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Protection of Literary and Artistic Works (the “Berne Convention”) and the Trade-Related
Aspects of Intellectual Property Rights Agreement (“TRIPs”), as well as the Bills’ readiness for
compliance with the WIPO Copyright Treaty (“WCT”), the WIPO Performances and
Phonograms Treaty (“WPPT”) and the Beijing Treaty on Audiovisual Performances (the
“Beijing Treaty”). It also points to significant conceptualisation and drafting errors that remain
in the Bills, despite the advice from members of the Panel of Experts.
My comments are in response to both Bills referred to in the heading above, but mainly in
response to the Copyright Amendment Bill (referred to in this submission as the “Bil ”).
Since my specialisation is in the field of copyright legislation and policy on an international
basis, I would also like to use this opportunity of informing your committee of the latest
developments in copyright law, much of which I have been involved with personally, the most
recent being in Ireland, New Zealand and Singapore.
My advice to the Portfolio Committee in October 2018 pointed to provisions in the Bill that
have no foundation in policy, whether in the Explanatory Memorandum to the Bill or in the
SEIAS report or the Draft Intellectual Policy document that preceded it. This submission does
not repeat my observations in this regard, but your Committee is invited to consider this
2. International law and treaty obligations
With this background, I comment as follows on the following points relating to the Bills and
South Africa’s current and anticipated obligations under international treaties:
2.1. South Africa’s intended accession to WCT, WPPT and the Beijing Treaty
The Cabinet resolved on 5 December 2018 that South Africa should accede to WCT,
WPPT and the Beijing Treaty. This motion has been introduced to Parliament and is on
the agenda of the Portfolio Committee for Trade & Industry in the National Assembly on
26 February 2019.
The members of the Panel of Experts all advised that there were deficiencies in the Bills’
compliance with these treaties. Some of the deficiencies were corrected by the
withdrawal of certain proposed sections and of certain proposed deletions, but many
others, notably in relation to the copyright exceptions and the protection of technological
protection measures and copyright management information, were not adopted, leaving
the Bills non-compliant with WCT and WPPT.
The motion to accede to the treaties is an opportunity for other governmental
stakeholders to consider the treaty compliance of the Bills, since the impact of accession
relates to international relations.
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2.2. Copyright exceptions in the Bills and the Three-Step Test for exceptions under the
Treaties.
My advice to the Portfolio Committee dealt at length with the flexibilities allowed under
international law for member states of the Treaties to devise their own copyright
exceptions and the basic principle that govern them, namely the so-cal ed Three Step
Test. I do not intend repeating the full exposition here,
The members of the Panel of Experts all raised concerns of compliance of the construct of
copyright exceptions appearing in the Bill and their compliance with the Three-Step Test.
These new exceptions in the Bill are incorporated by reference in the Performers
Protection Amendment Bill.
The Three-Step Test is set out in Article 9(2) of the Berne Convention as conditions for
the application of exceptions to and limitations of the right of reproduction as follows:
“It shall be a matter for legislation in the countries of the Union to permit the
reproduction of such [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.”
Article 13 of TRIPs has extended the test to al exceptions to and limitation of the
exclusive rights under copyright. The Three-Step Test was also extended by the WCT to
all exceptions and limitations; both (i) to those which are specifically provided in the Berne
Convention in certain specific cases; and (ii) to any possible exceptions to or limitations of
those rights which have been newly recognized under WCT.
The Three-Step Test offers both flexibility and determines the limits beyond which national
laws are not allowed to go in establishing exceptions and limitations to the exclusive right
of reproduction.
The Bill, in Clause 13, introduces certain purposes in the ‘fair use’ clause, Section 12A,
which do not appear in the US ‘fair use’ provision in section 107 of its Copyright Act, nor in
the current ‘fair dealing’ provisions of the Act, namely:
x “personal use, including the use of a lawful copy of the work at a different time or with
a different device education”
x “scholarship, teaching and education”
x “illustration, parody, satire, caricature, cartoon, tribute, homage or pastiche”
x “preservation of and access to the collections of libraries, archives and museums”
x “ensuring proper performance of public administration.”
There is no indication that either the dti or the Portfolio Committee took the Three-Step
Test into account in developing and adapting the ‘fair use’ provision in the new Section
12A and the new copyright exceptions in Sections 12B, 12C(b), 12D, 19B and 19C,
together with their expanded application as a result of the contract override clause in new
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Section 39B. This failure causes a material risk of South Africa coming into conflict with
its obligations under the Berne Convention and TRIPs, and also that South Africa will not
be ready to accede to WCT and WPPT.
My advice to the Portfolio Committee also demonstrated that “education” and “teaching”,
in their generic sense, is not the proper subject matter for a “special case” under the
Three-Step Test. Indeed, the Berne Convention makes special provision elsewhere for
exceptions for specific educational purposes, namely in Article 10 for “illustration for
teaching” and in the Appendix, where there is a special dispensation for developing
countries relating to making of reproductions and translations.
Turning to specific exceptions in the Bill, I am of the view that at least the following
provisions will not meet the requirements of the Three-Step Test:
x The remnant of the ‘fair dealing’ exception for quotation in Section 12B(1)(a)(i)
inasmuch as it is defined by the third party’s purpose and not ‘fair practice.’
x The exception al owing reproduction by broadcasters in Section 12B(1)(c), inasmuch
as it relates to cinematograph films.
x The exception al owing any reproduction in the press, broadcast of communication to
the public of articles in the press where the right thereto has not been expressly
reserved in Section 12B(1)(e)(i) (which, by requiring formalities as a condition for
copyright protection, is also is not compliant with Article 5(2) of Berne).
x The translation exception in Section 12B(1)(f) (also noting that in terms of the Article
2(3) of Berne, the protection of a translation of a work cannot prejudice the copyright in
the original work and that in terms of Article 8 of Berne, copyright expressly includes
the exclusive right of making and of authorizing translation).
x The exceptions for education purposes in Section 12D(1) and (3), 12D(2), 12D(4),
12D(6), 12D(7).
x The library exceptions in Sections 19C(3) (complicated by the uncertain meaning of
the term “access”), 19C(4), 19C(5)(b) (insofar as it relates to placing works reproduced
for preservation on publicly accessible websites) and 19C(9), al as read with Section
19C(1).
2.3. The compulsory licences in Schedule 2 of the Bill and the Berne Appendix
Schedule 2 of the Bill contains the compulsory licences for translation and reprographic
reproductions that find their origin in the Appendix to the Berne Convention. These are
special rules that are only available to developing countries.
The deviations of Schedule 2 from the explicit text of the Appendix and its incorporation by
the amended Section 23(3) of the Act (which is meant to deal with the formalities of
assignments and exclusive licences) are material errors in the conceptualisation and
drafting of these provisions, leaving the Bill non-compliant with the Berne Convention in
this respect.
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In her advice to the Portfolio Committee,
showed how
Schedule 2 could be anchored in the new Section 12B. This advice was not adopted.
It also has to be determined whether South Africa can avail itself of the benefits of the
Appendix, specifically whether the country qualifies to make a notification in terms of
Article 28(1)(b) of the Berne Convention.
2.4. Extending the ‘digital rights’ to computer programmes and compliance with WCT
Computer programmes are deemed to be literary works under Berne and WCT, and
WCT therefore requires the ‘digital rights’, namely the exclusive rights of ‘communication
to the public’ and ‘making available’ to be extended at least to computer programmes.
This does not appear in the Bill.
2.5. Enforcement of the ‘digital rights’ by criminal sanction
There remains no consequential amendment to the criminal sanction provision in Section
27 following the introduction of the exclusive rights of ‘communication to the public’ and
‘making available’, which applies to all other unauthorised exercise of the other exclusive
rights with guilty knowledge. This omission has been drawn to the Portfolio Committee’s
attention, but not dealt with, with no explanation.
2.6. The obligations of National Treatment for foreign authors, artists and performers in
respect of uses of works in South Africa
The consequences of the obligations under National Treatment, to which South Africa is
bound under the Berne Convention and TRIPs, and which also appear in WCT, WPPT
and the Beijing Treaty, do not seem to have been considered in devising Sections 6A, 7A
and 8A or their predecessors in the Original Bill (which were provisos to the exclusive
rights in Sections 6, 7 and 8).
Under National Treatment, the rights of copyright legislated in South Africa must apply
equally to the nationals of other treaty countries as it does to nationals of South Africa.
The obligations of National Treatment are:
x Article 5(3) of the Berne Convention: “[W]hen the author is not a national of the
country of origin of the work for which he is protected under this Convention, he shall
enjoy in that country the same rights as national authors.” The obligation of National
Treatment applies to WCT in the same terms under Article 3 of WCT.
x Article 3(1) of TRIPs: “Each Member shall accord to the nationals of other Members
treatment no less favourable than that it accords to its own nationals with regard to the
protection of intellectual property, subject to the exceptions already provided in,
respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome
Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits. In
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respect of performers, producers of phonograms and broadcasting organizations, this
obligation only applies in respect of the rights provided under this Agreement.”
With Sections 6A and 7A applying to rights created where an author owns the copyright
and assigns it, then, under National Treatment, those rights must apply equally to South
African authors and to authors of all treaty countries, currently those who are members of
Berne and TRIPs.
The consequence of the application of National Treatment to Sections 6A and 7A as read
with Section 39B is that foreign authors who have authorised rights of use or assigned
copyright to South African persons under South African law, wil have an unwaivable
claim against the South African rightsholders and against South African collecting
societies (in terms of the new Section 22D(1)(b) and (c) and 22D(2)(b) specifically
naming authors as beneficiaries of collecting society distributions in addition to copyright
owners).
The same consequence of National Treatment applies to Section 8A in respect of foreign
performers in audiovisual works owned by South African copyright owners and/or where
South African law applies to the contracting of their performances.
There is no policy statement foreseeing this outcome. The policy statements in the
SEAIS Report and the Memorandum of Objects are clearly aimed at protecting the
interests of South African authors and performers in their transactions in relation to their
work.
2.7. Provisions relating to technological protection measures in both Bills
The definitions of ‘technological protection measure’ and ‘technological protection
measure circumvention device’ are insufficient to meet the requirements of Article 15 of
WCT, Article 18 of WPPT and Article 15 of the Beijing Treaty, which all require “adequate
legal protection.”
The proposed text in para (b) of the definition of ‘technological protection measure’
indicates that all processes, etc. capable of controlling non-infringing uses are exempt
from the concept, but this seems to cover most, if not all such processes, etc., as they
might be used for various non-infringing uses, such as reproduction for private study or
research, time-shifting, criticism or review or any other uses covered by limitations and
exceptions, or all uses of works that have fallen into the public domain. Thus, in practice
there is a risk that only very few, or none, of the circumvention devices defined below in
reality would be covered by the protection of Section 27, as it is to be amended by the
Bill.
The definition of ‘technological protection measure circumvention device’ focusses on
whether a device is ‘primarily’ designed, produced or adapted for the purpose of
circumvention. This will create loopholes for infringers, in that the definition is inadequate
if the device is still deliberately designed with such a purpose as a feature.
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The new subsection (5A) for the infringement provision, Section 27, does not completely
fulfil the requirements of Article 11 of WCT, which requires “adequate legal protection
and effective legal remedies” against the circumvention of technological protection
measures. The proposed text appears to allow, for example, sale and dissemination of
circumvention devices, as long as the person doing that has only reason to believe that
the circumvention is not for purposes of copyright infringement. The private access to a
work, however, does not necessarily infringe copyright, and the provisions may therefore
lead to widespread dissemination of such devices, which would then for all practical
purposes undermine the legal protection. The fact that the act of accessing data without
authorization is an offence under Sec. 86 of the Electronic Communications and
Transactions Act, 2002 (Act No. 25 of 2002), to which the proposed Sec. 28O(6) of the
principal Act refers, apparently would not prevent a widespread dissemination of
circumvention devices.
In this regard, Section 28O(6) and 28P(1) would seem to be an attempt to reduce the
scope of the Electronic Communications and Transactions Act, without formally
amending it, an action which, I submit, not only requires the inter-governmental
cooperation of the responsible Government Department, but may well have constitutional
implications.
The provisions in the exception clause, Section 28P(2), are problematic, in that it
legitimises uses of measures circumvention devices simply by notice to the copyright
owner. This is compounded by the broad scope of the new copyright exceptions,
especially the ‘fair use’ defence to copyright infringement. The United States undertakes
a three-yearly rule-making process for exemptions and this may be a solution for the Bil .
However, as it stands, Section 28P(2) undermines the protection afforded by
technological protection measures and that may well, too, not be sufficient for the
amended copyright legislation to comply with Article 11 of WCT.
These deficiencies apply equally to the new Sections 8E and 8F to be introduced by the
Performers Protection Amendment Bill. The definitions of ‘technological protection
measure’ and ‘technological protection measure circumvention device’ are incorporated
by reference from the Copyright Act, and I suggest a loose-standing set of definitions.
New Section 39(cH) contemplates “prescribing permitted acts for circumvention of
technological protection measures”. However, there are a number of errors, since this
section cross-refers to Section 28B, where it should be 28P, and Section 28P has no
reference to permitted acts “as prescribed.”
2.8. Exceptions for the disabled, including the visually impaired, and the Marrakesh VIP
Treaty
It is possible to have a single exception for al kinds of disabilities, as Section 19D seeks
to do, but then, inasmuch as South Africa is not a member of the Marrakesh Treaty to
Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or
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Otherwise Print Disabled (the “Marrakesh VIP Treaty”), the exception has to be compliant
with the Three-Step Test.
The Memorandum of Objects (at paras 1.2-1.3) states that the Bill is “strategically
aligned” with the Marrakesh VIP Treaty and that its amendment of the Act will allow South
Africa to accede to that treaty. The Bill proposes a single exception, but its terms meet
neither the Three-Step Test nor the Marrakesh VIP Treaty, as is shown below.
The beneficiary under the exception in Section 19D is “a person who has a physical,
intellectual, neurological, or sensory impairment and requires an accessible format copy
in order to access and use a work.” This definition, although it includes beneficiaries
under the Marrakesh VIP Treaty, goes far beyond that scope and, to the extent that it
does so, means that its extended scope has to be tested for whether its component parts
qualify as a “special case” under the Three-Step Test. It is likely that that definition will
include persons who are not considered as disabled in common parlance, certainly
including more persons than those, say, entitled to social grants from Government due to
suffering from a disability.
Section 19D is does not include any of the content required by Article 4 of the Marrakesh
VIP Treaty, since the right to make accessible format copies for persons with a disability
is open to “any person or organisation serving the disabled”, whereas the treaty limits that
act to “authorized entities” and “a primary caretaker or caregiver” acting on behalf of a
Beneficiary, in terms of Article 4. It therefore fails to meet the conditions for a copyright
exception or limitation permitted by the Marrakesh VIP Treaty and, in the circumstances,
will not meet compliance under the Three-Step Test either.
2.9. The Africa Growth and Opportunities Act (USA)
South Africa is a beneficiary of the United States African Growth and Opportunity Act
(AGOA), which significantly enhances South Africa’s market access to the US. The
protection of intellectual property rights is an important prerequisite for AGOA eligibility in
terms of Section 104(a)(1)(C)(ii):
“(1) (A country that) has established, or is making continual progress toward
establishing-- (C) the elimination of barriers to United States trade and investment,
including by--
(i) the provision of national treatment and measures to create an environment
conducive to domestic and foreign investment;
(ii) the protection of intellectual property”
AGOA also has a measure in Section 104(b) to ensure ongoing compliance:
“If the President determines that an eligible … country is not making continual
progress in meeting the requirements described in subsection (a)(1), the President
shall terminate the designation of the country made pursuant to subsection (a).”
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Whether a beneficiary country meets the criteria is determined solely by the United
States, since AGOA is not a reciprocal agreement.
To the extent that the Bill could be considered by the United States as an undoing of
existing intellectual property protection, South Africa will place its beneficiary status under
AGOA in jeopardy under Section 104 of AGOA.
3. Errors in conceptualisation and drafting of the Bills
3.1. The most notable errors remaining in the Bill, despite the advice of the Panel of Experts,
are:
3.1.1. The new express rights of remuneration for authors, composers and artists
coupled with government regulation, which may well prove unworkable since their
conceptualisation and drafting do not take into account the situations applying to
multi-author works, nor can they effectively govern works that are compilations of a
variety of copyright-protected material from different kinds of copyright works and
from different authors.
3.1.2. The retention in the Bill of remuneration rights for performers in Section 8A(1) to
(4). The topic of remuneration of performers in audiovisual works should be dealt
with in the Performers Protection Amendment Bill (in respect of which see para 3.2
below)
3.1.3. The 25-year limit on assignments of copyright in literary works is not a true
reversionary right, as stated in the Memorandum of Objects, but is attached to the
Copyright Act’s provisions relating to the
formalities for deeds of assignment and
exclusive licences. This results in not only the relative provision - which is simply a
new proviso to section 22(3) - expanding across a wide variety of copyright works
for which it was never intended (judging from the recommendations of the
Copyright Review Commission), but there are also no substantive provisions that
govern the intended reversion of rights, namely the disposition of rights of the
copyright owner and the re-acquisition of rights by the original author or authors.
3.1.4. The compulsory licences for reproductions and translations in Schedule 2 are
linked to the provisions of the Copyright Act dealing with the formalities for
licences, instead of being an expansion of the exceptions. Michelle Woods of
WIPO offered the solution to correct this mistake, namely by making an
appropriate adjustment to one of the proposed exceptions in the new section 12B
(which was otherwise not compliant with treaty obligations), yet it was never taken
up.
3.1.5. The resale royalty right, although permitted by the Berne Convention, is not a right
of copyright as such, but a separate, distinct set of rights which, in other legislation
internationally, usually appears in legislation separate from the relevant copyright
law or at least a separate chapter of copyright legislation. Its couching as an
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extension of the exclusive rights relating to artistic works mean that other
provisions of the Copyright Act will now apply to it in circumstances that are
unworkable. A case in point is the reference to the resale royalty right in the
prerequisites for benefitting from the orphan works exception, which will have a
serious impact on the trade of second-hand goods.
3.1.6. The renaming of “cinematograph films” in the Copyright Act, “audiovisial works”,
which, with the relative new definition, broadens the term without explanation and
also does not amend related legislation that depends on this definition, namely the
Registration of Copyright in Cinematograph Films Act.
3.1.7. The transitional provisions. The fact that the Intellectual Property Laws
Amendment Act, Act 28 of 2013, has not been brought into operation after 5 years,
with no final decision on its fate, compels the need for transitional provisions which
are necessarily imperfect.
We draw to your attention that many of the goals of the Intellectual Property Laws
Amendment Act relating to traditional works have some overlap with the
Indigenous Knowledge Systems Bill, that was recently dealt with by the NCOP and
referred back to the National Assembly for corrections.
3.2. In relation to performers rights, both Bills have been developed in the Portfolio Committee
in a way that grant performers co-extensive rights to prohibit certain uses of their
performances, exclusive rights to certain uses of their performances, as well as certain
remuneration rights.
x The “right to prohibit” in Section 5 (to be amended) is the original performers right
introduced by the Perfumers Protection Act in 1967 and follows the format of the
Rome Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations.
x The exclusive right to be introduced in new Section 3 is a right offered to performers in
audio-visual works by the Beijing Treaty.
x The addition of a remuneration right for performers by Section 8A(1)-(4) in the
Copyright Act will have to be measured against Article 11 of the Beijing Treaty, that
provides for performers having an exclusive right of authorizing the broadcasting and
communication to the public of their performances fixed in audiovisual fixations
or,
after
notification deposited with the Director General of WIPO, a right to equitable
remuneration for the direct or indirect use of performances fixed in audiovisual
fixations for broadcasting or for communication to the public.
3.3. Considering the extent of the comments on the Bill by the Panel of Experts, the changes
made by the Portfolio Committee have by and large not been material, especially
inasmuch as they have led to hardly any changes to the copyright exceptions and
exceptions allowing uses of technological protection measure circumvention devices.
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Resumé
Art.4(1)(b)