Why do US and EU trade negotiators hate the Berne Copyright Limitations and Exceptions?

Posted on by James Love

For the past year, a treaty on copyright exceptions for persons who are blind or have other disabilities has been hung up on demands by the European Union to insert provocative language on the so called “three step test” in copyright into the treaty. The Trans Pacific Partnership Agreement is in the middle of a similar dispute, with the US pushing language that would place the three step test on top of all copyright limitations and exceptions, including those set out a particular cases in the Berne Convention. One US State Department employee referred to the three step test as the fundamental basis for copyright.

What is the three step test in copyright? Well, there are several. There is a three step in the Berne Convention, created in 1967 to provide for general exceptions to the reproduction rights of authors in areas where the Berne did not have a separate (a particular) standard for the exception. The three step test was modified to focus on right holders in the TRIPS, and modified again in the WCT to acknowledge the importance of the Berne Exceptions, in the WPPT for the rights that it provided, and now in countless new treaties and trade agreements, with some surprisingly variances, many of which are reported here: http://keionline.org/node/1568.

The most potentially restrictive three step test is probably the 1994 WTO version, which is Article 13 of the TRIPS Agreement. Both Berne and the WTO versions are given below:

Berne Article 9(2)
It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.

TRIPS SECTION 1: COPYRIGHT AND RELATED RIGHTS
Article 13 Limitations and Exceptions
Members shall confine limitations or exceptions to exclusive rights 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 right holder.

The TRIPS version is widely seen as a mistake by many copyright experts, and seems on its face, to require that all copyright limitations or exceptions be subject to three separate tests — (1) is the L&E a “special case”, (2) does it “conflict with the normal exploitation” of the work, and (3) does it “unreasonably prejudice the legitimate interests of the right holder.” Naturally corporate copyright holders are crazy in love with the TRIPS version, and are engaged in endless promotion of the language in every new agreement that mentions copyright. But here it is worth noting that the 1967 Berne Convention rejected the notion that its own three step would apply to copyright limitations and exceptions in general — it was reserved for only those cases where the Berne did not have “particular” limitation or exception, and only to the reproduction right. What are these other Berne limitations and exceptions that had their own standards? Quite a few, actually, and they are important.

In Article 2(8) The Berne Convention provides that copyright “shall not apply to news of the day or to miscellaneous facts having the character of mere items of press information.” This is a mandatory limit on copyright, and quite important for everyone who writes or wants to be informed.

Article 10(1) of the Berne concerns quotations. In 1967 the reference to “short” quotations was dropped, and it was made mandatory, and now says:

“It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.”

The quotation right is a now required exception, and its scope regulated by Article 10(1) of the Berne, rather than the Article 9(1) three step test.

Article 11.bis(2) of the Berne provides for compulsory licensing of the right to use works for broadcasting and communication to the public, the only requirement being that the regime not be “prejudicial to the moral rights of the author, nor to his right to obtain equitable remuneration.” This exception was tested in a WTO case, and there the WTO ruled that the if the WTO member provided remuneration, the Article 13 TRIPS three step test did not apply. In other words, the WTO ruled that its own three step would not override the Berne standard for the exception.

Article 13(1) of Berne gives governments the right to grant compulsory licenses for music works, for example to cover a song. In many countries, including the USA, the compulsory license covers all music compensations, and can hardly be said to be a “special case.”

Article 10(2) of the Berne was a new exception, created in 1967, to permit exceptions “to permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization is compatible with fair practice.” Note that not only does the three step test does not apply for the education exception, but also that the Berne anticipates that this exception can be used in cross border situations, for example, in distance education.

The list of Berne exceptions is actually quite long and each and every one of them are important in their own right, including the many that are important for scholars, journalists, and people who make films or other creative works, not to mention search engines and social media.

On top of the various and several Berne exceptions, are other issues such as the exhaustion of rights (the first sale doctrine), the control of anti-competitive practices, government use of copyrighted works (applied to all copyrighted works without exception for the federal government in the United States), or limitations on injunctive relief (used in Canada for architectural copyrights) that have their own separate standards, IN THE TRIPS AGREEMENT. (See TRIPS Article 6, 40 and 44.2).

So, why do US and EU trade negotiators hate the Berne exceptions or the TRIPS flexabilities in Article 6, 40 and 44.2? Does the US realize that it has build a huge fair use industry that creatives massive wealth and utility and operates far outside of the three step test? Does the EU realize it needs to liberalize its exceptions in order to grow its own technology industry? And is there any country on earth that has too many exceptions in their national copyright law?

Following are two Annexes. The first is the WTO’s analytical notes on the Article 13 decision. The second is a list of the Berne exceptions that are under attack this week at WIPO.

Annex 1. Relationship between TRIPS Article 13 and Berne 11bis.

This is from the WTO Analytical Index — Guide to WTO Law and Practice, discussion of the panel decision in: US — Section 110(5) Copyright Act, DS160.

WTO Analytical Index — Guide to WTO Law and Practice, September 30, 2011

B. Interpretation and Application of Article 13

111. The Panel also clearly distinguished the different situations covered by Article 11bis(2) of the Berne Convention (1971) and Article 13 of the TRIPS Agreement, respectively:

“We believe that Article 11bis(2) of the Berne Convention (1971) and Article 13 cover different situations. On the one hand, Article 11bis(2) authorizes Members to determine conditions under which the rights conferred by Article 11bis(1)(i-iii) may be exercised. The imposition of such conditions may completely replace the free exercise of the exclusive right of authorizing the use of the rights embodied in subparagraphs (i-iii) provided that equitable remuneration and the author’s moral rights are not prejudiced. However, unlike Article 13 of the TRIPS Agreement, Article 11bis(2) of the Berne Convention (1971) would not in any case justify use free of charge.

On the other hand, it is sufficient that a limitation or an exception to the exclusive rights provided under Article 11bis(1) of the Berne Convention (1971) as incorporated into the TRIPS Agreement meets the three conditions contained in its Article 13 to be permissible. If these three conditions are met, a government may choose between different options for limiting the right in question, including use free of charge and without an authorization by the right holder. This is not in conflict with any of the paragraphs of Article 11bis because use free of any charge may be permitted for minor exceptions by virtue of the minor exceptions doctrine which applies, inter alia, also to Article 11bis.

As regards situations that would not meet the above-mentioned three conditions, a government may not justify an exception, including one involving use free of charge, by Article 13 of the TRIPS Agreement. However, also in these situations Article 11bis(2) of the Berne Convention (1971) as incorporated into the TRIPS Agreement would nonetheless allow Members to substitute, for an exclusive right, a compulsory licence, or determine other conditions provided that they were not prejudicial to the right holder’s right to obtain an equitable remuneration.”(115)

Annex 2. Limitation and Exceptions in the Berne Convention

When politicians and trade officials tell you they want to impose a restrictive 3-step test to narrow the copyright limitations and exceptions permitted under the Berne Convention, take a minute to review what the Berne exceptions cover, and ask yourself, why would anyone want to further limit these exceptions?

[The related rights in the Rome Convention, the rights in the WCT, WPPT and Beijing treaties, and the flexabilities in the WTO TRIPS Agreement require a separate discussion].

Article 2(4,7 and 8) – Protected Works:

1. “Literary and artistic works”; 2. Possible requirement of fixation; 3. Derivative works;
4. Official texts; 5. Collections; 6. Obligation to protect; beneficiaries of protection;
7. Works of applied art and industrial designs; 8. News

(2) It shall, however, be a matter for legislation in the countries of the Union to prescribe that works in general or any specified categories of works shall not be protected unless they have been fixed in some material form.

(4) It shall be a matter for legislation in the countries of the Union to determine the protection to be granted to official texts of a legislative, administrative and legal nature, and to official translations of such texts.

(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.

(8) The protection of this Convention shall not apply to news of the day or to miscellaneous facts having the character of mere items of press information.

Article 2bis – Possible Limitation of Protection of Certain Works:
1. Certain speeches; 2. Certain uses of lectures and addresses; 3. Right to make collections of such works

(1) It shall be a matter for legislation in the countries of the Union to exclude, wholly or in part, from the protection provided by the preceding Article political speeches and speeches delivered in the course of legal proceedings.

(2) It shall also be a matter for legislation in the countries of the Union to determine the conditions under which lectures, addresses and other works of the same nature which are delivered in public may be reproduced by the press, broadcast, communicated to the public by wire and made the subject of public communication as envisaged in Article 11bis(1) of this Convention, when such use is justified by the informatory purpose.

(3) Nevertheless, the author shall enjoy the exclusive right of making a collection of his works mentioned in the preceding paragraphs.

Article 10 – Certain Free Uses of Works:
1. Quotations; 2. Illustrations for teaching; 3. Indication of source and author

(1) It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.

(2) It shall be a matter for legislation in the countries of the Union, and for special agreements existing or to be concluded between them, to permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization is compatible with fair practice.

(3) Where use is made of works in accordance with the preceding paragraphs of this Article, mention shall be made of the source, and of the name of the author if it appears thereon.

Article 10bis – Further Possible Free Uses of Works:
1. Of certain articles and broadcast works; 2. Of works seen or heard in connection with current events

(1) It shall be a matter for legislation in the countries of the Union to permit the reproduction by the press, the broadcasting or the communication to the public by wire of articles published in newspapers or periodicals on current economic, political or religious topics, and of broadcast works of the same character, in cases in which the reproduction, broadcasting or such communication thereof is not expressly reserved. Nevertheless, the source must always be clearly indicated; the legal consequences of a breach of this obligation shall be determined by the legislation of the country where protection is claimed.

(2) It shall also be a matter for legislation in the countries of the Union to determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire, literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public.

Article 11bis, 2 and 3
(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing:

  1. the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images;
  2. any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one;
  3. the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images, the broadcast of the work.

(2) It shall be a matter for legislation in the countries of the Union to determine the conditions under which the rights mentioned in the preceding paragraph may be exercised, but these conditions shall apply only in the countries where they have been prescribed. They shall not in any circumstances be prejudicial to the moral rights of the author, nor to his right to obtain equitable remuneration which, in the absence of agreement, shall be fixed by competent authority.
(3) In the absence of any contrary stipulation, permission granted in accordance with paragraph (1) of this Article shall not imply permission to record, by means of instruments recording sounds or images, the work broadcast. It shall, however, be a matter for legislation in the countries of the Union to determine the regulations for ephemeral recordings made by a broadcasting organization by means of its own facilities and used for its own broadcasts. The preservation of these recordings in official archives may, on the ground of their exceptional documentary character, be authorized by such legislation.

Article 13(1) – Possible Limitation of the Right of Recording of Musical Works and Any Words Pertaining Thereto:
1. Compulsory licenses; 2. Transitory measures;
3. Seizure on importation of copies made without the author’s permission

(1) Each country of the Union may impose for itself reservations and conditions on the exclusive right granted to the author of a musical work and to the author of any words, the recording of which together with the musical work has already been authorized by the latter, to authorize the sound recording of that musical work, together with such words, if any; but all such reservations and conditions shall apply only in the countries which have imposed them and shall not, in any circumstances, be prejudicial to the rights of these authors to obtain equitable remuneration which, in the absence of agreement, shall be fixed by competent authority.

Plus, the entire APPENDIX – SPECIAL PROVISIONS REGARDING DEVELOPING COUNTRIES

Additional references