1. COMPULSORY LICENSING UNDER THE INDIAN COPYRIGHT ACT T.G.Agitha

2. Indian copyright law provisions Section 31 (1) (a) – General provision – validity to be tested with the three-step test Section 31 (1) (b) – based on Berne 11bis (2) Section 31 A – Section 32 – Based on Berne Appendix Article II Section 32 A - Based on Berne Appendix Article III Section 32 B - Based on Berne Appendix Article IV

3. International mandate Article 9 (2) of the Berne Convention (B.C.) Article 11bis (2) of the (B.C.) Article 13 of the TRIPS Agreement TRIPS also incorporate articles 1-21 of the B.C and the appendix thereto. (including the Berne acquis and not simply the individual provisions as stated by the WTO panel in WT/DS 160)

4. Article 9 (2) of the Berne Convention Laid down the three-step at Stockholm Conference 1967 Before that national legislators enjoyed discretionary power to lay down limitations 9 (2) brought in restrictions on this discretionary power by introducing three step test

5. Three-step test – B.C.- Art. 9 (2) A limitation/compulsory license with respect to the exclusive right of reproduction is valid only if it is limited to Certain special cases Provided that such reproduction does not conflict with the normal exploitation of the work of the author and does not unreasonably prejudice the legitimate interests of the author A flexible interpretation of this provision can make the C.L. under this provision more useful

6. Interpretation of Three-Step Test Certain special cases policy objectives of national legislator has to be taken into account – WTO panel decision is not acceptable No conflict with normal exploitation Not all exploitation, but ‘normal’ exploitation – there is a conflict only when there is a substantial market impairment. Markets that are neither developed, nor licensed to develop, will then fall beyond the scope of this Do not unreasonably prejudice with the legitimate exploitation Kingpin – balancing public and individual interests

7. Compulsory license - permissibility under three-step test India opposed introduction of three-step test - demanded compulsory general license similar to Article 11bis (2) B.C for the educational and cultural development of newly independent colonies like India Compulsory general licensing – granting of C.L of already published works on two simple conditions: 1) refusal to grant license by author/owner, 2) payment of compensation fixed by competent authority India feared that three-step test may restrict compulsory licensing scope

8. Compulsory license - permissibility under three-step test India’s demand was rejected, but open-ended three- step test was accepted as a compromise formula No explicit reference to compulsory license But it was accepted among the members that compulsory licensing is permissible under the third step preparatory documents and the commentators concurred that the ‘harm’ may be rendered “reasonable” if the author is compensated including by means of compulsory license Thus compulsory license formed part of Berne acquis of three-step provision

9. Vienna Convention on the Law of Teaties As per Article 31 (1) of the Vienna Convention on the Law of Treaties (VCLT), a treaty has to be interpreted in accordance with the ordinary meaning to be given to the terms of the treaty in their context.... Article 31.2 of the VCLT explains that context for the purpose of the interpretation of a treaty shall comprise,..... (a) any agreement relating to the treaty which was made between all the parties in connection with the conclusion of the treaty Records of the Main Committee I reports of Stockholm Revision Conference reveals the presence of such an agreement

10. TRIPS Article 13 and compulsory license While incorporating Article 1-21 B.C and Appendix the Berne Acquis and not just the individual provisions was incorporated (WTO panel decision) Thus compulsory licensing available under article 9 (2) got recognized under article 13 of the TRIPS also

11. Berne Appendix Special provision for developing countries Available with respect to translation and reproduction rights Irrational and troublesome procedures Total failure in reality Now developing countries need to go beyond Berne Appendix it is paradoxical that now compulsory licensing permissible under the third criterion of the three-step test is more attractive than the special provision for developing countries

12. Berne Appendix and Three- step test Appendix Applicable to right of reproduction and translation Troublesome procedure Conditions like withholding etc. are not applicable- simple condition- payment of compensation Three-step Under TRIPS coverage is extended No troublesome procedures Has to satisfy first two tests

13. Section 31 (1)(a) General provision Does not fall within the scope of the Berne appendix (validity has to be tested against the three-step test) But its application is limited to “Indian works” The only ground for issuing compulsory license under it is “withholding the work from the public” It is paradoxical in view of the Indian position in international negotiations demanding a provision assuring availability of foreign works at affordable rate for developing countries

14. Section 31 (1)(a) Needs to be extended to foreign works and to cases of non-availability at affordable/reasonable price Such expansion does not violate three- step test

15. Article 13 TRIPS and 31 (1)(a) Present situation of withholding from public Is a special case as when the work is so withheld no justification for copyright protection No exploitation at all – no conflict with second criterion There is payment of remuneration fixed by Copyright Board – no violation of third criterion

16. Article 13 TRIPS and 31 (1)(a) If extended to foreign works Same logic applies as copyright protection is not territorial in nature If extended to cases of non-availability of works at affordable/reasonable price Still falls within “certain special case” as non-availability at affordable price means no access No conflict with “normal exploitation” as the consumers available under compulsory lisensing may not be available otherwise Payment of compensation – no conflict with third step

17. Sections 32, 32 A, 32 B Based on Berne Appendix applicable only to right of reproduction and right of translation Irrational and troublesome procedural requirements

18. Sections 32, 32A and 32 B Conditions Waiting period Grace periodout dated works Strict stipulations with respect to recording refusal by the copyright owner Risk of termination of license on the author’s/owner’s entering into market himself.

19. Sections 32, 32 A, 32 B these provisions are not being utilized by any one and not expected to be utilized also in view of the stringent/ irrational conditions attached to them To be made useful need to be amended This requires amendment of Berne Appendix

20. Criticism of 1983 Amendment Knowing fully well the scope of compulsory license under article 9 (2), Berne, and the irrationality and non-utility of Berne Appendix, India opted for taking “benefit” from Berne Appendix rather than amending 31 (1) (a) to suit its demand raised in international negotiations from 1960 onwards i.e. To make available works of developing countries at affordable price India failed to practice what it preached in the international fora.

21. Article 11bis (2) and article 13 TRIPS As rightly said by the WTO panel, and accepted by Ricketson there is a conflict between the two The second step requirement goes against the purpose of Article 11 bis (2) Unlike article 9 (2), article 11bis (2) confers more discretion on national legislation to impose conditions on broadcasting rights (only conditions are protection of moral rights of the author and payment of equitable remuneration)

22. Section 31 (1) (b) and article 13 TRIPS Therefore Article 11bis (2) is not subjected to Article 13 TRIPS If Article 11bis (2) is made subject to article 13 TRIPS, 11bis (2) can never serve its purpose It is as good as TRIPS excluding Article 11bis (2) The mere inclusion of 11bis (2) while incorporating article 1-21 B.C, leads to the conclusion that 13 does not cover 11bis (2)

23. Section 31 (1) (b) Is withholding from the public a condition, or in other words, can a C.L. be issued when the work is available to the public? Whether such C.L. could be issued to more than one person in view of section 31 (2) which states that when there are more complainants license has to be granted to the one who best serves the interests of the public?

24. Section 31 (1) (b) Based on 11bis (2) of the Berne convention Applicable to broadcasting right Conditions – prior publication, refusal to allow communication to the public by broadcast on terms the complainant considers reasonable, payment of remuneration as fixed by Copyright Board Reason behind such a provision – regulating industrial practices by restricting the monopolistic power of collective societies to control industry (though ultimate aim is benefit of general public) Multiple licenses to promote competition is intended

25. Section 31 (1) (b) Different from 31 (1) (a) as withholding or not is not the concern of the provision Promoting competition and avoidance of monopolization is the real concern Indian courts failed to recognize its real purpose of restricting monopoly and the need to regulate industrial practices

26. Recent Supreme Court decision The court failed to take note of the absence of a requirement of “withholding from the public” in Section 31 (1) (b) and held that if voluntary licenses are given to some broadcasters, doors will be closed for others to approach Copyright Board However, taking into account the “ground realities” (the number of broadcasters in India), it held that fixing unreasonable terms amounted to refusal of permission it also held that Section 31 (1) (b) does not create an entitlement in favour of an individual broadcaster. But it left section 31 (2) uninterpreted and thus failed pay attention to the earlier Bombay High Court Judgment.

27. Conclusion India needs to take maximum use of the compulsory licensing provision allowable under three-step test rather than relying more on the Berne Appendix Thus section 31 (1) (a) needs to be amended bringing foreign works and situations of non-availability of works at affordable price within its scope Section 31 (1) (b) also should be extended to foreign works as the only stipulation under Berne is that “the conditions apply only in the countries where they have been prescribed”

28. Conclusion Negotiations for amending Berne Appendix to be strengthened The need of the day is not to scrap compulsory licensing provision but to strengthen it Thus violation of copyright could be prevented to a greater extent