IP Experts Focus On 3-Step Test In Copyright, Discuss Way Forward

Although intellectual property issues did not play a big role in the Eighth World Trade Organization Ministerial Conference, some international stakeholders took advantage of the global gathering to meet, discuss and debate the 3-step test in copyright, a key topic in IP today. The discussion included a call for a WTO declaration on the 3-step test.

A small group of high-level industry, trade, IP experts and policymakers left the ministerial meeting held at a nearby conference centre to attend a side event on “The TRIPS Agreement and Copyright” at the WTO. The 16 December event was organised by Knowledge Ecology International (KEI) and provided the opportunity to take a closer look at how the 3-step test in copyright is being used today and if there is a need to redefine it.

Definition and Use

Originating in the Berne Convention for the Protection of Literary and Artistic Works [pdf], the 3-step test is a clause that establishes three cumulative conditions to the limitations and exceptions of a copyright holder’s rights, basically establishing the legal parameters for reproducing a work. Under Berne Article 9.2, the 3-step test is defined as the following: “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.”

The 3-step test has been included in several subsequent international IP conventions, most notably in Article 13 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The language of the 3-step test has evolved since its Berne beginnings. While Berne Article 9.2 only applies to reproduction rights, Article 13 in TRIPS does not specify a particular category of rights to which it may apply, leaving it open to cover copyright more broadly.

WTO Intellectual Property Counselor Hannu Wager spoke at the event and told Intellectual Property Watch, “The central DNA of the 3-step test has not changed so much since the Berne Convention.” He turned the focus of the conversation more toward the jurisprudence of how the 3-step test has been applied in copyright, patents and trademarks. From the European Communities’ case against Canada for a lack of pharmaceutical patent protection to its case against the US for homestyle and business exemptions allowing small business owners to play music without paying royalties, Wager explained the application of the test demonstrates that it can take into account many different kinds of competing interests. “The general aspect that emerges from these cases emphasises the balance which is built into these tests.”

Call for a WTO Declaration

As librarians seek to preserve books electronically and the visually impaired fight for increased access to works in formats for their use, the interpretation and application of the 3-step test has garnered increasing attention. These issues have topped the agenda of the World Intellectual Property Organization as of late. In the last session of the Standing Committee on Copyright and Related Rights (SCCR), which concluded on 2 December, substantial work was conducted on defining copyright limitations and exceptions for various user groups (IPW, WIPO, 5 December 2011). From an audiovisual treaty to exceptions for libraries, a number of targeted treaties are in the works.

Some argue that all of these emerging cases for special exceptions to copyright demonstrate a need for greater clarification at the international level. KEI Director James Love said during his presentation at the side event that there is some confusion surrounding how the 3-step test is read and how it is interpreted. For example, he said that the definition of each qualifying word in the test, like “normal” and “reasonable,” are largely disputed.

Love suggested that a WTO declaration, similar to the Doha Declaration on the TRIPS Agreement and Public Health, on a balanced interpretation of the 3-step test in copyright law is needed to protect access to knowledge. “The WTO should consider adopting a declaration on the balanced interpretation of the 3-step test to ensure that WTO rules do not undermine national policies to promote access to knowledge and development, protect human rights, remedy abuses by right holders, and otherwise promote the public interest.”

3-Step Exemptions

Beyond the debate over how the 3-step test is read and interpreted today, there is also debate over how effective test exemptions are at providing needed knowledge access in some areas. For example, the reproduction and translation of works in developing countries are exempt from the test under the Berne Appendix on Special Provisions for Developing Countries through a system of compulsory licences. Viviana Munoz Tellez, manager of the Innovation and Access to Knowledge Programme at the South Centre, spoke at the WTO event on whether the appendix is enough to address access needs in developing countries today.

During her intervention, Tellez characterised the appendix as “detailed, long and complex” with “numerous requirements for granting a compulsory licence” that can create high transaction fees. She also said the appendix was “designed for publishers in the print age” and leaves many unanswered questions regarding digital use of works.

During an interview with Intellectual Property Watch, she suggested that as the internet has opened up access to knowledge, lawmakers have put greater focus on protecting the rights of copyright holders and have not been as clear on defining the limitations and exceptions available to the public.

“We are still experimenting with copyright rules in the digital era and we need to make sure that we give as much attention to limitations and exceptions as we give to upgrading copyright protection,” she said.

Tellez also expressed concerns over an increasing number of bilateral agreements that undermine developing countries’ scope of rights. As her research has shown limited use of the Berne Appendix, she suggested that it might be useful to revisit it and to conduct further study on if it is the right tool to address access to knowledge needs in the digital era.