Compulsory licencing An idea whose time has come Ms Tsitsi Mariwo 56 November 2012 Harare Zimbabwe Outline of presentation Licensing under copyright Licensing models Limitations and exceptions ID: 748661
Download Presentation The PPT/PDF document "WIPO African Sub-Regional Workshop on De..." is the property of its rightful owner. Permission is granted to download and print the materials on this web site for personal, non-commercial use only, and to display it on your personal computer provided you do not modify the materials and that you retain all copyright notices contained in the materials. By downloading content from our website, you accept the terms of this agreement.
Slide1
WIPO African Sub-Regional Workshop on Developing National Strategies and Polices: New Perspectives on CopyrightCompulsory licencing – An idea whose time has come?
Ms. Tsitsi Mariwo
5-6 November, 2012
Harare, ZimbabweSlide2
Outline of presentationLicensing under copyrightLicensing modelsLimitations and exceptionsRationale for limitations and exceptions
Legislative framework for compulsory licensing
Requirements: Issuing a compulsory licence
International frameworks
National frameworksSlide3
Outline continuedNature of compulsory licencesChallenges: Legal frameworks
Positives
Conclusions
RecommendationsSlide4
Licensing under copyright Licensing is the process of leasing/renting a legally protected property or right in order to derive or enhance financial benefit.
It is the basis upon which rights holders authorise the use of their works by publishers, broadcasting organisations and record producing companies.
Without a licensing system it would be difficult to exploit copyright protected works.
A licence can be exclusive (limited in scope, geography, territory or time) or non-exclusive.Slide5
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.Slide6
Licensing models 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 3
rd
criterion of the 3 step test under copyright.
-Can be invoked in both published & unpublished works. Slide7
Limitations and exceptions1. Those that exclude protection for particular categories of work e.g.
Official texts of a legislative and administrative nature.
Speeches delivered in the course of legal proceedings.
News of the day. [Berne, Article 2(4)].
NB: These are well covered in most of the legal frameworks of ARIPO member states.Slide8
Limitations and exceptionsThose that provide for immunity on a permissive basis for particular kind of uses, “permitted uses”
Reproduction for purposes of news reporting.
Teaching and educational purposes. [Berne, Article 10(2)]
Public addresses or lectures.
NB: These are well covered in most of the legal frameworks of ARIPO member states.
Slide9
Limitations and exceptionsProvisions that allow particular use of protected works subject to payment of a fee to the rights holder
“Compulsory”, “statutory”, “obligatory” or “equitable remuneration” licences.
NB: These are
not
covered very well in
most of the legal frameworks of ARIPO member states.Slide10
Rationale: limitations and exceptionsClear public policy grounds:
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.
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.
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.Slide11
Legislative framework for compulsory licensingThe legislative framework to set out the following:
Definition or scope of compulsory licensing.
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.
Requirements for the issue of a compulsory licence Remuneration or compensation framework and criteria.
Appeal procedure challenging granting of a compulsory licence.Slide12
Requirements: Issuing a compulsory licenceApplicant must prove that there is a special need.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.
Applicant must prove that the licence sought is limited to the extent that it remedies the problem that has been identified.Slide13
International frameworksBerne 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.”Slide14
International frameworksBerne 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.”Slide15
International frameworksBerne 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.”
Slide16
International frameworksTRIPS 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.Slide17
International frameworksWIPO 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).Slide18
International frameworksThe
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. Slide19
Appendix: Articles II, III and IV of BerneProvides for compulsory licensing for teaching, scholarship and research purposes
– all uses should not be for commercial purposes.
Translation of works into generally used languages (excluding English, French & Spanish)
If translated editions are out of print.
If author has not published a translation of the work 3 years after publishing the work.
If the identity or address of the author is unknown. Slide20
Appendix: Articles II, III and IV of BerneReproduction of the work
If
edition is
out of print.
If
the identity or address of the author is unknown.
If author has not published a translation of the work 3 years after publishing the work.Slide21
Appendix continuedChallenges with the Appendix provisions: Reasons why the appendix provisions are not used by many developing countries.
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.
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.Slide22
Appendix continuedCompulsory licence will be terminated on publication of a translation or reproduction of the work by the copyright owner at a reasonable price.
Members of the Union have to make a declaration according to article V of the Appendix and renew it every 10 years.Slide23
Nature of compulsory licencesNon-exclusive. Non-assignable.
Limited in scope and duration.
Can be amended.
If not used an owner can ask the court to cancel the compulsory licence.
Remuneration must be paid to an IP owner.
Compulsory licences may be limited to a number of licensees or open to everyone.
Territorial
– only for use in the relevant market.Slide24
National frameworks Refer to case studies provided:
Case study 1: Zimbabwe.
Case study 2: Botswana, Namibia and Zambia and Kenya.
Case study 3: Malawi Slide25
Question: Has the time come for compulsory licensing in the sub-region?Slide26
Challenges: Legal frameworkMany legislative texts do not provide for compulsory licencing.
Where reference is made to compulsory licensing, the
conditions for granting compulsory licences are not
clear or left hanging.
In some instances regulations for compulsory licensing referred to in the text of the Act are yet to promulgated.Slide27
Challenges: Legal frameworkNo 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).
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.Slide28
Challenges: Legal frameworkCompulsory licensing only controls accessibility of the works to the general public and pricing of such works.Its construction is skewed in favour of the users (Internationally and nationally).
It is invoked when the owner of copyright denies access.Slide29
Challenges: Legal frameworkIt is not invoked in cases where traditional users refuse to pay fees for use of protected works. (Universities, schools, churches, colleges
e.t.c
).
It is an idea whose time has come for licensing copyright from a rights holder perspective.
Many collecting societies find it difficult to conclude voluntary licensing agreements in the sub-region and compulsory licensing is an approach to consider.Slide30
Conclusions: C/L an idea whose time has comeThere have been few requests for compulsory licensing to the IP office under its current construction.
It could be that the legislation in this area is not understood or people are unaware.
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.Slide31
PositivesThe 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).Slide32
RecommendationsCapacity building for government offices and stakeholders on drafting and implementing a needs based compulsory
licensing
framework.
All statutes should have provisions for compulsory licences.
Regulations should clearly provide for steps to be followed when issuing compulsory licences.
Research on compulsory licensing within the sub-region.Slide33
Thank You!Contact details
tsitsimariwo@yahoo.com
0772 161 540