RESTRICTED WORLD TRADE IP/Q/PRT/1 21 November 1996 ORGANIZATION (96-4940)

Council for Trade-Related Aspects Original: English of Rights

REVIEW OF LEGISLATION ON AND

Portugal1

The present document reproduces the questions put to the delegation of and the responses given in the review of legislation on copyright and related rights at the Council's meeting of 22 to 25 July 19962.

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I. REPLIES TO QUESTIONS POSED BY

1. Please indicate whether domestic law on protection of works, phonograms and performances as well as on broadcast organizations is in full conformity with the provisions of Article 14 of the TRIPS Agreement.

Portuguese law protects all neighbouring rights in the sense of TRIPS Article 14 but only in what concerns EC performers, producers and broadcasters.

Portugal intends to accede to the Rome Convention in the short term. Thus, we will adapt our internal legislation to TRIPS Article 14 rules. Article 14 does not concern works.

Portugal, as a member of the Berne Union, gives national treatment - referred in Article 5 of the - to all contracting parties of Berne (see Copyright Code Article 64).

2. Does Portugal intend to accede to the Rome Convention?

As referred to in the previous answer, Portugal intends to accede, as soon as possible, to the Rome Convention.

1Portugal's notification of laws and regulations in the area of copyright and related rights under Article 63.2 of the Agreement has been circulated in document IP/N/1/PRT/1 and IP/N/1/PRT/C/1.

2The minutes of the meeting have been circulated in document IP/C/M/8. IP/Q/PRT/1 Page 2

II. REPLIES TO QUESTIONS POSED BY THE

1. Please explain whether and how Portugal's law provides protection for works, phonograms and performances from other WTO Members, and whether and how it does so on the basis of national treatment, as required by TRIPS Article 3 (generally, with respect to all and neighbouring rights) and Article 9.1 (incorporating Berne Article 5(1)). In particular, please explain how national treatment is afforded with respect to the distribution of blank tape levies under Article 82 of Portugal's Copyright Law.

In respect of works, Portugal as a Member State of the Berne Union grants the national treatment under Berne Article 5, reproduced under Copyright Code Article 64.

Regarding phonograms and performances, Portugal, in spite of not being a Member State of the Rome Convention, grants national treatment under Copyright Code Article 190 but only to EC copyright owners. However, Portugal is preparing to accede to the Rome Convention.

The protection under Copyright Code Article 190 is granted, provided that:

- the performer or the producer of phonograms be a national of one of the EC Member States;

- the performance or the fixation has occurred in Portuguese territory;

- the original performance has been fixed or broadcast in the Portuguese territory or the phonogram has been recorded for the first time in Portugal or simultaneously in Portugal and another country.

Copyright Code Article 82 is not yet regulated. However, it shall be regulated in a very short period of time and there is already a pre-project which is being discussed with the interested parties (e.g. associations of producers of phonograms, booksellers and editors).

The national treatment is therefore supposed to be granted as laid down by the TRIPS Agreement.

[Follow-up question]

Please confirm that Portugal intends to amend its law to provide national treatment to phonograms and performances from all WTO Member countries, and indicate the expected timetable for this amendment.

Portugal will make the necessary adaption of its internal law, in order to guarantee the rights deriving from the Treaty. It is difficult to name a precise date, since copyright is constitutional by nature, and therefore falls within the competence of Parliament - Assembela da República.

2. Does Portugal apply the "rule of the shorter term" to phonograms and performances from other WTO Members? If so, please explain how you justify such action under TRIPS Article 4.

Portugal applies to all neighbouring rights owners a term of protection of 50 years. As provided by Copyright Code Articles 183, 186 and 188, Portugal does not give any privilege to any special country. IP/Q/PRT/1 Page 3

3. Please explain whether and how Portugal protects against both the direct and indirect reproduction of phonograms as required by TRIPS Article 14.2, including by digital transmission in the context of subscription or interactive services.

Portugal provides also for direct and indirect reproduction under Copyright Code Article 184, but only for Portuguese and EC producers in the conditions referred in answer to question 1.

[Follow-up question]

The answer to this question indicates that there is no reproduction right for phonograms under portuguese law other than for EC producers. Please clarify this issue. If this is the case, please explain how the failure to provide national treatment for this right to other WTO Member countries is consistent with TRIPS.

The American delegation has correctly interpreted the meaning of our last answer. Presently, only the producers of national or EU's phonograms are protected. In time, Portuguese law will be adapted to TRIPS.

4. Please explain whether and how Portugal provides full retroactive protection to works, phonograms and performances from other WTO Members, as required by TRIPS Articles 9.1, 14.6 and 70.2, each of which incorporate by reference or rely upon Berne Article 18. Please give the date back to which such protection extends with respect to each category of subject matter.

The protection period is 70 years for and 50 years for related rightholders by force of 93/98 CEE directive of 29 October 1993.

Berne Article 7(8) provides the principle of material reciprocity. Copyright Code Article 64 copes with this Berne article. Thence, concerning the , the Portuguese law faces no problem.

On the other hand, the application "mutatis mutandis" of Berne Article 18 to related rightholders provides them with protection.

There is no provision of full retroactive protection as implied in the question.

Berne Article 18(2) expressly stipulates: "if, however, through the expiry of the term of protection which was previously granted, a work has fallen into the public domain of the country where protection is claimed, that work shall not be protected anew".

5. Please explain the criminal and civil remedies available for and the extent to which they fully implement the obligations in TRIPS Articles 41, 45, 50 and 61. In the response, please specify, inter alia, whether these remedies may include the seizure, forfeiture and destruction of infringing articles and equipment used to make the infringing articles, as required by Article 46 and 61, and the manner in which the grant of civil provisional relief is provided in accordance with TRIPS Article 50. Please also explain how civil damages are measured in the case of computer program infringement and when and how attorney’s fees and court costs are awarded.

Portuguese law includes already several of the TRIPS obligations - see Copyright Code Articles 195 to 212.

Article 205 emphasizes the civil remedy - the seizure and forfeiture of goods related with the infringement and cautious provisions - Articles 201 and 209 respectively - and criminal sanctions in Articles 195 to 197. IP/Q/PRT/1 Page 4

We indicate the norms more closely related to TRIPS Articles 45, 50 and 61.

In the case of computer programme infringements are applied provisions contained in Law Decree 252/94 of 20 October - Articles 13 to 15.

Nevertheless questions relating to the enforcement of the Copyright Code are to be considered later in the scrutiny process.

6. Please explain how Article 75 of the Portuguese Copyright Law, which provides for certain broad exceptions to the exclusive rights granted to the copyright owner complies with Berne Article 9(2) and TRIPS Article 13, which require limitations and exceptions to exclusive rights to be limited to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rightholder.

Berne Article 9(2) and TRIPS Article 13 does not comply since the former is referred only to reproduction rights and the latter is extensive to all exclusive rights.

Nevertheless these are two generic rules which allow the national legislator to regulate over such "limitations or exceptions".

This is what the Portuguese legislator did under Copyright Code Article 75 to protect interests of rightholders, users and public in general as well.

We do not consider that Article 75 needs any change to comply with the two above referred norms.

[Follow-up question]

Please explain whether and how the literal text of Article 75 of Portugal's copyright law has been limited in operation or application.

Article 75 of our Copyright and Neighbouring Rights Code was not - nor did it have to be - subject to any limitation. Nothing in TRIPS imposes the neutralization of free use established by the Portuguese provision.

7. Article 2 of Portugal’s Copyright Law, which lists the classes of protected works, does not include computer programs. Please explain how computer programs are protected under Portugal’s copyright law and, in particular, whether they are explicitly protected “as literary works” as required by Article 10 of TRIPS, and whether copyright owners are granted a rental right in their programs, as required by Article 11 of TRIPS.

As stated in answer to question 5 Portugal protects the computer programmes under a specific norm - the Law Decree 252/94 of 20 October.

According to the above-mentioned Law Decree, the computer programmes when created are explicitly protected "as literary works".

Copyright owners are not yet granted rental rights in their programmes.

The EC directive 92/100 concerning rental rights is now being translated into the Portuguese law namely the Copyright Code. Computer copyright owners shall accordingly be granted the same rights. IP/Q/PRT/1 Page 5

[Follow-up question]

Please indicate Portugal's timetable for providing rental rights in computer programmes, as required by TRIPS Article 10,effective on 1 January 1996.

The rental right mentioned in this question is determined by Article 11 of TRIPS, and not by Article 10.

Portugal fulfilled this obligation in advance, since that right is contemplated in Article 8 of the Law Decree No. 252/94, issued on 20 October (legal protection of computer programmes).

8. Article 3 of Portugal’s Copyright Law specifies the protection granted to collective works, but fails to state whether databases and other material that are based on factual information are protected, as required by Article 10 of TRIPS. Please explain how databases are protected under Portugal’s copyright law.

Compilations of works and other materials are under protection by the Portuguese law Articles 3 (1b and c) due to which several databases are granted protection.

TRIPS Article 10.2 on extending the protection scope requires the Portuguese law to be amended.

Anyway the TRIPS norm on this subject is overcome by the EC actual directive which extensively specifies the whole subject matter.

The national transposition of the EC directive shall eventually overcome the needs implied by TRIPS Article 10.2.

[Follow-up question]

Please indicate Portugal's timetable for providing protection for databases, as required by TRIPS Article 10, effective on 1 January 1996.

Portugal will work on the creation of specific provisions regarding the protection of databases, according to what it is established in TRIPS, by the time the EU Directive concerning this matter is implemented by the national competent authorities.

This matter is of the strict competence of Parliament. Therefore, the Government needs a law by which it is authorized to legislate on the subject concerned. It is foreseen that in 1997 such provisions shall be approved.

[General follow-up question]

Has the TRIPS Agreement been self-executing in Portugal since 1 January 1996? In particular, can a rightholder from any other WTO Member country sue to enforce rights that are required to be granted by TRIPS?

TRIPS was published in the Official Journal - Diàrio da República - on 12 December 1994. National law on copyright and neighbouring rights has not yet been adapted to all requirements which derive from the application of the Treaty. It is well known that there are two different conceptions as to whether or not rules contained in international agreements duly ratified, in this case by Portugal, are directly applicable. IP/Q/PRT/1 Page 6

One of the conceptions upholds that, ever since the publication of the law, its principles and rules can be immediately invoked, namely those creating rights favouring private individuals. The other conception sustains that only after the effective adaptation of the internal juridical order are those laws of a binding nature. Both positions co-exist in doctrine and jurisprudence. We realize that the United States prefer the first position and read the Treaty under that point of view.