American University Washington, 10 June 2014

Marrakesh Treaty – Ceiling or Window to Open Sky?

Prof. Dr. Martin SenftlebenVU University Amsterdam

Bird & Bird, The Hague

Marrakesh Treaty

• concluded in Marrakesh on 27 June 2013

– signed by almost 70 countries

– including the EU

– ‘Miracle of Marrakesh’

• broader picture

– UN Convention on the Rights of Persons with

Disabilities 2007/2008

– WIPO Development Agenda 2004-2007

(45 Recommendations)

7%

Book famine

Marrakesh Treaty

• first international treaty dealing specifically

with a copyright limitation

• but not the first international treaty

regulating copyright limitations

– other mandatory limitations in older treaties

– idea/expression dichotomy (Art. 2 WCT)

– exclusion of news of the day (Art. 2(8) BC)

– right of quotation (Art. 10(1) BC)

• Three-Step Test

• Pre-Existing Limitations

• Technological Measures

Open questions (selection)

Three-Step Test

Ceiling?

Or Window to Open Sky?

‘It shall be a matter for legislation in the countries of

the Union to permit the reproduction of [literary and

artistic] 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.’ (Art. 9(2) BC)

= so-called ‘three-step test’

Three-step test

Article 9(2) BC

Article 13 TRIPS

Article 10 WCT

Three-step test family

‘It is understood that the provisions of 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.’

Agreed Statement on Art. 10 WCT

room for copyright limitations under the

three-step test

fully compliant limitations

limitations going beyond the three-

step test

Impact on Marrakesh Treaty?

Impact on Marrakesh Treaty?

• certain special case

– quantitative: specific group of beneficiaries

– qualitative: freedom of information

• conflict with a normal exploitation

– substitute for regular copies?

– potential market of sufficient importance?

• unreasonable prejudice

– proportionality test

– payment of remuneration

Safeguards in the Treaty itself

• commercial availability exception

– Art. 4(4) MT

• remuneration option

– Art. 4(5) MT

• references to three-step test

– Art. 5(4)(b) MT

– Art. 11 MT and references in Arts. 4(3) and 5(3)

Pre-Existing Limitations

Starting point for implementation

• implementation without prejudice to

potential other limitations

– Art. 12(2) MT

• also relevant: freedom of adopting other

limitations for beneficiary persons

– Art. 12(1) MT

• three-step test offers considerable room for

alternative and additional limitations

Pre-existing national limitation

• for example Art. 5(3)(b) EU Information Society Directive

– Member States may provide for exceptions or

limitations to the rights of reproduction and

communication to the public, including making

available, with regard to

‘uses, for the benefit of people with a disability,

which are directly related to the disability and of

a non-commercial nature, to the extent required

by the specific disability;…’

Interplay with the Marrakesh Treaty

EU provision

• disability in

general

• work in different

forms

• cross-border not

regulated

Marrakesh Treaty

• specific kind of

disability

• work in the form of

text, notation

• cross-border

regulated

Keeping scope

of pre-existing

provision as is

Adding Marrakesh

features as specific

use privileges

Implementation strategy

For instance…

• Art. 5(3)(b) EU Information Society Directive

‘uses, for the benefit of people with a disability,

which are directly related to the disability and of

a non-commercial nature, to the extent required

by the specific disability…’, including

– making/importing/disseminating special format

copies for Marrakesh beneficiaries;

– exporting copies for Marrakesh beneficiaries in

other countries.

concept of

‘beneficiary

persons’

concept of

‘accessible

format copies’

The problem

country differences

Cross-border exchange

‘Contracting Parties shall provide that if an

accessible format copy is made under a limitation

or exception or pursuant to operation of law, that

accessible format copy may be distributed or

made available by an authorized entity to a

beneficiary person or an authorized entity in

another Contracting Party.’

(Art. 5(1) Marrakesh Treaty)

Which law is decisive?

• the law of the country of origin

– exportation of copies not covered by more

restrictive standard in destination country?

• the law of the country of destination

– need to check foreign law an obstacle to

activities of authorized entities?

• the Marrakesh Treaty

– international standard binding origin and

destination country, thus common ground?

law of destination

country if known by

exporting entity

otherwise

Marrakesh Treaty

definitions as a

safe harbour

Stepwise approach feasible?

Proviso in Treaty itself

‘…provided that prior to the distribution or making

available the originating authorized entity did not

know or have reasonable grounds to know that the

accessible format copy would be used for other

than beneficiary persons.’

(Art. 5(2) Marrakesh Treaty)

• no reasonable ground to know that

destination country would not follow

Marrakesh definitions

Technological measures

Surmounting technical barriers

‘Contracting Parties shall take appropriate

measures, as necessary, to ensure that when they

provide adequate legal protection and effective

legal remedies against the circumvention of

effective technological measures, this legal

protection does not prevent beneficiary persons

from enjoying the limitations and exceptions

provided for in this Treaty.’

(Art. 7 Marrakesh Treaty)

But what if…

obligatory key escrow

right to hack

request to copyright

owner

Policy options

The end. Thank you!For publications, search for

‘senftleben’ on www.ssrn.com.

contact: m.r.f.senftleben@vu.nl