transmission (streaming or downloading)?

As mentioned above, in the Contracting States which, in accordance with Article 8 of the

WCT, provide for a right of making available to the public, the collecting societies both in

those cases where the same society manages both performing (or representation) rights

and mechanical rights and in the cases where two societies manage those rights, in

principle, separately but they act together the licensing practices and the relevant


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distribution rules of those societies corresponds to the inseparable nature of the right of

making available in the sense that it is also applicable where the interactive use made

possible by providing access to the musical works take the form of transmissions for

downloading.

In France, SACEM (the society managing representation rights) and SDRM (themechanical rights society) license making available to the public in respect of both

streaming and downloading. The remuneration collected on the basis of the jointly granted

licenses is distributed as follows: (i) in the case of streaming (sites dcoute en ligne), 75%

for representation rights and 25% for mechanical rights; and (ii) in the case of

downloading (tlchargements de fichiers musicaux), 25% for representation rights;

and 75% for mechanical rights.34

In Germany, GEMA manages and licenses making available to the public both in respect of

streaming and in respect of downloading. Under the distribution rules of the society, the

remuneration collected is distributed in this way: (i) in the case of streaming(zum bloenAnhren), 66, 67% for performing rightsand 33,33% for mechanical rights; and (ii) in

the case ofdownloading (zum Herunterladen), 33,33% for performing rights and 66,

67% for mechanical rights.

35

In the United Kingdom, PRS (the society managing performing rights) and MCPS (the

mechanical rights society) license making available to the public in respect of both

streaming and downloading. The remuneration collected on the basis of the jointly granted

license is distributed in this way: (i) in the case of streaming, 50% forperforming rights

and 50% for mechanical rights; and (ii) in the case ofdownloading, 25% for performing

rightsand 75% for mechanical rights.36

In Hungary,ARTISJUS manages and licenses making available to the public both in respect of


remuneration collected is distributed in this way: (i) in the case of streaming, 75% for

performing rightsand 25% for mechanical rights; and (ii) in the case ofdownloading,

25% for performing rights and 75%for mechanical rights.

37

InAustralia,APRA (the society managing performing rights) andAMCOS(the mechanical

rights society) license making available to the public in respect of both streaming and

downloading. For the time being, the remuneration collected on the basis of the jointlygranted license is distributed in equal shares 50%-50% in the case both streaming and

downloading.38

34See Rgles de rpartition at

www.sacem.fr/files/content/sites/fr/files/mediateque/createur/Regles_reprartition_2010_s.pdf., p. 4135

See Werteilunsgplan at

www.gema.de/filadmin/user_upload/Presse/Publicationed/Jahrbuch/Jahrbuch_aktuel/Werteilugsplan.pdf., p.

352.36

PRS for MusicPRS Distribution Policy Rules Feb. 2012. pdf., p. 58.37

Felosztsi szablyzatatwww.artisjus.hu/_eserfiles/file/egyesulet/szabalyzatok/felosztasi_szabalyzat_hatalyos.pdf., pp. 31-32.38

Source: e-mail of 27 February 2013 from Richard Mallet, Head of Revenue, APRA/AMCOS.
http://www.sacem.fr/files/content/sites/fr/files/mediateque/createur/Regles_reprartition_2010_s.pdfhttp://www.gema.de/filadmin/user_upload/Presse/Publicationed/Jahrbuch/Jahrbuch_aktuel/Werteilugsplan.pdfhttp://www.artisjus.hu/_eserfiles/file/egyesulet/szabalyzatok/felosztasi_szabalyzat_hatalyos.pdfhttp://www.artisjus.hu/_eserfiles/file/egyesulet/szabalyzatok/felosztasi_szabalyzat_hatalyos.pdfhttp://www.gema.de/filadmin/user_upload/Presse/Publicationed/Jahrbuch/Jahrbuch_aktuel/Werteilugsplan.pdfhttp://www.sacem.fr/files/content/sites/fr/files/mediateque/createur/Regles_reprartition_2010_s.pdf


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In Japan, JASRACmanages and licenses making available to the public both in respect of


remuneration collected is distributed in this way: (i) in the case of streaming, 85% for

performing rightsand 15% for mechanical rights; and (ii) in the case ofdownloading,

35% for performing rights and 65%for mechanical rights.

39

Thus, the answer to Question 4 is this:

The licensing of the making available right in musical works, in general, takes place by

collecting societies managing performing (or representation) rights and mechanical

rights. Where these rights are managed separately by performing rights and

mechanical rights organizations, those organizations normally offer joint licenses. The

nature/purpose of the interactive use (whether streaming or downloading) irrespective

of whether the repertoire of same organization covers both rights or two organizations

grant joint licenses is taken into account in the shares due to the owners of the respective

rights; usually in a way that, in the case of streaming, a bigger share goes to performingrights, while in the case of downloading, a bigger share goes to mechanical rights(on

the understanding that the making available right is applicable in all these cases).

[End of expert opinion]

Attachment: short biography

39

Satoshi Watanabe (JASRAC): Licensing of Interactive Transmission (Online and Mobil) Services,ppt.presented at the Seminar on Collective Management Organizations, Taipei 8-9 September 2009, slide 7.


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SHORT BIOGRAPHY - Dr. Mihly Ficsor

Dr. Ficsor, from 1966 to 1968, he was judge at the Central District Court of Budapest, and,from 1969 to 1975, he was Section Head at the Codification Department in the HungarianMinistry of Justice.

From 1975 to 1985 he worked Director General of the Hungarian Bureau for the Protectionof Authors Rights and, in that capacity, he represented his country at the internationalorganizations.

In 1981 and 1982, he acted as the Chairman of three different important WIPO-UNESCOmeetings: (i) the Working Group which adopted Model Provisions on Exceptions for theVisual and Auditory Handicapped; (ii) the Working Group which adopted Guidelines onTranslation and Reproduction Compulsory Licenses for Developing Countries; and (iii) theCommittee of Governmental Experts which adopted Model Provisions on the Protection ofExpressions of Folklore.

Between 1985 and 1999, Dr. Ficsor worked, first, as Director and, then, from 1992 asAssistant Director General of the World Intellectual Property Organization (WIPO) in chargeof copyright and related rights. He was responsible for a great number of important projects.

Inter alia, he is recognized as having played decisive role in the preparation, negotiation andadoption of the so-called Internet treaties: the WIPO Copyright Treaty (WCT) and theWIPO Performances and Phonograms Treaty (WPPT).

At the World Trade Organization (WTO), Dr. Ficsor is a member of the roster of intellectualproperty experts for dispute settlement panels. He has been a member of a panel in one ofthe most important intellectual property disputes (between the European Union andCanada), and, in another dispute (between the United States and Japan), the parties reachedagreement in the consultation phase on the basis his expert opinion.

Dr. Ficsor is a Member of the Board and Honorary President of the Hungarian CopyrightExperts Council (a 200 member advisory and arbitration body appointed by the Minister ofJustice and linked to the National IP Office) if which he, between 2000 and 2011, wasPresident , Honorary Chairman of the Hungarian Copyright Forum Association, member

Expert Report of Dr. Mihaly Ficsor, March 6, 2013-OTT_LAW-35392_1

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