WIPO African Sub-Regional Workshop on
Developing National Strategies and
Polices: New Perspectives on Copyright
Compulsory licencing – An idea whose
time has come?
Ms. Tsitsi Mariwo
5-6 November, 2012
Harare, Zimbabwe
Outline of presentation
O Licensing under copyright
O Licensing models
O Limitations and exceptions
O Rationale for limitations and exceptions
O Legislative framework for compulsory
licensing
O Requirements: Issuing a compulsory licence
O International frameworks
O National frameworks
Outline continued
O Nature of compulsory licences
O Challenges: Legal frameworks
O Positives
O Conclusions
O Recommendations
Licensing under copyright
O Licensing is the process of leasing/renting a legally
protected property or right in order to derive or
enhance financial benefit.
O It is the basis upon which rights holders authorise
the use of their works by publishers, broadcasting
organisations and record producing companies.
O Without a licensing system it would be difficult to
exploit copyright protected works.
O A licence can be exclusive (limited in scope,
geography, territory or time) or non-exclusive.
Licensing models
Voluntary licensing
Licensor (Copyright owner) and licensee (The one to
make use of the protected work) freely choose to enter
into a licensing agreement for the exploitation of the
work.
-The remuneration is freely negotiated.
-Copyright owner freely exercises the exclusive rights
under copyright law subject to the limitations and
exceptions.
1.
Licensing models
2. Compulsory licensing
It is a statutory requirement under which permission is
not required before using someone else’s intellectual
property, provided that a fee is paid.
-Licence is created by statute and not the copyright
owner nor the user.
-It permits bulk access to users.
-falls under 3rd criterion of the 3 step test under
copyright.
-Can be invoked in both published & unpublished works.
Limitations and exceptions
1.
Those that exclude protection for particular
categories of work e.g.
O Official texts of a legislative and administrative
nature.
O Speeches delivered in the course of legal
proceedings.
O News of the day. [Berne, Article 2(4)].
NB: These are well covered in most of the legal
frameworks of ARIPO member states.
Limitations and exceptions
2.
Those that provide for immunity on a permissive
basis for particular kind of uses, “permitted uses”
O Reproduction for purposes of news reporting.
O Teaching and educational purposes. [Berne,
Article 10(2)]
O Public addresses or lectures.
NB: These are well covered in most of the legal
frameworks of ARIPO member states.
Limitations and exceptions
3.
Provisions that allow particular use of protected
works subject to payment of a fee to the rights
holder
O “Compulsory”, “statutory”, “obligatory” or
“equitable remuneration” licences.
NB: These are not covered very well in most of the
legal frameworks of ARIPO member states.
Rationale: limitations and exceptions
Clear public policy grounds:
O copyright protection should not exist in certain works
because of the need for ready availability of such
works from the point of view of the general public.
O Certain kinds of uses of works that are otherwise
protected should be allowed because of public
interest that justifies overriding the private rights of
authors in their works in these particular
circumstances.
O The author’s rights continue to be protected but are
used, regardless of the author’s consent, but subject
to the payment of appropriate remuneration.
Legislative framework for
compulsory licensing
The legislative framework to set out the following:
O Definition or scope of compulsory licensing.
O specific situations or circumstances in which
compulsory licences may be issued (e.g. failure of a
rights holder to meet market demand & inability to
exploit the exclusive rights.
O Requirements for the issue of a compulsory licence
Remuneration or compensation framework and criteria.
O Appeal procedure challenging granting of a compulsory
licence.
Requirements: Issuing a
compulsory licence
O Applicant must prove that there is a special need.
O Applicant must prove that he/she contacted the IP
owner and that the latter refused to grant the licence
on reasonable commercial terms and conditions.
O Applicant must prove that the licence sought is limited
to the extent that it remedies the problem that has
been identified.
International frameworks
Berne Convention:
-provides the legal basis for compulsory licensing.
1) Article 9(2) allows for compulsory licensing based on
the 3 step test.
“It shall be a matter for legislation in the countries of the
union to permit the reproduction of such works in
special cases, provided that such reproduction does not
conflict with the normal exploitation of the work and
does not unreasonably prejudice the legitimate interests
of the author.”
International frameworks
Berne Convention:
Article 11 bis (2) provides that:“It shall be a matter for legislation in the country of the
Union to determine the conditions under which the rights
mentioned in the preceding paragraph [11 bis (1)] may
be exercised but these conditions shall apply only in the
countries where they have been prescribed. They shall
not in any circumstances be prejudicial to the moral
rights of the author, nor to is right to obtain equitable
remuneration which in the absence of agreement, shall
be fixed by competent authority.”
International frameworks
Berne convention:
Article 13(1) states that:“Each country of the Union may impose for itself reservations
and conditions on the exclusive right granted to the author of a
music work and to the author of any words, the recording of
which together with the music work has already been authorised
by the latter, to authorise the sound recording of that musical
work, together with such words, if any; but all such reservations
and conditions shall apply only in the countries which have
imposed them and shall not, in any circumstances, be
prejudicial to the rights of these authors to obtain equitable
remuneration which, in the absence of agreement, shall be fixed
by competent authority.”
International frameworks
TRIPS Agreement:
-Incorporated all provisions relating to conditions for
access under Berne into it by reference.
-No specific provision on compulsory licensing.
-Article 13 lays down the 3 step test therefore allowing
for compulsory licensing.
International frameworks
WIPO Copyright Treaty:
-Incorporates rights under Berne by reference.
-Article 10(1) provides for the 3 step test for all Berne
works plus computer programs (Applied to the digital as
well as physical environment).
International frameworks
The Appendix to the Paris Act of the Berne Convention
contains a series of compulsory licenses with respect to
the translation and reproduction of works protected
under the Convention that may be invoked under certain
limited conditions by developing countries, notably for
educational and developmental purposes.
Appendix: Articles II, III and IV of
Berne
Provides for compulsory licensing for teaching,
scholarship and research purposes – all uses should not
be for commercial purposes.
1. Translation of works into generally used languages
(excluding English, French & Spanish)
O If translated editions are out of print.
O If author has not published a translation of the
work 3 years after publishing the work.
O If the identity or address of the author is
unknown.
Appendix: Articles II, III and IV of
Berne
2. Reproduction of the work
O If edition is out of print.
O If the identity or address of the author is
unknown.
O If author has not published a translation of
the work 3 years after publishing the work.
Appendix continued
Challenges with the Appendix provisions: Reasons why
the appendix provisions are not used by many
developing countries.
O Application for compulsory licence for translation or
reproduction of the work can be made only after a
certain period ranging from 3 to 7 years of its first
publication.
O The applicant has to wait for a period of 6 months
before the licence is granted to enable the copyright
owner to translate or reproduce the work.
Appendix continued
O Compulsory licence will be terminated on publication
of a translation or reproduction of the work by the
copyright owner at a reasonable price.
O Members of the Union have to make a declaration
according to article V of the Appendix and renew it
every 10 years.
Nature of compulsory licences
O Non-exclusive.
O Non-assignable.
O Limited in scope and duration.
O Can be amended.
O If not used an owner can ask the court to cancel the
compulsory licence.
O Remuneration must be paid to an IP owner.
O Compulsory licences may be limited to a number of
licensees or open to everyone.
O Territorial – only for use in the relevant market.
National frameworks
Refer to case studies provided:
Case study 1: Zimbabwe.
Case study 2: Botswana, Namibia and Zambia and
Kenya.
Case study 3: Malawi
Question:
Has the time come for
compulsory licensing in the sub-region?
Challenges: Legal framework
O Many legislative texts do not provide for compulsory
licencing.
O Where reference is made to compulsory licensing, the
conditions for granting compulsory licences are not
clear or left hanging.
O In some instances regulations for compulsory licensing
referred to in the text of the Act are yet to promulgated.
Challenges: Legal framework
O No detailed mechanisms in place to monitor practical
implementation of compulsory licences. (Such as
duration also, amendment, non respect of conditions in
the licence, revocation of the licence).
O Where mechanisms exist, there is just absence of
practice in granting compulsory licences – and
therefore the effectiveness can be questionable.
Responsible organisation are not simply making use of
the provisions. e.g. Malawi complete and sufficient by
seldomnly used.
Challenges: Legal framework
O Compulsory licensing only controls accessibility of the
works to the general public and pricing of such works.
O Its construction is skewed in favour of the users
(Internationally and nationally).
O It is invoked when the owner of copyright denies
access.
Challenges: Legal framework
O It is not invoked in cases where traditional users
refuse to pay fees for use of protected works.
(Universities, schools, churches, colleges e.t.c).
O It is an idea whose time has come for licensing
copyright from a rights holder perspective.
O Many collecting societies find it difficult to conclude
voluntary licensing agreements in the sub-region and
compulsory licensing is an approach to consider.
Conclusions: C/L an idea whose
time has come
O There have been few requests for compulsory licensing
to the IP office under its current construction.
O It could be that the legislation in this area is not
understood or people are unaware.
O In developing countries the experience has been that
the authors cooperate under a voluntary system but
users do not cooperate under such a system and
hence the need to introduce compulsory licensing for
copyright protected material from a rights holder
perspective.
Positives
O The legal framework is flexible and allows Ministers
responsible for copyright to come up with regulations
on any issue including compulsory licensing. (In many
countries these regulations are non-existent).
Recommendations
O Capacity building for government offices and
stakeholders on drafting and implementing a needs
based compulsory licensing framework.
O All statutes should have provisions for compulsory
licences.
O Regulations should clearly provide for steps to be
followed when issuing compulsory licences.
O Research on compulsory licensing within the subregion.
Thank You!
Contact details
tsitsimariwo@yahoo.com
0772 161 540