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 1. 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.

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 3 rd 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 -Can be invoked in both published & unpublished works.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 sub- region.

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