Transcript Sub-regional Seminar on the Protection of Computer Software and Databases organized by the World Intellectual Property Organization (WIPO), the Romanian Copyright Office (ORDA), and the.

Sub-regional Seminar on
the Protection of Computer Software and Databases
organized by
the World Intellectual Property Organization (WIPO),
the Romanian Copyright Office (ORDA), and
the State Office for Inventions and Trademarks (OSIM)
Mangalia, Romania, August 25 to 27, 2010
TOPIC 16: MANAGING AND MAINTAINING CULTURAL HERITAGE EXPLOITING THE POTENTIAL OF DIGITAL TECHNOLOGY (DIGITIZATION,
USE OF ORPHAN WORKS, ETC.)
Dr. Mihály Ficsor, Chairman, Central and Eastern European
Copyright Alliance (CEECA), Budapest
Basic conditions of respect for IP
 Respect because it is a judicious system duly taking into account
all the legitimate interests.
 Balancing of interests (rights, exceptions and limitations).
 Respect because people understand and accept its objectives.
 Awareness building.
 Respect because it functions, and is exercised, the way as
„advertized.”
 Contractual system and collective management.
 Respect because there is an appropriate mechanism to guarantee
respect for it.
 Enforcement.
M. Ficsor, Mangalia, August 25-27, 2010
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Basic conditions of respect for IP
 Respect because it is a judicious system duly taking into account all
the legitimate interests.
 Balancing of interests (rights, exceptions and limitations).
 Respect because people understand and accept its objectives.
 Awareness building.
 Respect because it functions, and is exercised, the way as
„advertized.”
 Contractual system and collective management.
 Respect because there is an appropriate mechanism to guarantee
respect for it.
 Enforcement.
M. Ficsor, Mangalia, August 25-27, 2010
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Balancing of interests – rights corresponding to
the social justification of copyright
 There are different legal-philosophical justifications for copyright
(„instrumentalist,” natural-right/human-right based, etc.), but there
is agreement that one of the basic objectives – or the basic objective
– of copyright protection is the promotion of creativity and
production of valuable cultural and information goods and
services.
 Copyright norms should be suitable to serve this objective.
However, extending the scope and means of protection beyond
what is necessary to achieve it would not increase, but would
rather decrease the efficiency of the system – since it might
undermine its credibility and the respect for it.
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Balance of interests – basic considerations
regarding exceptions and limitations
 The need for an appropriate balance between the public interest to
promote creativity through adequate copyright protection and other public
interests has been recognized and taken into account since the very
moment of the creation of an international copyright system.
 Statement of Numa Droz , the President of Conference at the first of the
three diplomatic conferences held in Bern (1884, 1885 and 1886) leading to
the adoption of the Berne Convention: “Whereas,… certain delegations might
have wished for more extensive and more uniform protection of authors’ rights, due
account did also have to be taken of the fact that the ideal principles whose triumph
we are working towards can only progress gradually in the so-varied countries that
we wish to see joining the Union. Consideration also has to be given to the fact that
limitations on absolute protection are dictated, rightly in my opinion, by the public
interest. The ever-growing need for mass instruction could never be met if there
were no reservation of certain reproduction facilities, which at the same time should
not degenerate into abuses. These were the various viewpoints and interests that we
have sought to reconcile in the draft Convention.” (Emphasis added.)
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Balancing of interests – specific exceptions and
limitations under the Berne Convention
 Access to information: free use official texts of a legislative, administrative
and legal nature (Art. 2(4)), political speeches and speeches delivered in legal
proceedings (Art. 2bis(1)), and – for informatory purposes – lectures and
addresses delivered in public; free re-use of articles and broadcast works on
current economic, political or religious topics (Art. 10bis(1)) and
(Art.10bis(2)).
 Freedom of speech, research and criticism: free quotation (Art. 10(1)).
 Educational purposes: free use by way of illustration for teaching (Art. 10(2)),
 So-called minor „reservations” regarding performing rights such as for
official or religious ceremonies, non-profit educational purposes (agreed
statement adopted concerning Arts. 11, 11 bis, 11ter).
 Facilitating broadcasting and making and preservation of broadcast works:
compulsory licenses or mandatory collective management (Art. 11 bis (2))
and exceptions (Art. 11 bis (3)).
 Facilitating recording of music: compulsory licenses or mandatory collective
management (Art. 13(1)).
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Balancing of interests –
the „three-step test” (1)
 „Invented” at the 1967 Stockholm revision conference ; Art. 9(2) of the
Berne Convention only regarding the right of reproduction.
 Extended by the TRIPS Agreement to all economic rights under copyright
(Art. 13) (but not to related rights; see Art. 14.6) and – with some wording
differences – to industrial design rights (Art. 26.2) and patent rights
(Art.30).
 Extended by the WCT to all economic rights under copyright (Art. 10) and
by the WPPT to all economic rights of performers and producers of
phonograms (Art. 16).
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Balancing of interests –
the „three-step test” (2)
 The three „steps”(three conditions that exceptions and limitations should
fulfill):
 confined to certain special cases (copyright; related rights); limited scope
(industrial design and patent rights);
 no conflict with a normal exploitation (in the case of industrial design
and patent rights: no unreasonable conflict);
 no unreasonable prejudice to the legitimate interests of the owners of
rights (in respect of industrial design and patent rights, it is added: „taking
into account of the legitimate intersts of third parties”).
 Offering sufficient flexibilities for a due balance of interests, as also proved by
two WTO dispute settlement reports interpreting the test as provided in
Articles 13 and 30 of the TRIPS Agreement:
 WT/DS114/R of 17 March 2000 (Canada – Patents);
 WT/DS160/R of 15 June 2000 (USA – Copyright) .
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Balancing of interests – exceptions and
limitations in the digital online environment
 Agreed statement concerning Article 10 of the WCT (on the „three-step
test” concerning copyright): „It is understood that the provisions of Article
10 permit Contacting Parties to carry forward and appropriately extend
into the digital environment limitations and exceptions in their national
laws which have been considered applicable 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.”
 Agreed statement concerning Article 16 of the WPPT (on the „three-step
test concerning the rights of performers and producers of phonograms):
The agreed statement concerning Article 10 (on Limitations and
Exceptions) of the WIPO Copyright Treaty is applicable mutatis mutandis
also to Article 16 (on Limitations and Exceptions) of the WIPO
Performances and Phonograms Treaty.
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Specific exceptions and limitations for
education and library services
Examples for the application of exceptions for education and library
services in the digital online environment:
 The E.U. Information Society (Copyright) Directive provides for
exceptions, inter alia, in the following cases:
 Article 5.2(c): „in respect of specific acts of reproduction made by
publicly accessible libraries, educational establishments or museums, or
by archives, which are not for direct or indirect economic or commercial
advantage;”
 Article 5(3)(n):„use by communication or making available, for the
purpose of research or private study, to individual members of the public
by dedicated terminals on the premises of establishments referred to in
paragraph 2(c) of works and other subject-matter not subject to
purchase or licensing terms which are contained in their collection.”
 TEACH Act of 2002 of the U.S.: extension of the classroom exception for
teaching to distance education, subject to guarantees – by technological
measures – that the works and objects of related rights are only made
available through the Internet to those who participate in the organized
educational program.
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Exceptions and limitations in the digital online
environment – WIPO program
 Although Article 10 of the WCT and Article 16 of the WPPT, along with the
agreed statement adopted concerning them offer sufficient flexibilities,
guidance is needed for appropriate regulation and application of
exceptions and limitations in the digital online environment.
 Intensive WIPO activities with this objective, also as part of the WIPO
Development Agenda:
 exceptions and limitations on the agenda of the Standing Committee
on Copyright and Related Rights , in particular for the visually
impaired, educational purposes and library services;
 review of national laws and practical experience; studies and
information meetings;
 proposals for norm-settings and/or practical harmonization efforts in
particular as regards exceptions for the visually impaired.
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Digitization of books and other publications (1)
Different purposes - different conditions for applying exceptions:
 digitization of protected works or works in the public domain (or
„orphan works” (see below))?
 archival purposes (for reservation, possible replacement of
damaged or lost copies) or for making available?
 making available for use in the premises of the establishment
(library, archive, educational establishment) or through the
Internet?
 public non-profit establishments and activities or commercial
establishment and/or activities?
 making available for specific purposes in respect of which specific
copyright exceptions may be granted (such as research, education)
or to the public in general (in particular, to the entire Internet
population)?
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Digitization of books and other publications (2)
International projects:
 bad example: Google book digitization and making available
„snippets” with the proposed Google book settlement (conflicts
with copyright norms; monopolization of knowledge; Americancentrism; commercial objectives for functions where noncommercial interests justify exceptions);
 relatively good example: Europeana (only or mainly for works in
the public domain);
 desirable system: digitization of all public domain works in respect
of which it is worthwhile doing so combined with digitization of
works protected by copyright through appropriate agreements
(individual and/or collective) with the owners of rights.
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Digitization and use of „orphan works” – basic
considerations and definitions (1)
 Recital 10 of Commission Recommendation of 24 August 2006 on the
digitisation and online accessibility of cultural material and digital
preservation (2006/585/EC) (“2006 Commission Recommendation”) refers to
orphan works in the following manner: “copyrighted works whose owners are
difficult or even impossible to locate.”
 The Commission’s 2008 Green Paper on Copyright in the Knowledge Economy
describes orphan works and the problems related to them as follows:
„Orphan works are works which are still in copyright but whose owners
cannot be identified or located… Protected works can become orphaned if
data on the author and/or the relevant rightholder(s) […] is missing or
outdated. […]
“The lack of data on their ownership can constitute an obstacle to making
such works available online to the public and can impede restoration efforts.
[…] “The issue of orphan works is mainly a rights clearance issue ... Apart
from liability concerns, the cost and time needed to locate or identify the
rightholders, especially in the case of works of multiple authorship, can
prove to be too great to justify the effort. […] Copyright clearance of orphan
works can constitute an obstacle to the dissemination of valuable content
and can be seen as hampering follow-on creativity.” (Page 10.)
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Digitization and use of „orphan works” – basic
considerations and definitions (2)
 In its Communication to the European Parliament, the Council, the
European Economic and Social Committee and the Committee of the
Regions on Europeana – next steps, the Commission has used the
following definition of orphan works: “works for which it is impossible or
very difficult to trace the rightholders.”
 In the Final Report on Digital Preservation, Orphan Works, and Out-ofPrint Works of the Copyright Subgroup of the High Level Expert Group on
Digital Libraries (hereinafter referred to as the “Final Report”) the
following explanation of the term “orphan works” can be found: “In some
cases rightholders cannot be identified or, if they can be identified, they
cannot be located, hence the term ‘orphan’.” (Page 10.)
 A similar definition can be found in the recently (in 2009) issued
Communication from the Commission on Copyright in the Knowledge
Economy: “[o]rphan works are works that are in copyright but whose right
holders cannot be identified or located.” (Page 5.)
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„Orphan works” –
„diligent search” as condition of use (1)


General consensus that, under any possible scheme for enabling the use of orphan
works, a diligent search should be required of the prospective user as a precondition
for lawfully using the orphan work.
Under the Final Report , it is as a “general prerequisite” to be fulfilled that “[d]ue
diligence has been performed in trying to identify the rightholders and/or locate
them.” (Page 12.)
The Final Report suggests that the notion and conditions of “diligent search” in the
context of orphan works should be elaborated, inter alia, according to the following
parameters:
 „The potential user of orphan works should be required to conduct a thorough
search in good faith in the country of publication/production if applicable, with
a view to identifying, locating and contacting the copyright owner, prior to the use
of the work.
 „Flexible approach should be adopted to ensure an adequate solution in dealing
with individual circumstances of each orphan work…
 „Guidelines or best practices specific to different kinds of work can be worked
out by stakeholders in different fields.
 „Any regulatory initiative should refrain from prescribing minimum search steps
or information sources to be consulted, due to rapidly changing information
sources and search techniques.” (Page 15.)
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„Orphan works” –
„diligent search” as condition of use (2)
 The Key Principles also stresses the need for “sector specific
criteria for [...] rightholder search.” (Final Report, Annex 6, page 1.)

In the framework of the European Digital Libraries Initiative,
representatives of rightholders and cultural institutions have agreed
on a Memorandum of Understanding on Diligent Search
Guidelines for Orphan Works, in which they have emphasized:
“[t]hat the due diligence guidelines [...] should be observed, to the
extent applicable, when searching for rightholders and that a work
can only be considered orphan if the relevant criteria, including
the documentation of the process, have been followed without
finding the rightholders.” (High Level Expert Group (2008), p. 2.)
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„Orphan works” – Hungarian legislation (1)
 Act CXII of 2008 amending the 1999 Copyright Law of Hungary has
introduced a complex regulation of the use of orphan works. It entered into
force with the publication of a Government Decree in May 2009 (see below)
which – on the basis of the authorization by the new Act – regulates certain
procedural details.
 Under the new Article 57/A of the Copyright Act, the new rules cover any
work in the case of which the person who intends to use it “has made all
those measures to find the author which, in view of the nature of the work
and manner of its use, are justified, and still has not succeeded to locate
him.” This is regarded to be a definition of both “orphan works” and “due
diligent search.”
 As a “general rule,” the Hungarian Patent Office has the right to grant a
non-exclusive license for the use of such works. However, as it turns out from
other provisions, this may only be regarded as a general rule from the
viewpoint of legal technique, since it is not applicable in those cases where
copyright is exercised through collective management.
(continues)
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„Orphan works” – Hungarian legislation (2)
(Continued)
 The license granted by the Patent Office is valid for five years.
 When the Patent Office grants such a license, it also fixes the amount of
remuneration due by the user of the work, taking into account the nature
and extent of the use. If the use of the work does not serve, either directly
or indirectly, to obtain or increase income, the remuneration must only be
paid after that the author (or other owner of copyright) is located. Where
the use of the work, either directly or indirectly, has the objective of
obtaining or increasing income, the use of the work may only be
commenced after that the remuneration is deposited at the Patent Office.
 As soon as the owner of copyright is located, the Patent Office, at the
request of the owner of copyright or the licensee, withdraws the license.
Nevertheless, the licensee is allowed to continue using the work – to the
same extent as until the time of finding the owner of copyright and/or his
location – for one more year or until the expiry of the license granted by the
Patent Office, whichever period is shorter. The same applies for those users
who, before finding the owner of copyright and his location had made serious
preparations for the use of the work under the license. (continues)
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„Orphan works” – Hungarian legislation (3)
(Continued)
 The owner of copyright may claim the remuneration established by
the Patent Office for five years from the date of the expiry of the
license or of the withdrawal thereof. After the expiry of the fiveyear period, the Patent Office has to transfer the remuneration
deposited at it to the collective management organization which is
authorized to manage the rights of the owner of copyright in
respect of other uses of his works, and, in the absence of such
organization, to the National Cultural Fund. The latter has to use
the amounts of remuneration thus transferred for the making
available of cultural goods to the general public.
 If the owner of copyright does not find the remuneration fixed by
the Patent Office appropriate, he may turn to the court to
establish its amount.
(continues)
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„Orphan works” – Hungarian legislation (4)
(Continued)




The above-described procedure is not applicable in those cases where a collective
management organization has the right to authorize the use of “orphan works” or
collect remuneration for them on the basis of obligatory or extended collective
management. In such a case, the distribution rules of the organization are supposed
to regulate how an owner of copyright may claim remuneration after that his identity
is established and his whereabouts is located.
The new legislation does not contain any provisions on the obligations of collective
management organizations to make efforts in order to avoid falling works too easily
into the category of “orphan works” (which, in the collective management systems,
usually just mean the category of those works for the use of which remuneration is
collected but then it is added to the “non-distributable amounts) and subsequently
to find their authors and/or their location.
Hungarian collecting societies use “non-distributable amounts” due to “orphan
works” in different ways: adding them to the amounts to be distributed, using them
for general cultural purposes, or even covering certain costs by them.
The 2009 Communication of the Commission on Copyright in the Knowledge Economy
foresees, as one of the possible options, an extended collective licensing system but
only “on the basis of a due diligent search.” (Page 5.)
(continues)
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„Orphan works” – Hungarian legislation (5)



(Continued)
Act CXII of 2008 has authorized the Government to regulate, in a decree, procedural
details concerning the licensing of use of “orphan works” by the Patent Office. The
Government has adopted the detailed rules on May 8, 2009, in Government Decree
100/2009(V.8).
Article 3(1) of the Government Decree establishes a non-exhaustive list of measures
which should be taken having due regard to the individual circumstances of each
case:
 search in (i) the database set up by the HPO on the basis of its voluntary register
of works, (ii) databases of CMOs, (iii) databases available on the Internet, (iv)
databases suitable for finding the residence of the rightholder, and
(v) databases of publicly accessible collections of works;
 requesting information (i) from organisations engaged in publishing works on a
regular basis, (ii) from persons carrying out some other use of works, and (iii)
from other authors of the work concerned if they are known and can be found;
 advertising in national daily newspapers.
Article 3(2) of the Government Decree also provides that, where it can be assumed
that the work was first published outside Hungary, the diligent search has to be
performed in the country of first publication unless this would come up against
disproportionate difficulties.
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„Creative commons” licenses
facilitating online access (1)




For information about such licenses, see www.creativecommons.org.
Based on copyright in the sense that, if a user does not respect the conditions of the
license, it qualifies as infringement.
However, the system of CC licenses are offered exactly for those who do not intend to
exploit their economic rights, or some of them, and are ready to allow free uses – fully or
partly – to the general public.
The key terms of the core suite of Creative Commons licenses:
 Attribution. Letting people copy, distribute, display, perform, and remix the work, as
long as they give credit the way requested (all CC licenses contain this element).
 NonCommercial. Letting people copy, distribute, display, perform, and remix the
work for non-commercial purposes only (for using the work for commercial purposes,
the author’s permission is needed).
 ShareAlike. Letting people create remixes and derivative works based on the work,
as long as they only distribute them under the same Creative Commons license that
the original work was published under.
 NoDerivatives. Letting people copy, distribute, display, and perform only verbatim
copies of the work — not make derivative works based on it.
CC licenses do not apply for software; instead: free software and open source licenses.
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„Creative commons” licenses
facilitating online access (2)
Advantages:
 There have always been people to make their creations available to the
public free of charge who may have tried to express this in different ways.
The CC licenses form a standardized system to express this along with
clearly recognizable symbols for the various conditions of free uses.
 Enriching and facilitating availability of certain kinds of works.
 Greater legal security for users.
Disadvantages:
 Rigidity due to the irrevocable nature of the CC licenses.
 Conflicts with collective management systems (due to the fact that
CMOs, in order to be able to operate their licensing system – frequently in
the form of „blanket licenses” – require their members to assign, or
otherwise give representation for – all of their works in respect of the
given category of rights).
 Creating – or even promoting („CC revolution”) – the wrong impression
that the CC may be an alternative to mainstream copyright.
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„Creative commons” licenses
facilitating online access (3)
 Which owners of rights use CC licenses?








academics, professors, researchers;
governments in respect of worked owned by themselves;
authors indoctrinated by „copyleft” ideology („free software” licenses as roots);
„Wiki-”type collective creation platforms;
„bloggers,” social networks , etc.;
„vanity publishers;”
„accidental authors;”
those who use them as part of business model: offering something free, and
getting income from related sources (similar to „open source” licenses „forking”
from „free software”);
 those who use them as a matter of creative-carrier strategy purposes (to succeed,
to become known and then to join the mainstream copyright world).
 Common characteristics:
 other sources of income/financial sources;
 subsidy, cross subsidy, „self-subsidy;”
 atypical owners of rights.
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„Creative commons” licenses
facilitating online access (4)
 Which owners of rights do not use CC licenses?
Briefly: the mainstream copyright world (copyright industries; those for
whom copyright is a source of living; those for whom copyright has been
created).

What do WIPO studies on the economic contribution of copyright show?
An example: Hungary (2002 data)
 Contribution to GDP: core copyright industries 3.95%, by total copyright
industries 9.68%
 Employment (population. 10 million): core copyright industries: 163.000
workers; 4.15 % of the workforce; total copyright industries: 278.000
workers; 7.10% of the workforce.
 (For terminology of core and total copyright industries, see „Guide on
Surveying the Economic Contribution of the Copyright Industries,” WIPO
publication, 2003, No. 893 (E)).
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THANK YOU FOR YOUR ATTENTION
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