Nexus: fair dealing

Does South Africa want public interest considerations for copyright limitations and exceptions at the WTO?

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A few days ago (29th January 2020), the South African Government issued a Communication to the World Trade Organisation’s (WTO) Council for Trade-Related Aspects of Intellectual Property Rights (TRIPS Council). The Communication titled “Intellectual Property and the Public Interest: The WTO TRIPS Agreement and the Copyright Three-Step Test” was issued to consult WTO Member States on the flexibilities available to Member States in crafting copyright limitations and exceptions within the principles and objectives of the TRIPS Agreement.

The crux of the Communication from South Africa
The South African Government posed specific questions for Member States’ consideration thus:

1) Does the three-step test constitute an indivisible whole to the extent that each of the three steps are to be considered together and as a whole in a comprehensive overall assessment?
2) What approaches have Members taken to reflect limitations and exceptions in their IP laws?

...communication for clarification?

Essentially, South Africa wants to know how far it may go in fulfilling the principles and objectives of Articles 7 and 8 of the TRIPS Agreement when it is crafting copyright limitations and exceptions. While Article 7 of the TRIPS Agreement require copyright protection to contribute to the promotion of technological innovation… in a manner conducive to social and economic welfare…”, Article 8 envisages that Member States formulate or amend their laws and regulations to “promote the public interest in sectors of vital importance to their socio-economic and technological development…”.

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The Communication emphasises that limitations and exceptions such as fair use and fair dealing are not in conflict with the three-step test requirement under Article 13 of the TRIPS Agreement. [The three-step test requires that Members "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”]. The Communication also mentions the WTO Panel’s interpretation of the three-step test in resolving the dispute between the EU and the US over section 110(5) of the US Copyright Act. The WTO Panel in that case held that the three-step test requests 3 separate, independent, cumulative tests for copyright limitations and exceptions.

Given this interpretation, it may be puzzling to see South Africa posing the question again to Member States through the TRIPS Council. Granted, many scholars (as acknowledged in the Communication) have disagreed with the WTO Panel’s interpretation and found it unduly focused on economic interests. It may therefore be helpful to hear what Member States think of the boundaries of the three-step test vis-à-vis public interest considerations. Also, this Africa Correspondent is of the opinion that the underlying issue that South Africa wants addressed is the question of whether the three-step test under the TRIPS regime admits a public interest approach - “in sectors of vital importance to (national) socio-economic and technological development…”.

But, why issue the Communication now?

As readers may recall, South Africa’s National Council of Provinces (NCOP) had in 2019 concurred with the redrafted version of South Africa's Copyright Amendment Bill, and sent same to the President for his assent. One of the contentious (if not the most contentious) provisions of the Bill was the “fair use” provision (Katpost here). Given this, why did South Africa not seek this clarification before adopting the Copyright Amendment Bill? This Kat can only say things: (1) the much-awaited Presidential assent to the Bill will not be coming anytime soon and at least, until the clarification sought in the Communication is received; (2) despite the Communication coming after the Bill has been adopted, it is as they say, better late than never.

Another “but”: Should there be international minimum standards for copyright limitations and exceptions? Or, are Member States better off with policy space enabled by general statements (like the three-step test) to craft copyright limitations and exceptions? In October 2019, WIPO held the International Conference on Copyright Limitations and Exceptions for Libraries, Archives, Museums and Educational & Research Institutions. The Conference was the end of the fact-finding and information gathering phase of the quest to provide for minimum standards in crafting limitations and exceptions for the specific institutions. Perhaps, South Africa wants to push for some minimum standards for copyright limitations and exceptions, generally? Which leads this Kat to another question: should the WTO (a trade regime) be the forum for such public interest “expedition”? That said; responses to the Communication might provide tips for the negotiation of the IP Protocol in Africa’s regional trade agreement –the African Continental Free Trade Area (AfCFTA).

It is expected that the Communication will come up for discussion at the next TRIPS Council meeting in early February 2020. This Kat can only hope that South Africa (and indeed, every Member States) takes cognisance of differences in development stages of Member States as it/they consider(s) “national approaches and experiences”.

Readers should stay tuned…

Kenya amends its Copyright Act to ratify the Marrakesh Treaty and address a myriad of other issues

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In September, Kenya’s President signed the Copyright (Amendment) Act 2019. The Copyright (Amendment) Act 2019 amends Kenya’s Copyright Act of 2001 (the Principal Act) and is aimed at addressing inter alia, concerns about the collection and disbursement of royalties to authors and copyright owners.

Kenyan flag

The Amendment Act does not repeal the entirety of the Principal Act. It only repeals certain sections of the Principal Act such as section 21 (appeals against the decision of the Copyright Board to now lie to the Copyright Tribunal); section 26 (nature of copyright now separated from provisions on limitations and exceptions); section 48 (jurisdiction previously held by a “competent authority appointed by the Minister” now held by the Copyright Tribunal appointed by the Chief Justice); etc.

Some highlights of the Amendment Act include:
Sui-generis approach to the protection of traditional knowledge and traditional cultural expression: Section 2(e) deletes the definition of “folklore”. With this, it appears the protection of folklore has been removed from “main stream” IP (the copyright bit, at least). The terms “traditional knowledge” and “cultural expressions” are broadly defined under the Act for the Protection of Traditional Knowledge and Cultural Expressions and would include “folklore”.

Wider range of protected subject matter: “Works” are defined under the Amendment Act to include translations, adaptations, new versions, or arrangements of pre-existing works, and anthologies or collections of works, once they are original by reason of the selection and arrangement of their content. See section 2(g). This clarification is notable particularly with respect to the question of whether musical arrangements are protectable in the same manner as primary works. For instance, in South Africa, there have been issues with Southern Africa Music Rights Organisation (SAMRO)’s Distribution Rules, in which arrangements of folk music are treated as non-original works and partly in the public domain. See discussion on The IPKat here.

Ratification and domestication of the Marrakesh Treaty: The Amendment Act contains exceptions that address access by people with disabilities to works that are protected by copyright and related rights. The exceptions go beyond the Treaty to include other forms of disabilities beyond visual impairment and print disability. See the definition of “beneficiary person” in section 2(m).

AI-generated artworks are recognised: Section 2(m) defines “artwork” to include original work of visual art produced under the authority of an artist. It seems that AI-generated artworks may be deemed as produced under the authority of an artist. By extension, it may be possible to recognise the “authorising” artist as the author of the artwork.

Register of copyright works: Section 10 of the Amendment Act requires the Copyright Board to keep a register of copyright works. Extracts from the register, where certified by the Board, may be admissible in evidence. The use of certified extracts in evidence would be quite helpful to authors and copyright owners seeking to prove the existence of their creative outputs. However, there is the question of the feasibility of maintaining such register physically as opposed to a digital or electronic register. Also significant is the question of whether the collation and recording of relevant information into the register will include retrospective information.

Digital advertising may remove safe harbour for ISPs: Section 24 of the Amendment Act provides safe harbour for internet service providers which exempts them from liability for copyright infringement subject to specified conditions. One of these conditions is that such ISP does not “in any way promote the content or material being transmitted”. This raises the question of whether ISPs like YouTube that create automatic playlists may be considered as “promoting” the contents of such playlists.

Takedown notice requirements may be too onerous: A new section 35B requires persons filing a takedown notice to inter alia “identify the rights being infringed”. See section 35B(2)(e). Further, a malicious takedown notice is a crime and attracts a fine and/or imprisonment. See section 35B(8). In the case of the former, filing a takedown notice may be cumbersome for less savvy authors who may not be able to identify the rights being infringed under the Copyright Act. Criminalising the filing of a malicious takedown notice appears too severe especially given that the filing of a takedown notice does not guarantee a takedown nor does it necessarily remedy the (previous) act of infringement.

Fair dealing v fair use: The Second Schedule to the Amendment Act contains the exception to copyright protection. According to paragraph 1, “the exclusive rights under section 26 shall not include the right to control— (a) the doing of any of those acts by way of fair dealing for the purposes of scientific research, private use, criticism or review, or the reporting of current events”. The expression, “fair dealing” is not defined in the Act. However, Kenya’s Supreme Court has had the opportunity in 2014 to consider whether the purposes considered as fair dealing (scientific research, private use, criticism or review, or the reporting of current events) were closed. In Communications Commission of Kenya & 5 others v Royal Media Services Limited & 5 others, the court held that the “must-carry” rule in Kenya’s Broadcasting Regulations fell under the fair dealing provisions of the Copyright Act despite not being enumerated within the list of purposes. See In the public interest: how Kenya quietly shifted from far dealing to fair use for some in-depth discussion.

In the opinion of this Africa Correspondent, one of the positive things about the Copyright Amendment Act 2019 is the extensive provision regarding the corporate governance of collective management organisations (CMOs). See section 31 of the Amendment Act generally. The Amendment Act (section 46B(2) stipulates a requirement that I have advocated here as a panacea to the corporate governance woes of collecting societies in Nigeria – provide a tenure for directors and chairpersons of CMOs. The Amendment Act also touches on a matter that forms part of this Africa Correspondent’s current research for the Open AIR project: gender representation in the corporate governance of collecting societies. Section 34 of the Amendment Act requires the Cabinet Secretary to make regulations that may prescribe “guidelines on the gender representation and participation of persons with disability and other marginalized groups on the boards of collective management organizations”. While recognition of gender “blindness” on the boards of CMOs is laudable, there are concerns around the frequent lumping of gender issues with disability issues and unique concerns and interests of “marginalized groups”. How to address the question of representation without conflating the obvious unique needs of each “marginalised group”?

There are several other interesting provisions of the Amendment Act. However, as I always say, the taste of any statute is in the application and/or enforcement. We wait to see how Kenya’s Copyright (Amendment) Act will be applied and/or enforced.

Nexus

Does South Africa want public interest considerations for copyright limitations and exceptions at the WTO?

Kenya amends its Copyright Act to ratify the Marrakesh Treaty and address a myriad of other issues

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