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COMPULSORY LICENSING

UNDER THE INDIAN


COPYRIGHT ACT

T.G.Agitha

Indian copyright law


provisions
n
n
n
n
n
n

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

International mandate
n
n
n
n

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)

Article 9 (2) of the Berne


Convention
n

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

Three-step test B.C.- Art. 9 (2)


n

A limitation/compulsory license with respect to the


exclusive right of reproduction is valid only if it is
limited to
n
n

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

Interpretation of Three-Step
Test
n

Certain special cases


n

No conflict with normal exploitation


n

policy objectives of national legislator has to be taken


into account WTO panel decision is not acceptable
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
n

Kingpin balancing public and individual interests

Compulsory license - permissibility


under three-step test
n

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

Compulsory license - permissibility


under three-step test
n
n
n

Indias demand was rejected, but open-ended threestep 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

Vienna Convention on the Law


of Teaties
n

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

TRIPS Article 13 and


compulsory license
n

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

Berne Appendix
n
n

n
n
n

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

Berne Appendix and Threestep test


n

Appendix
n

n
n

Applicable to right of
reproduction and
translation
Troublesome procedure
Conditions like withholding
etc. are not applicablesimple condition- payment
of compensation

Three-step
n

Under TRIPS
coverage is extended
No troublesome
procedures
Has to satisfy first
two tests

Section 31 (1)(a)
n
n

n
n

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

Section 31 (1)(a)
n

Needs to be extended to foreign works


and to cases of non-availability at
affordable/reasonable price
Such expansion does not violate threestep test

Article 13 TRIPS and 31 (1)(a)

Present situation of withholding from public


n

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

Article 13 TRIPS and 31 (1)(a)


n

If extended to foreign works


n

Same logic applies as copyright protection is not territorial


in nature

If extended to cases of non-availability of works at


affordable/reasonable price
n

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

Sections 32, 32 A, 32 B
n
n

Based on Berne Appendix


applicable only to right of reproduction and
right of translation
Irrational and troublesome procedural
requirements

Sections 32, 32A and 32 B


n

Conditions
n
n
n

Waiting period
Grace period
out dated works
Strict stipulations with respect to recording
refusal by the copyright owner
Risk of termination of license on the
authors/owners entering into market
himself.

Sections 32, 32 A, 32 B
n

n
n

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

Criticism of 1983 Amendment


n

n
n

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.

Article 11bis (2) and article 13


TRIPS
n

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)

Section 31 (1) (b) and article


13 TRIPS
n

n
n

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)

Section 31 (1) (b)


n

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?

Section 31 (1) (b)


n
n
n

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

Section 31 (1) (b)


n

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

Recent Supreme Court


decision
n

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.

Conclusion
n

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

Conclusion
n

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

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