Offences related to infringements of copyright and related rights (Article 10)
107. Infringements of intellectual property rights, in particular of copyright, are among the most commonly committed offences on the Internet, which cause concern both to copyright holders and those who work professionally with computer networks. The reproduction and dissemination on the Internet of protected works, without the approval of the copyright holder, are extremely frequent. Such protected works include literary, photographic, musical, audio-visual and other works. The ease with which unauthorised copies may be made due to digital technology and the scale of reproduction and dissemination in the context of electronic networks made it necessary to include provisions on criminal law sanctions and enhance international co-operation in this field.
108. Each Party is obliged to criminalise wilful infringements of copyright and related rights, sometimes referred to as neighbouring rights, arising from the agreements listed in the article, when such infringements have been committed by means of a computer system and on a commercial scale”. Paragraph 1 provides for criminal sanctions against infringements of copyright by means of a computer system. Infringement of copyright is already an offence in almost all States. Paragraph 2 deals with the infringement of related rights by means of a computer system.
109. Infringement of both copyright and related rights is as defined under the law of each Party and pursuant to the obligations the Party has undertaken in respect of certain international instruments. While each Party is required to establish as criminal offences those infringements, the precise manner in which such infringements are defined under domestic law may vary from State to State. However, criminalisation obligations under the Convention do not cover intellectual property infringements other that those explictly addressed in Article 10 and thus exclude patent or trademark-related violations.
110. With regard to paragraph 1, the agreements referred to are the Paris Act of 24 July 1971 of the Bern Convention for the Protection of Literary and Artistic Works, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the World Intellectual Property Organisation (WIPO) Copyright Treaty. With regard to paragraph 2, the international instruments cited are the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (Rome Convention), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the World Intellectual Property Organisation (WIPO) Performances and Phonograms Treaty. The use of the term “pursuant to the obligations it has undertaken” in both paragraphs makes it clear that a Contracting Party to the current Convention is not bound to apply agreements cited to which it is not a Party; moreover, if a Party has made a reservation or declaration permitted under one of the agreements, that reservation may limit the extent of its obligation under the present Convention.
111. The WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty had not entered into force at the time of concluding the present Convention. These treaties are nevertheless important as they significantly update the international protection for intellectual property (especially with regard to the new right of ‘making available’ of protected material ‘on demand’ over the Internet) and improve the means to fight violations of intellectual property rights worldwide. However it is understood that the infringements of rights established by these treaties need not be criminalised under the present Convention until these treaties have entered into force with respect to a Party.
112. The obligation to criminalise infringements of copyright and related rights pursuant to obligations undertaken in international instruments does not extend to any moral rights conferred by the named instruments (such as in Article 6bis of the Bern Convention and in Article 5 of the WIPO Copyright Treaty).
113. Copyright and related rights offences must be committed “wilfully” for criminal liability to apply. In contrast to all the other substantive law provisions of this Convention, the term “wilfully” is used instead of “intentionally” in both paragraphs 1 and 2, as this is the term employed in the TRIPS Agreement (Article 61), governing the obligation to criminalise copyright violations.
114. The provisions are intended to provide for criminal sanctions against infringements ‘on a commercial scale’ and by means of a computer system. This is in line with Article 61 of the TRIPS Agreement which requires criminal sanctions in copyright matters only in the case of “piracy on a commercial scale”. However, Parties may wish to go beyond the threshold of “commercial scale” and criminalise other types of copyright infringement as well.
115. The term “without right” has been omitted from the text of this article as redundant, since the term “infringement” already denotes use of the copyrighted material without authorisation. The absence of the term “without right” does not a contrario exclude application of criminal law defences, justifications and principles governing the exclusion of criminal liability associated with the term “without right” elsewhere in the Convention.
116. Paragraph 3 allows Parties not to impose criminal liability under paragraphs 1 and 2 in “limited circumstances” (e.g. parallel imports, rental rights), as long as other effective remedies, including civil and/or administrative measures, are available. This provision essentially allows Parties a limited exemption from the obligation to impose criminal liability, provided that they do not derogate from obligations under Article 61 of the TRIPS Agreement, which is the minimum pre-existing criminalisation requirement.
117. This article shall in no way be interpreted to extend the protection granted to authors, film producers, performers, producers of phonograms, broadcasting organisations or other right holders to persons that do not meet the criteria for eligibility under domestic law or international agreement.