Transcript Fair Use, Fair Dealing and Other Open Ended Exceptions The Application of the Three Step Test Dr Henning Grosse Ruse - Khan WIPO African-Arab Seminar.

Fair Use, Fair Dealing and Other
Open Ended Exceptions
The Application of the Three
Step Test
Dr Henning Grosse Ruse - Khan
WIPO African-Arab Seminar on Copyright
Limitations and Exceptions
Cairo, 2 November 2009
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
1
06.11.2015
Outline
 The Concept of Fair Use and Fair
Dealing Exceptions
 The ‘Three Step Test’ as International
Framework for National © Exceptions
 An Obstacle for Domestic Policy
Space to Adopt Tailored Exceptions?
 A Flexible Interpretation of the Three
Step Test: From Destructive to
Constructive Ambiguity
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
2
06.11.2015
Open-Ended Exceptions:
Fair Use and Fair Dealing
Fair Use Doctrine, sec.107 USCA
 (…) the fair use of a copyrighted work, including such use by
reproduction in copies or phonorecords or by any other means
specified by that section, for purposes such as criticism, comment,
news reporting, teaching (including multiple copies for classroom
use), scholarship, or research, is not an infringement of copyright.
 In determining whether the use made of a work in any particular
case is a fair use the factors to be considered shall include
(1) the purpose and character of the use, including whether such use
is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
3
06.11.2015
Open-Ended Exceptions:
Fair Use and Fair Dealing
Fair Use Examples:
 Quotation of excerpts in a review or criticism for purposes of
illustration or comment
 Quotation of short passages in a scholarly or technical work,
for illustration or clarification of the author’s observations
 Use in a parody of some of the content of the work parodied
 Summary of an address or article, with brief quotations, in a
news report
 Reproduction by a library of a portion of a work to replace
part of a damaged copy
 Reproduction by a teacher or student of a small part of a
work to illustrate a lesson
 reproduction of a work in legislative or judicial proceedings
or reports
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
4
06.11.2015
Open-Ended Exceptions:
Fair Use and Fair Dealing
Main Characteristics:
 Applicable to all exclusive rights, sec.107
covers potentially all types of uses of ©
material for certain purposes
 “Fair use” then depends on an overall
assessment based on several factors
“which though in no case definitive or
determinative, provide some gauge for
balancing the equities” (H.R. No.94-1476)
 Fair use is a broad and indeterminate
exception which US courts have applied
very differently on a case-by-case basis
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
5
06.11.2015
Open-Ended Exceptions:
Fair Use and Fair Dealing
Fair Dealing, sec.29, 30 CDPA
 Fair dealing for the purposes of research
(non-commercial) and private study, sec.29
(1), (1C)
 Fair dealing for the purposes of criticism
or review, sec.30 (1)
 Fair dealing for purposes of reporting
current events, sec.30 (2)
 Generally, sufficient acknowledgement
must be provided, sec.29 (1), 30 (1), (2)
 Often, exception does not apply to all
categories works, sec.29 (1), (1C), 30 (2)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
6
06.11.2015
Open-Ended Exceptions:
Fair Use and Fair Dealing
Criteria for ‘Fair’ Dealing:
 Publication of the Work
 Quantity / quality of amount taken (no
disincentive to new creations)
 Type of use (transformation, added value vs.
commercial benefit)
 Motive of user; consequences of dealing
 Any less intrusive measures available?
 Impact of human rights as strengthening
public interests
 Need to weigh all factors based on the
individual circumstances
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
7
06.11.2015
The ‘Three Step Test’ as
International Framework
The Three Step Test in Int. © Law:
 Art.9 (2) BC: 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.
Art.13 TRIPS: 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 .
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
8
06.11.2015
The ‘Three Step Test’ as
International Framework
The Three Step Test in Int. © Law:
Art.10 WCT
(1) Contracting Parties may, in their national legislation,
provide for limitations of or exceptions to the rights
granted to authors of literary and artistic works under
this Treaty in certain special cases that do not conflict
with a normal exploitation of the work and do not
unreasonably prejudice the legitimate interests of the
author.
(2) Contracting Parties shall, when applying the Berne
Convention, confine any limitations of or exceptions to
rights provided for therein to certain special cases that
do not conflict with a normal exploitation of the work and
do not unreasonably prejudice the legitimate interests of
the author.
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
9
06.11.2015
The ‘Three Step Test’ as
International Framework
Role & Function of the Three Step Test
 By establishing 3 general conditions for
enacting © exceptions in national laws, the 3
step test regulates the national autonomy to
prescribe exceptions to ©
 Other © exceptions in BC are lex specialis,
with the 3 step test as outer limit (Art.10 (2)
WCT) without changing their scope…
 Model character for other TRIPS rules on
exceptions on patent, TM, & Design rights
 horizontal int. rule on national exceptions to
IPRs
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
10
06.11.2015
An Obstacle for Domestic
Policy Space
Interpretation by WTO Panels (I)
In June 2000, a WTO Panel found a specific exception in US © inconsistent with Art.13 TRIPS:
 Art.13 applies to exclusive rights of BC, TRIPS
 certain special cases: Clearly defined and
narrow in scope and reach
 a normal exploitation: any current & potential
(certain degree of likelihood) market
 conflict: “uses [which] enter into economic competition with the ways that right holders normally extract
economic value from that exclusive right to the work and
thereby deprive them of significant or tangible
commercial gains”
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
11
06.11.2015
An Obstacle for Domestic
Policy Space
Interpretation by WTO Panels (II)
 unreasonable prejudice of legitimate interests:
 Legitimate interests of right holders are primarily defined by
the “economic value of the exclusive rights“ (estimation by
reference to market value of a license)
 “[P]rejudice to the legitimate interests of right holders
reaches an unreasonable level if an exception or limitation
causes or has the potential to cause an unreasonable loss of
income to the copyright owner.“
 National exceptions that do result in “serious loss of profit for
the copyright owner” can still survive the 3 step test by providing the owner “with some compensation (a system of
compulsory licensing with equitable remuneration)”
 Public interest motives behind nat. exceptions
cannot prevail over interests of right holders
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
12
06.11.2015
An Obstacle for Domestic
Policy Space
Impact on Open-ended Exceptions
 Certain special cases vs. broad scope and
indeterminate application (e.g. US fair use),
‘fairness’ as key factor (UK fair dealing)
 No conflict with a normal exploitation vs.
US case law which sometimes does allow a
negative impact on actual/potential market if
e.g. the use is highly transformative (see US Sup.
Ct. in Campbell vs Acuff Rose, 510 U.S. 569 (1994))
 No unreasonable prejudice to legitimate
interests? Case-specific (proportionality?)
analysis under fair use and fair dealing
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
13
06.11.2015
An Obstacle for Domestic
Policy Space
Potential Impact on DCs:
 Regulatory freeze: Especially countries
without a history of © legislation and existing
© exceptions might refrain from introducing
tailored exceptions in fear of acting inconsistent with the 3 step test
 Exceptions cannot be drafted from the
perspective to give effect to public interest
measures, (e.g. A2K via exceptions for
research, education)
 Consistency of any future treaty on © exceptions (WBU proposal) with 3 step test?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
14
06.11.2015
Achieving Constructive Ambiguity
via a Flexible Interpretation
Objectives in Treaty Interpretation (I)
 Art.31:1 VCLT: “A treaty shall be interpreted in good faith in
accordance with the ordinary meaning to be given to the
terms of the treaty in their context and in the light of its object
and purpose.”
 Art.7 TRIPS: IP protection “should contribute to the
promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of
producers and users of technological knowledge and in a
manner conducive to social and economic welfare, and to a
balance of rights and obligations.”
 Para.5 a) Doha Decl.: “(…) each provision of the TRIPS
Agreement shall be read in the light of the object and purpose
of the Agreement as expressed, in particular, in its objectives
and principles.”
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
15
06.11.2015
Achieving Constructive Ambiguity
via a Flexible Interpretation
Objectives in Treaty Interpretation (II)
 WCT Preamble: “Recognizing the need to
maintain a balance between the rights of authors and
the larger public interest, particularly education,
research and access to information, as reflected in
the Berne Convention”
 BC Preamble: “The countries of the Union, being
equally animated by the desire to protect, in as effective and uniform a manner as possible, the rights of
authors in their literary and artistic works”
 Art.20 BC, Art.2:2 TRIPS, Art.1 WCT:
Overriding the more balanced interpretation
mandated by TRIPS, WCT?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
16
06.11.2015
Achieving Constructive Ambiguity
via a Flexible Interpretation
Translating Open Treaty Terms into
Domestic Policy Space:
 With due regard to ordinary meaning and
context, the role of TRIPS, WCT balancing
objectives will be decisive for broad and
open treaty terms
 As treaty interpretation and implementation
is to be performed primarily by states, giving
effect to the balancing objectives translates
into domestic policy space how to balance
 Int. Courts must respect this balance – if
within the boundaries of Art.31 VCLT
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
17
06.11.2015
Achieving Constructive Ambiguity
via a Flexible Interpretation
Agreed Statements to Art.10 WCT
 It is understood that the provisions of Article 10 permit
Contracting Parties to carry forward and appropriately
extend into the digital environment limitations and
exceptions in their national laws which have been
considered acceptable under the Berne Convention.
 Similarly, these provisions should be understood to permit
Contracting Parties to devise new exceptions and
limitations that are appropriate in the digital network
environment.
 It is also understood that Article 10(2) neither reduces nor
extends the scope of applicability of the limitations and
exceptions permitted by the Berne Convention.
 interpretative role? Relevant context for WCT
(Art.31 (2) a) VCLT); but for BC (Art.31 (3) a), c) VCLT)?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
18
06.11.2015
Achieving Constructive Ambiguity
via a Flexible Interpretation
Declaration on the Three Step Test (I)
 “(…) historic evidence, economic theory and the principle of
self determination suggest that individual states should have
sufficient flexibility to shape copyright law to their own cultural,
social and economic development needs. Copyright exceptions and limitations tailored to domestic needs provide the
most important legal mechanism for the achievement of an
appropriate, self-determined balance of interests at national
level.”
 “International economic regulation allows for a balance of
economic and social interests. International intellectual
property law also stresses the need for balance. In the field of
copyright law, this Declaration proposes an appropriately
balanced interpretation of the Three-Step Test under which
existing exceptions and limitations within domestic law are not
unduly restricted and the introduction of appropriately balanced exceptions and limitations is not precluded.”
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
19
06.11.2015
Achieving Constructive Ambiguity
via a Flexible Interpretation
Declaration on the Three Step Test (II)
 The Three-Step Test does not require limitations and
exceptions to be interpreted narrowly. They are to be
interpreted according to their objectives and purposes.
 The Three-Step Test’s restriction of limitations and
exceptions to exclusive rights to certain special cases does
not prevent (…) legislatures from introducing open ended
limitations and exceptions, so long as the scope of such
limitations and exceptions is reasonably foreseeable (…)
 Limitations and exceptions do not conflict with a normal
exploitation of protected subject matter, if they are based
on important competing considerations (…)
 The Three-Step Test should be interpreted in a manner
that respects (…) interests deriving from human rights and
fundamental freedoms, (…) other public interests, notably
in scientific progress and cultural, social, or economic
development
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
20
06.11.2015
Achieving Constructive Ambiguity
via a Flexible Interpretation
Constructive Ambiguity in the 3 step test:
 ‘Special’ cases may include those which address public
interests recognised inter alia in Art.7 or Art.8:1 TRIPS
 Exploitation could be considered ‘normal’ only if it does
not significantly interfere with such interests
 ‘legitimate’ interests of right holders may only be those
which sufficiently reconcile the public interests recognised
in the WTO/TRIPS objectives
 Any ‘prejudice’ which is caused by good faith measures
(necessary for) protecting those interests may be
understood as not being ‘unreasonable’
 Countries should aim to utilise the policy
space inherent in the test’s open terms
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
21
06.11.2015
Thank you for your attention!
Any comments and critique to
[email protected]
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
22
06.11.2015