Prof. Jane C. Ginsburg, Columbia University School of Law*
February 28, 2012

The World Intellectual Property Organization (WIPO) is discussing a possible treaty that would obligate member states to adopt exceptions and limitations to assist the access of the visually impaired to works of authorship.1  The U.S. Patent and Trademark Office and the Copyright Office in 2009 solicited comments on one of the proposed treaties.  The U.S. government at the WIPO Standing Committee on Copyright and Related Rights (SCCRR) in December 2009 pronounced itself open to a variety of international efforts to influence countries to enhance the access of the visually impaired to copyrighted works, from model laws to a multilateral binding instrument.2  Because further treaties designed to limit the scope of copyright protection may be in the offing,3 it is appropriate to step back from the particular issues confronting the visually impaired to consider more broadly whether treaties imposing mandatory exceptions and limitations, whatever their substantive objectives, are in fact compatible with member states’ obligations under the Berne Convention and the reinforcement of these obligations through the TRIPs Accord.  Careful examination of the structure and policies underlying the Berne Convention suggests a fundamental tension between that Convention’s norms and treaties whose goal is to limit the scope of copyright.

Art. 20 of the Berne Convention allows member states “to enter into special agreements among themselves, in so far as such agreements grant to authors more extensive rights than those granted by the Convention, or contain other provisions not contrary to this Convention” (emphasis supplied).  Thus agreements among member states must not establish a level of protection inferior to that set by the Convention.

If the exceptions the new treaty would mandate are compatible with the “three-step test” framework for exceptions to the reproduction right set out in Art. 9(2) of the Berne Convention, and with other Berne exceptions or limitations on that right or other rights, then, at first blush, there would seem to be no problem with making obligatory those exceptions that are already permissible.  For example, under this view, it would not be contrary to the Convention to enter into an agreement requiring member states to subject foreign literary or artistic works to free use “by way of illustration in publications, broadcasts or sound or visual recordings for teaching,” under the conditions set out in Berne Art. 10(2).

There are, nonetheless, three fundamental problems with the argument that “those exceptions which Berne permits, another instrument may make mandatory.”

1.  The substantive aspects of the Berne Convention (covered subject matter, minimum rights, permissible exceptions and limitations) apply only to foreign works.  Art. 5(3) provides that “Protection in the country of origin is governed by domestic law.”  Thus, Berne does not affect the domestic treatment of local works.  Any new agreement that purports to make Berne exceptions mandatory will not, without more, impose those exceptions on member states’ own works.  Berne’s explicit forbearance from interfering in domestic law gives rise to the first problem: If member states impose the exceptions only on foreign works, member states will violate the Berne Arts. 5(2) and 19 principle of national treatment, which forbids member states from according less protection to foreign-member-state works than to local works.  Assuming that exceptions and limitations that would have been Berne-permissible had they applied to foreign works already existed in local laws, then to apply them to foreign works would create no imbalance between local and foreign works with respect to national treatment.   But if a Berne-compatible exception were made mandatory for foreign works, without imposing a corresponding exception on local works, then foreign works would receive worse treatment than local works.  This would be inconsistent with the principle of national treatment.

Thus, mandatory exceptions unaccompanied by equivalent exceptions for country of origin works are contrary to the spirit and structure of the Berne Convention, and therefore are “contrary to this Convention” within the meaning of Art. 20.  Member states could avoid the disparity of treatment if they enacted equivalent domestic copyright exceptions.  But in that event, there would be no need for mandatory exceptions at the multilateral level because the principle of national treatment would require member states to apply their Berne-compatible domestic exceptions to foreign works without any additional instrument.  The following consequences therefore arise.  Without concomitant limitations in domestic law, mandatory exceptions to the protection of foreign works are ineffective under Arts. 5(1) and 19.  With concomitant limitations in domestic law, mandatory (Berne-compatible) limitations on the protection of foreign works are unnecessary.

2.  Perhaps, even if unnecessary, a treaty requiring member states to incorporate mandatory exceptions into their domestic law would be desirable.  Arguably, if member states would not on their own provide such limitations, an international obligation should do the job, although one might wonder why a member state unwilling on its own to implement publicly beneficial domestic exceptions, would, faced with the requisite treaty, in fact change its laws.  Even assuming the (questionable) factual basis prompting the adoption of mandatory exceptions, their implementation through a treaty would nonetheless contravene a key feature of the Berne structure.  By leaving domestic protection to the country of origin, Berne preserves the local lawmaking autonomy of its member states.  So long as they extend Berne minimum protection to Union works, member states remain free to determine the scope of their own cultural policies.  In the realm of limitations on copyright, member states may gauge the level of protection their own authors require in light of countervailing local needs and changing situations in the future.

Hence the second problem: A treaty binding member states to implement internally a supranational, worldwide standard of copyright limitations would deprive those states of the autonomy and flexibility (otherwise built into Berne) subsequently to modify or eliminate those exceptions should local experience prove them unwarranted; any change to domestic law would require revising the international agreement, or a withdrawal from the treaty, which is in fact both extremely unlikely and politically difficult.  Perhaps the negotiation process will inevitably yield a text that is too vague and general to impose real constraints on member states’ local flexibility, but such an outcome is undesirable for two reasons.  First, the instrument will lack the bite some member states claim to require to enact the aspired exceptions, and second, if the standards are in fact meaningless, all that will remain will be the symbolism of a treaty dedicated to the diminution of authors’ rights.

3.  This observation brings us to the third, and in the overall scheme of international copyright, most significant problem: The envisioned mandatory exceptions treaties are profoundly inconsistent with the history and spirit of the Berne Convention because they would, for the first time, create an international instrument whose sole purpose is to diminish the rights of authors.  Proponents of mandatory exceptions assert that a treaty will introduce “balance” into an allegedly monolithic pro-author/rightholder regime of Berne (and TRIPs).  But the premise is false.  Berne and TRIPs already include “balancing” features, such as exclusions from the subject matter of copyright, a panoply of permissible exceptions, most notably the “three-step test,” which allows member states broad leeway to allow copying “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,” and the Art. 10(1) requirement that member states permit “quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.”  The Berne-TRIPs package therefore, while primarily designed to further the international circulation of works of authorship by ensuring effective protection, nonetheless from its inception has taken into account countervailing considerations of free expression and access to culture.  One of the original Framers of the Berne Convention, Swiss jurist Numa Droz, recognized this in 1884 when he emphasized that “limits to absolute protection are rightly set by the public interest.”4   The one-sided treaty is the one WIPO is now considering.  It would be a fateful step for WIPO to adopt international norms conceived not merely for the primary purpose, but for the single objective of cutting back on the protection of authors.