Transcript The Community Trade Mark and Harmonisation of Trade Mark Law

The European « Extended Collective
Licensing » Model
Potential Incompatibilities
with International Norms
Alain Strowel
Professor, Facultés universitaires Saint-Louis, Université de
Liège and MIPLC (Munich),
Attorney, Covington & Burling LLP, Brussels
Kernochan Center for Law, Media and the Arts
Columbia Law School - 28 January 2011
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Outline
• Existing problems and possible solutions
– What solution do the « extended collective licenses »
(ECLs) offer?
• ECLs in the EU:
– Existing ECLs
– Possible solutions for orphan works
• ECLs under the international norms:
– Prohibition of formalities under Berne Convention (BC)
– Application of rights (under BC and WCT) to scanning
and online display/communication
– Exceptions and limitations under BC, WCT, TRIPs
• Three-step-test
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Existing problems, possible solutions
• Management problems for « outsiders »:
– National third-parties (non-members)
– Foreigners from (i) EU origin or (ii) rest of the world
– Unknown parents (orphan works)
• Possible solutions when high transaction costs:
– Individual « opt-out » (ex. Google Book Settlement)
• Compability with Berne?
– Collective « opt-in »: collective agreement
• But ECLs are extended by law to include outsiders (nonmembers, foreigners, unknown parents)
• Compability with international norms?
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ECL Model
• Definition:
– when a license agreement freely negotiated between a
collective management organization (CMO) and a user by legal
provision is extended to the works of outsiders
• Three core elements:
– Agreement on a « voluntary basis »
– « Extension effect »
– By virtue of the law
• Outsiders retain their exclusive right until the
« extension effect » takes place
• Certain ECLs provide an opt-out for outsiders
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ECLs in the EU
• ECLs are the existing solution for outsiders:
– in case of cable retransmission of broadcasts (CableSatellite Directive)
• ECLs could become a future solution for the:
– (i) scanning/digitisation and
– (ii) online communication to the public
of orphan works
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ECLs for cable retransmission in EU
• Article 9 Cable-Satellite Directive 93/83:
– Exclusive right, mandatory collective management:
The right « to grant or refuse authorization to a cable operator
for a cable retransmission may be exercised only through a
collecting society »
– Outsider and competition issues addressed:
« Where a rightholder has not transferred the management of
his rights to a collecting society, the collecting society which
manages rights of the same category shall be deemed to be
mandated to manage his rights. Where more than one
collecting society manages rights of that category, the
rightholder shall be free to choose which of those collecting
societies is deemed to be mandated to manage his rights. »
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ECLs in the EU
• Existing EU framework:
– Autorisation of Member States to create ECLs according to
recital 18 InfoSoc Directive 2001/29:
« This Directive is without prejudice to the arrangements in the
Member States concerning the management of rights such as
extended collective licences. »
Recognition of ECLs as management systems, but in preamble
• Existing national ECLs (Nordic countries, Hungary)
– For specific uses: started in 1960s for broadcasters; today, for
internal uses by educational institutions and businesses, for
libraries and museums (archiving and making available), etc.
– Since 2008, Denmark has an general omnibus provision (not
restricted to a special field)
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Options for orphan works law (EU)
• EU Commission’s proposal in the « pipeline »:
– Expected to be released in the next few months (Commissioner
Barnier, 22 Jan. 2011)
• Possible options:
– Change of substantive EU copyright rules on exceptions:
• New exception for archiving copies and online display
– To build on art. 5(2)(c) for preservation and 5(2)(n) for online but on-site access of
collections (InfoSoc Directive)
• Redress mechanism for reappearing rightholders (but no claim for past)
• No way! Not applicable before 10 years (adoption, then transposition of a
directive)
– Facilitation of copyright licences and management throughout
the EU:
• Specific pan-European cross-border licence for online display
• Mutual recognition system of national systems (defining diligent search…)
• Extended collective licensing (ECL)
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ECL for orphan works at EU level?
• Can for ex. the ECL-based national digital library in
Norway (« Bokylla ») be exported at EU level?
• Is it possible to have an « extension effect » at EU level?
– ECL works at national level: no extension across borders
because no EU copyright, only 27 national copyrights
• The Bokylla ECL with Kopinor (CMO) covers Norwegian and foreign
publications but only benefits Norwegians users (IP-addresses)
– Can it be solved without an EU copyright title?
• Is the negociation process not too complex for multilanguage, -media libraries? How to define the tariffs?
– Copyright license to be negotiated with too many groups of
rightholders (already for books or journals: text and images)?
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ECLs under international norms
• Under Art. 5(2) Berne Convention (BC) : no formality
– Prohibition of « any formality » for the « enjoyment and the
exercise » of the rights within copyright
• With regard to works of foreign origin
– ECLs do not affect the enjoyment, but do affect the exercise
– But do ECLs impose a « formality » on the « exercise »?
• No need to fulfill any « written » formality or to become the member of
a CMO
• Are the conditions negotiated by private parties (for ex. CMOs), but
later extended by law to be considered as a « formality »?
– The statutory obligation to assert the « moral rights » under UK CDPA
1988 is a formality (even if done in a private instrument)
– Are the obligations resulting from the intervention of a public authority to
be considered as formality (judge in a class action settlement?)
• Is the opt-out offered to outsiders a formality? No, because it redirects
the right holder against the user (the full exclusivity is recovered)
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Rights under BC and WCT
• Scanning and downloading, as reproductions, are
covered by Art. 9 BC
• Online display/communication: does it fall under BC?
• Art. 11bis (1)(i) which applies to literary and artistic works does not
cover wire-originated communications
• Are covered by Berne: the communication to the public of:
– the performance of dramatic, dramatico-musical and musical works (art.
11(1)(ii));
– the recitation of literary works (art. 11ter(1)(ii));
– the cinematographic adaptations of literary/artistic works (art. 14(1)(ii))
– the cinematographic works (art. 14bis(1))
• Are those provisions applicable to pull/on-demand communication?
When the public is separated in time?
• Online display/communication falls under Art. 8 WCT
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Exceptions/limitation under BC / WCT
• Are ECLs an exception/limitation?
– Exclusive right is preserved
– But:
• The author cannot exercise her right, only the CMO
• The author cannot individually negotiate
• The outsiders are affected in the absence of any mandate
• If yes, does this exception/limitation respects the
international constraints?
– Scanning and downloading = reproduction under Art. 9 BC
• Thus issue whether ECLs respect the « three-step-test » of Art. 9(2) BC
– Online display/communication = communication to the
public/making available under Art. 8 WCT
• Are ECLs allowed? A fortiori argument: compulsory licence=allowed
– Art. 8 is without prejudice to Art. 11bis(1)(ii) BC which allows
compulsory licence (with remuneration) under Art. 11bis(2) BC
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ECLs under the « three-step-test » (1)
Art. 9(2) BC; 10 WCT; 13 TRIPs; 5(5) Infosoc Dir
• Limited to « certain special cases »:
– Narrow in scope and reach, exceptional and precise (clearly
defined), foreseeable scope, for specified purposes
– Thus need to know: rights, works, beneficiaries, purpose
• Question on the Danish omnibus ECL model: no beneficiaries, no
categories of work defined, no defined field of operation, no
purpose
– With ECLs: the actual scope is determined by the
agreements (contractual aspect), not by the statutory
provisions on ECLs
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ECLs under the « three-step-test » (2)
• Limitations shall « not conflict with a normal
exploitation» of the work:
– « Exploitation » refers to the economic value
– « Normal » exploitation indicates the limitation should not
interfere with the usual way for exploiting a work (this is
relative; it should take into account « potential, as well as
current and actual, uses or modes of extracting value »)
• Are ECLs compatible with this requirement?
– They have been in place for decades in the Nordic countries
without any major challenge (they might now be the « normal
exploitation » in the Nordic countries)
– They represent a potential way of extracting value
– ECLs are based on a freely negotiated agreement and provide
for a remuneration to the right holders
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ECLs under the « three-step-test » (3)
• Limitations shall « not unreasonably prejudice the
legitimate interests of the author » (BC) or « of the right
holder » (TRIPs):
– « Prejudice » refers to « harm »
– The «legitimate interests » language is more difficult to
interpret (Does it refer to the economic and moral interests of
the author? Is it normative or not?)
– The term « unreasonably » brings the proportionality test in
the picture
• Are ECLs compatible with this third prong of the test?
– Very probably
– Indeed, the economic interests are less prejudiced if a
remuneration is paid (compared to pure exceptions)
– As right holders negotiate, ECLs can be presumed to be less
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prejudicial than compulsory/statutory licenses
A few concluding remarks
• With the ECLs, the collective management model
becomes the “normal exploitation”
• With the increased use of ECLs, it becomes more
important to have rules ensuring representativity,
accountability, transparency of CMOs
• ECLs solve the outsider (including the unknown
parents) problem quite well. But in practice, they have
been less convincing for the foreigner issue
– Therefore, existing national ECLs are not entirely
satisfactory
• With increasing online uses, the challenge results
more from the territoriality of copyright
– In the EU: how to override the absence of an EU-wide title?
ECLs might not offer the solution here
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