Expanding Shelters into Protective Zones – the Three Step Test and State (and other) Practice in Developing International Copyright Law, By Henning Grosse Ruse – Khan

by Guest Blogger — Monday, Oct. 8, 2018

It’s great to be part of this blog symposium on Sam’s excellent monograph on IP and the New International Economic Order (NIEO). As the title of my post suggests, I’ll focus on taking the idea of IP ‘shelters’ further, looking at strategies for expanding them into broader, ideally globally recognised zones that protect the basic human needs Sam associates with the shelters he analyses in his book. I will use the example of the Marrakesh Treaty to facilitate access to copyrighted works for visually impaired persons and those with print disabilities – but one might further explore how the other shelters Sam discusses in the field of medicines and vaccines, biological and plant genetic resources for agriculture, as well as food and tobacco labelling and packaging can be expanded and what implication this has for a ‘basic human needs approach to development’ (p.64).

Before however, I’d like to highlight what I really like about Sam’s book: it’s his broad contextual representation of specific and discrete legal issues within international IP protection; and his ability to carefully link these diverse issues, over a significant period of (primarily 20th & 21st century) history. Again, I’ll focus on his discussion on access to copyrighted works, in particular educational material, to illustrate my point. In Chapter 9 on ‘Educational and Scientific Works’, Sam begins by setting out the historical context for developing countries’ strategies to facilitate access to essential copyrighted content via initiatives to reform the international copyright framework. He summarises this on p.139:

Colonialism had created structural barriers to both tangible and intangible means by which to address the severity of the educational and literacy problems facing developing countries. The extent of book publishing in developing countries is negligible and was even less robust in the post-decolonization period. There were few books, and those that were available for sale were unaffordable.

Sam ties this to international copyright protection under the Berne Convention (BC), observing (on p.141) that for those looking to enhance access to works ‘Berne represented the “foreign” law’ which ‘did not allow for reservations’ and that was ‘by design principally focused on the rights of authors (rather than, of course, the right to development)’. One might add that while the focus in the Convention formally is on the ‘desire to protect, in as effective and uniform a manner as possible, the rights of authors in their literary and artistic works’ (BC Preamble), in practice this primarily operates to the benefit of the author’s ‘successors in title’ (Art.2(6) BC), namely publishers and others involved in the exploitation of copyrighted content. Sam’s Chapter 9 then offers a range of examples how copyright protection has affected access to educational material, past and present. This leads us to the countermoves he refers to as IP shelters discussed in Part III of the book. In this case, it’s Chapter 13 where he discusses the Marrakesh Treaty as a tool – essentially informed by human rights considerations – to limit copyright in order to facilitate access to culture and science for visually impaired persons (i.e. giving effect to basic human needs).

Again, the Chapter skilfully combines the underlying socio-economic context (a ‘book famine’ for all those in need of alternative formats) with the relevant legal aspects (here the key provisions of the Marrakesh Treaty, mandating exceptions to copyright for accessible format copies and their cross-border exchange) and concludes with interesting examples of recent implementation of the treaty (pp.204-206). Of course, those who saw the treaty’s novel approach of limiting (rather than continuously expanding) international copyright protection as a ‘Trojan Horse’ (p.201) which could lead to further attempts to weaken the global IP system tried to ensure that whatever Marrakesh calls for in terms of exceptions is reigned in through a tool very familiar to (international) copyright lawyers: the so called ‘three step test’. Set out in various forms in Art.9(2) BC, Art.13 TRIPS, and Art.10 of the WIPO Copyright Treaty (WCT), this test requires that copyright limitations or exceptions are confined 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’. Since a rather restrictive interpretation given to this provision in a WTO Panel Report in the US – Sec.110(5) Copyright Act dispute, the three step test has arguably served as the weapon of choice for those interested in international IP law functioning as one-way street towards ever stronger protections, with no opportunity to introduce limits to protections committed to in an earlier treaty. It is hence not surprising that a range of agreed statements to provisions in the Marrakesh Treaty – as well as its Art.11 – make reference to the three step test as a kind of ‘outer limit’ of what exceptions are allowed under Marrakesh.

So has the Marrakesh shelter be effectively enclosed by the three step test and its restrictive interpretation in US – Sec.110(5)? I would like to argue that rather the opposite is happening. Let me explain why. To begin with, the interpretation reached in the WTO dispute stems from a time when Panels paid most attention to the ‘ordinary meaning’ of the terms in the respective WTO Agreement under interpretation. In particular, it did not consider the object and purpose of TRIPS, as set out in its Art.7&8, which all WTO Members later on in the Doha Declaration on TRIPS and Public Health agreed to serve as an essential tool for properly construing the meaning of TRIPS provisions. The recent Panel Report in Australia – Plain Packaging has confirmed the importance of both the Doha Declaration as a subsequent agreement on the interpretation of TRIPS, and the role of Art.7&8 TRIPS in providing for flexibility to interpret and implement TRIPS provisions that involve broad and open terms – such as ‘unjustifiable’ in the Plain Packaging dispute, or ‘legitimate interest’ and ‘unreasonable prejudice’ in the three step test. As many have argued for quite a while now, the three step test hence can be interpreted in a much more allowing manner towards national exceptions, including broad concepts such as fair use or fair dealing.

More importantly, tying the three step test to fairly concrete exception provisions as in Art.4 and 5 Marrakesh further supports arguments for a re-reading of the test and what it allows. As I have argued elsewhere, the specific exceptions of the Marrakesh Treaty hence can be seen as expressing the intention of the Parties to offer guidance on the scope of the test: one must assume that the State Parties to Marrakesh did not intend to commit to mandatory exceptions which are inconsistent with their treaty obligations under Berne, TRIPS and the WCT. Based on the notion of harmonious (and dynamic) interpretation of norms within the international IP system, the mandatory exceptions in Art.4, 5 and 6 should even affect the understanding of the test in other treaties, such as TRIPS. Similar arguments can be made with regard to the agreed statement to Art.10 of the WCT (which by the way has also been incorporated into Art.11 of the Marrakesh Treaty) where WCT Parties express their common understanding that:

the provisions of [the three step test in] 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.’

Similarly, Art.18.66 of what is now called the ‘Comprehensive and Progressive’ Transpacific Partnership (CPTPP) states that:

Each Party shall endeavour to achieve an appropriate balance in its copyright and related rights system, among other things by means of limitations or exceptions that are consistent with Article 18.65 [which imports the three step test into the CPTPP], including those for the digital environment, giving due consideration to legitimate purposes such as, but not limited to: criticism; comment; news reporting; teaching, scholarship, research, and other similar purposes; and facilitating access to published works for persons who are blind, visually impaired or otherwise print disabled.

A footnote to this provision further explains that ‘[f]or greater certainty, a use that has commercial aspects may in appropriate circumstances be considered to have a legitimate purpose under Article 18.65’. Again, State Parties indicate what kind of exceptions they consider to be generally in accordance with the test: those which strive for the (domestically most suitable) balance, and those which pursue legitimate purposes akin to those mentioned in Art.18.66. Sure, this does not offer a carte blanche for national exceptions which are of course still subject to a consistency analysis under the test. However, approaches that promote a more flexible and less right-​holder centric reading of the test – as in Art.18.66 CPTPP – can over time establish relevant state practice that guides the test’s interpretation towards a less rigid one.

Unfortunately, this practice is not yet sufficiently coherent and wide spread as one might hope for. In the recently announced US-Mexico-Canada (USMCA) Agreement that is meant to replace NAFTA, there is no equivalent to Art.18.66 CPTPP anymore – apparently due to lobbying from the US content industry. On the other hand, we see continuous efforts among user groups and NGOs to push for treaties akin to Marrakesh that expand exceptions and limitations – for example for educational and research activities. The idea is apparently to take this initiative to WIPO’s Standing Committee on Copyright and Related Rights (SCCR) in November this year. If eventually successful, we’re likely to see a further expansion of one of the IP shelters Sam has discussed – perhaps even towards a proper protective zone for the underlying essential human needs, in this case in form of access to educational, cultural and scientific materials. Of course, this is not to say that meeting these needs is only about access – it is also about adequate incentives, which can (but don’t have to be) in form of IP rights. In that sense, I don’t understand Sam’s concept of shelters as necessarily requiring the absence of any IP protection. It’s arguably more about allowing States to determine the most appropriate balance that works for them, to fulfil the needs of their people. That’s by the way also how today’s ‘industrialised’ nations managed to get where they are now in terms of technological development and cultural productions. And – as research into the economic history of IP protection has shown – this has more often than not started with conscious steps that allowed learning from those (abroad) who knew or where more advanced, including by copying and imitation.

Henning Grosse Ruse – Khan is Reader in International and European Intellectual Property Law at the University of Cambridge, a Fellow of King’s College (Cambridge), and an external research fellow at the Max Planck Institute for Innovation and Competition (Munich).

This post is part of a symposium reviewing Intellectual Property and the New International Economic Order: Oligopoly, Regulation, and Wealth Redistribution in the Global Knowledge Economy, a new book by Sam Halabi, Associate Professor at the University of Missouri School of Law and Scholar at the O’Neill Institute for National and Global Health Law at Georgetown University. All of the posts can be rea

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