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A Comparative Analysis of the Three-Step Tests in International Treaties

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Abstract

Much of the literature on the three-step test focuses on its implementation in relation to one particular intellectual property regime only, usually copyright. That approach tends to limit analysis of the test to a comparison of the different steps of the test with each other. Such an approach is valuable, but it does not provide the full picture. What is missing is a comparison of the same step within the different versions of the test. This article helps to fill that gap, by undertaking a detailed comparison of each element of each step, across all implementations of the test. It focuses on the similarities and differences in the wording and structure of the fundamental components of the steps of the tests. It shows that each version of the test contains differences in meaning, and that these differences often have practical significance. As a result, it provides additional support for the view that there is no such thing as the three-step test – rather, there are eight three-steps tests, each of which is uniquely different.

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Notes

  1. The majority of the important articles on the three-step test deal with copyright – see, e.g. Geiger (2007), Westkamp (2008), He (2009), Griffiths (2009), Senftleben (2010). The key monograph on the test focuses on copyright law, Senftleben (2004). Other important monographs that discuss the test are concerned only with copyright, Ficsor (2002b), Reinbothe and von Lewinski (2002), Ricketson and Ginsburg (2006). This is also the case with the reviews and reports concerning the test: Ricketson (2003), Hugenholtz and Okediji (2008).

  2. The main exceptions include: Senftleben (2006), Kur (2008−2009), Wright (2009), Geiger (2011), pp. 287–307, Kur (2011). See also Ficsor (2002a).

  3. Senftleben (2006), at 435.

  4. There are, in addition, two international treaties that are not in force, as of early 2014, which also contain reference to a three-step test. The first of these treaties, the Beijing Treaty on Audiovisual Performances of June 24, 2012 (hereafter “Beijing”), contains a three-step test that is identical to the test in Art. 16(2) of the WPPT, except for the absence of the words “or phonogram” and “or of the producer of the phonogram”. That is to say, Beijing Art. 13(2) adopts the test of WPPT Art. 16(2), but applies it to performances only (that being the subject matter of that treaty). The second of these treaties is the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled of June 27, 2013 (hereafter “Marrakesh”). Article 11 of Marrakesh requires a party, when adopting measures applying the treaty, to comply with the obligations it has under Berne, TRIPS, and the WCT – including, in particular, the three-step test provisions contained in Berne Art. 9(2), TRIPS, Art. 13, and WCT Arts 10(1) and 10(2). Marrakesh Art. 11 then sets out wording that is, for all intents and purposes, identical to wording of those provisions.

  5. Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886 as amended at Paris on September 28, 1979.

  6. WIPO Copyright Treaty of December 20, 1996.

  7. WIPO Performances and Phonograms Treaty of December 20, 1996.

  8. Agreement on Trade-related Aspects of Intellectual Property Rights of 1994; being Annexe 1C to the Agreement Establishing the World Trade Organization, April 15, 1994 (hereafter “WTO Agreement”).

  9. Vienna Convention on the Law of Treaties, May 23, 1969.

  10. See World Trade Organization, Japan – Taxes on Alcoholic Beverages II, Report of the Appellate Board, WT/DS8/AB/R, WT/DS10/AB/R, WT/DS11/AB/R, 4 October 1996, p. 10 (citation omitted).

  11. Frankel (2006), 386.

  12. World Trade Organization, United States – Continuing Existence and Application of Zeroing Methodology, Report of the Appellate Board, WT/DS350/AB/R, February 4, 2009 (hereafter “US–Zeroing”), paras. 268–273 (citation omitted).

  13. S. Frankel, supra note 11, at 386.

  14. US–Zeroing, paras 268–273.

  15. US–Zeroing, paras 268–273.

  16. WCT, Art. 24(1); WPPT, Art. 32(1); Concluding paragraph of the WTO Agreement, to which TRIPS is an annexe.

  17. Berne, Art. 37(1)(c).

  18. One instance in which our analysis may be incomplete for this reason is in respect of the third step of Berne Art. 9(2). Whereas the English version of the provision uses the phrase “not unreasonably prejudice”, the French version states “ne cause un préjudice injustifié”. As Gervais notes, the expression “préjudice injustifié” would translate literally in English as “unjustified prejudice”: Gervais (2005), 18. According to Geiger, Gervais and Senftleben, unreasonable prejudice is not the same as unjustifiable prejudice, meaning that Art. 9(2) of Berne needs to be read in accordance with the authoritative French version of the text, “préjudice injustifié” – with the result that Berne requires an exception or limitation “must not cause an ‘unjustified prejudice’ to the legitimate interests of the author”: Geiger et al. (2013), 39.

  19. Ficsor (2002b) at 518–519, Reinbothe and von Lewinski (2002), at 128–129.

  20. Ficsor (2002b) at 518.

  21. For a contrary view on the correct interpretation of the Agreed Statements, see Reinbothe and von Lewinski (2002), at 132–133.

  22. Ficsor (2002b), at 256.

  23. Guibault (2002), pp. 20–21.

  24. Reinbothe and von Lewinski (2002), at 128.

  25. Ricketson (1999), at 59.

  26. Ricketson (2003), pp. 3–4.

  27. Senftleben (2010), Senftleben (2004), at 22.

  28. Geiger (2010), p. 521.

  29. Kur (2008−2009), at 290.

  30. The exception to this consensus is Hugenholtz and Okediji (2008), p. 19, for whom the terms are synonymous.

  31. Christie (2011), pp. 123–125.

  32. Although it had been suggested that the operation of TRIPS Art. 13 was “limited to the exclusive rights newly introduced under the TRIPS Agreement”, this interpretation was rejected by the Panel in the US Copyright decision: World Trade Organization, United States – Section 110(5) of the U.S. Copyright Act, Report of the Panel, WT/DS160/R, 15 June 2000 (hereafter US–Copyright), para. 6.80. In any case, as Senfteben notes, the wording and context of the provision does not suggest any such restriction; rather it indicates that Art. 13 operates “as a comprehensive clause controlling all copyright limitations” within TRIPS; Senftleben (2010), Senftleben (2004), at 90. There remains the related, but separate, question of whether TRIPS Art. 13 applies to any new exclusive rights of copyright that may be introduced after commencement of TRIPS. We are inclined to the view that it does, for the following reason. Art. 1 of TRIPS provides, inter alia, that “Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement”. In our view, this provision permits countries to introduce exclusive rights of copyright beyond those provided in TRIPS, but makes any such rights subject to the provisions of TRIPS. For this reason, we consider it plausible that the application of TRIPS Art. 13 extends to exceptions and limitations concerning any exclusive rights of copyright, including those introduced by countries subsequent to commencement of TRIPS.

  33. See Senftleben (2006) at 420.

  34. World Trade Organization, Canada – Patent Protection of Pharmaceutical Products, Report of the Panel, WT/DS114/R, 17 March 2000 (hereafter Canada–Patent).

  35. Canada–Patent, supra note 34, at para. 7.29.

  36. Canada–Patent, supra note 34, at para. 4.37(c)(i), 7.45.

  37. US–Copyright, supra note 32.

  38. US–Copyright, supra note 32, at para. 6.112.

  39. Gervais (2008).

  40. Kur (2008−2009), at 310.

  41. There is no jurisprudence on how this difference operates in practice. In the Canada–Patent case, the WTO Panel only undertook a consideration of step two in relation to the regulatory review exception, and in relation to that section found that there was no conflict with a normal exploitation of the patent: Canada–Patent, supra note 34, at para. 7.59. The WTO Panel was not, therefore, required to consider in what situation such conflict might have been “unreasonable”.

  42. US–Copyright, supra note 32, at para. 6.173.

  43. US–Copyright, supra note 32, at para. 6.168 (the view put by the United States).

  44. Berne, Art. 1.

  45. Berne, Art. 2(1).

  46. The rights of the producers of sound recordings are protected under the Rome Convention of 1961, the Geneva Convention of 1971, Art. 14 of TRIPS, and the WPPT. The rights of broadcasting organizations are protected under the Rome Convention, the Satellite Convention of 1974, and Art. 14 of TRIPS. The rights of performers are protected under the Rome Convention, Art. 14 of TRIPS, and the WPPT.

  47. The only three-step test that does constrain the permissible form of an exception or limitation to the exclusive rights of neighbouring subject matters is the one contained in WPPT Art. 16(2). That restriction applies to certain rights of performers and certain rights of producers of phonograms, but not to the rights of broadcasters.

  48. Canada–Patent, supra note 34, at para. 7.51.

  49. US–Copyright, supra note 32, at para. 6.165.

  50. See, e.g., Ricketson (1987), p. 482; Knights (2001), p. 3.

  51. Canada–Patent, supra note 34, at para. 7.21.

  52. World Trade Organization, European Communities – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs, Report of the Panel, WT/DS174/R, 15 March 2005 (hereafter EC–Trademarks), para. 7.671.

  53. EC–Trademarks supra note 52, at para. 7.662.

  54. EC–Trademarks supra note 52, at para. 7.672.

  55. Canada–Patent supra note 34, at para. 7.69; expressly approved and adopted by EC–Trademarks supra note 52, at para. 7.663.

  56. US–Copyright, supra note 32, at para. 6.224.

  57. See also Ricketson (2002), p. 38.

  58. Senftleben (2010), Senftleben (2004), at 217.

  59. See Canada–Patent, supra note 34, at para. 7.68; and European Communities–Trademarks, supra note 52, at para. 7.676.

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Acknowledgments

This article details research that was supported by the Centre for Media and Communications Law at the Melbourne Law School, and by the Australian Research Council through its Linkage Project scheme as part of the project “Cultural Collections, Creators and Copyright: Museums, Galleries, Libraries and Archives and Australia’s Digital Heritage” (Andrew Kenyon and Andrew Christie, LP0669566). The input of Jürgen Kurtz, Melbourne Law School, the suggestions of Christophe Geiger, Centre d’Études Internationales de la Propriété Intellectuelle, and the comments of the anonymous referees, are gratefully acknowledged.

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  1. Melbourne Law School, University of Melbourne, Melbourne, Australia

    Andrew F. Christie (Professor, Chair of Intellectual Property)

  2. Swinburne University of Technology, Melbourne, Australia

    Robin Wright (Copyright Manager)

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Correspondence to Andrew F. Christie.

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Christie, A.F., Wright, R. A Comparative Analysis of the Three-Step Tests in International Treaties. IIC 45, 409–433 (2014). https://doi.org/10.1007/s40319-014-0202-2

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