84 Digital Copyright Law

outcomes.14 The limitations and exceptions to copyright are imperative in view

of the justifications mentioned above.
Limitations and exceptions are usually enshrined in statutory law, which
mandates how far the rights of the copyright owner can extend and the specific
instances, where such rights can be curtailed.15 They ensure the balance in cop-
yright law by providing the mechanism to limit the unrestricted exploitation of
rights by the copyright owner. Since the advent of digitization, the traditional
balance in copyright law has tilted in favour of copyright owners as authors in
addition to copyright are armed with technological tools and other legal safe-
guards to protect the rights over their work. For instance, in the case of private
copying exception, the copyright owner cannot oversee or supervise each and
every instance of private copying in the analogue world. But, in the digital
age, the existence of the private copying exception, by itself, is under threat, as
unlike the analogue world, the copyright owner in the digital world is armed with
the capacity to oversee each and every use of the digital work through digital
rights management technologies and anti-circumvention laws. Such technical
and legal standards, which obstruct the exercise of limitations and exceptions,
are justified on the basis of curtailing piracy and incentivizing the creation of
future works. However, piracy can only lead to economic detriment to the cop-
yright owner, but cannot per se hinder the creation of future knowledge works.
As the creation of new works is strongly dependent on accessibility to previ-
ously existing works, which can be ensured only by the proper implementation
of limitations and exceptions to copyright. Hence, the existence of limitations
and exceptions validates one of the primary justifications of copyright law – the
creation of future works.16

4.3 LIMITATIONS AND EXCEPTIONS UNDER

INTERNATIONAL COPYRIGHT LAW
The treatment of limitations and exceptions in the international instruments
relating to copyright are significant as the international treaties contain min-
imum standards that the member countries have to adhere to in their domes-
tic copyright legislation. In this regard, it is worth studying the implication of
limitations and exceptions under international law on domestic legislation to
understand, if the copyright balance between the copyright owner in protecting
her works and the public interest in access to works, is secured.

14. Samuelson (n 8) 24.

15. ibid 13.
16. The Convention establishing WIPO felt that the promotion and protection of intellectual
property was necessary to encourage creative activity. The utilitarian argument also justifies
the need for copyright on the basis of creation of new works for the benefit of society. See
Susan Isiko Štrba, International Copyright Law and Access to Education in Developing
Countries: Exploring Multilateral Legal and Quasi-Legal Solutions (Martinus Nijhoff
Publishers 2012) 18–19.

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 Chapter 4—Three-Step Test and Limitations and Exceptions to Copyright 85

4.3.1 Berne Convention

It is important to understand the status of limitations and exceptions under
Berne Convention for the Protection of Literary and Artistic Works, 1886 (BC)
as it is the first international treaty with relation to copyright law.17 Historically,
during the founding of the Berne Convention only countries from Europe,
North and South America and the Caribbean were invited and Asia and Africa
were left out from the negotiations for seemingly being ‘uncivilized’.18 Hence,
the concerns of most developing countries were not taken into account during
the initial Berne negotiations. Also, unlike domestic laws that concentrated on
public interest goals of copyright and emphasized advancement of learning and
progress of science and arts, international copyright law only formed the basis
for protection of one country’s copyright in another country.19
Moreover, countries that did take part in the negotiations leading to BC
were divided, with some pushing for strong authorial rights and others propos-
ing broader public use exceptions. For example, France which spearheaded the
talks in an effort to protect strong authorial rights had substantial opposition
from Germany which highlighted the need for stronger exceptions for educa-
tional use.20 Such polarization at the initial Berne Conference became more dis-
tinct and pronounced during the Berne Revisions particularly at the Stockholm
Revision 1967 and subsequent Paris Revision 1971, with developed countries
seeking stronger protection for IP owners and the developing countries mooting
for provisions such as compulsory licencing to procure access to educational
materials.21 Such distinct and divergent interests of member countries ensured
that the first Berne Act of 1886 and all its subsequent revisions did not, and in
fact could not, provide for strong limitations and exceptions to copyright.
Due to such conflicting interests of nation states, BC in an attempt to be a
successful multilateral agreement, and being the first of its kind, left many areas
untouched, particularly those where consensus between countries was rendered
impossible – as in the case of limitations and exceptions. Nevertheless, BC
and its subsequent revisions have continued to grant latitude for member states
to incorporate provisions relating to limitations and exceptions to copyright

17. For a detailed study on Berne and its revision conferences see Sam Ricketson, The Berne
Convention for the Protection of Literary and Artistic Works: 1886–1986 (Centre for
Commercial Law Studies, Queen Mary College 1987); Sam Ricketson and Jane Ginsburg,
International Copyright and Neighbouring Rights – The Berne and Beyond (2nd edn,
Oxford University Press 2006).
18. Sara Bannerman, International Copyright and Access to Knowledge (Cambridge University
Press 2016) 128–29.
19. Štrba (n 16) 23.
20. Ricketson and Ginsburg (n 17).
21. See Ruth L Okediji, ‘Welfare and Digital Copyright in International Perspective’ in J. H
Reichman and K Maskus (eds), International Public Goods and Transfer of Technology
under a Globalized Intellectual Property Regime (Cambridge University Press 2005).

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 86 Digital Copyright Law

in their domestic copyright laws. However, unlike the mandatory minimum

standards of protection that BC seeks to guarantee for copyright owners, the
provisions relating to limitations and exceptions are merely discretionary.22
Therefore, limitations and exceptions to copyright, which subserve public inter-
est at large, did not gain due recognition at an international level, as harmoni-
zation was rendered unfeasible due to lack of consensus among nation states.

4.3.1.1 Limitations and Exceptions under Berne

The limits on the rights of the copyright owner, which serve the purpose of
safeguarding the copyright balance, can be classified as general and statutory
limitations.23 General limits are the prescribed limits on the subject matter of
copyright protection, scope of copyright protection and term of protection.24
Statutory limitations include limitations and exceptions that are enacted in
order to safeguard cultural, social, informational, economic and political needs
and purposes.25
BC, provides for three types of limits on the rights of the copyright
holder,26 namely
(i) limitations with reference to subject matter;
(ii) limits to economic rights and
(iii) specific limitations and exceptions.
The limitations with reference to subject matter is enshrined as an implicit
requirement for originality in Article 2(1) and further illustrated by Article 2(8),
which exclude news of the day and miscellaneous facts such as press informa-
tion from the ambit of copyright protection.27 Also, Article 2(4) specifically
allows States to exclude government works from copyright protection.
Limits on economic rights are also inherent in the Articles that grant eco-
nomic rights to copyright owners under BC. For instance, the right to repro-
duction, enshrined in Article 9(1), the right to make transformative uses, such
as translation under Article 8; adaptations, arrangements and other alterations

22. Ruth L Okediji, ‘Limitations, Exceptions and Public Interest Considerations for Developing
Countries’ UNCTAD – ICTSD Project on IPRs and Sustainable Development (2006)
8 <http://unctad.org/en/docs/iteipc200610_en.pdf> accessed 14 January 2017.
23. Hugenholtz (n 4) 319.
24. ibid.
25. ibid 320.
26. Sam Ricketson, ‘WIPO Study on Limitations and Exceptions of Copyright and Related
Rights in the Digital Environment’ SCCR/9/7 (2003) 10–44 <http://www.wipo.int/edocs/
mdocs/copyright/en/sccr_9/sccr_9_7.pdf> accessed 12 December 2016 (‘WIPO Study on
Limitations and Exceptions of Copyright’).
27. ibid.

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 Chapter 4—Three-Step Test and Limitations and Exceptions to Copyright 87

under Article 12; and cinematographic adaptations under Article 14(1), do not
have precise definitions under BC, thereby leaving nation states with adequate
room to enact provisions providing leeway for certain limits on such rights.28
Also, laws pertaining to exhaustion, which find no mention under BC and
term of copyright, which is set as a minimum of life plus 50 years in BC, are
also limits on the rights guaranteed to copyright owners that can be enacted in
national copyright laws.
Specific limitations and exceptions in BC can be listed as follows. BC pro-
vides for two kinds of limitations and exceptions, namely uncompensated and
compensated.

(i) Uncompensated Limitations and Exceptions

Limitations on protection –
(a) Article 2(4) – Official Texts of a legislative, administrative and legal
nature and official translations of such texts
(b) Article 2(8) – News of the day and miscellaneous facts having the
character of mere press information
(c) Article 2bis (1) – Political speeches and speeches delivered in the
course of legal proceedings.
Exceptions to protection –
(a) Article 2bis (2) – Reporting of lectures, addresses and other works of
the same nature which are delivered in public
(b) Article 10(1) – Right of quotation
(c) Article 10(2) – Utilization for teaching
(d) Article 10bis (1) – Articles published in newspapers or periodicals
(e) Article 10bis (2) – Reporting current events
(f) Article 11bis (3) – Ephemeral recordings by broadcasting
organizations.
General exception concerning reproduction rights under Article 9(2), which
stipulates the three-step test, is discussed in detail in section 4.4 below.

(ii) Compensated Limitations

Apart from the uncompensated exceptions and limitations listed above, BC also
provides for compensated limitations in the form of compulsory licences.

28. ibid.

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 88 Digital Copyright Law

(a) Article 11bis (2) – Statutory (compulsory) licensing for broadcasting

and cable transmission
(b) Article 13 – Statutory (compulsory) licensing for recording
musical works
(c) Berne Appendix – Compulsory licenses for reproduction and transla-
tion of copyright works for educational and developmental purposes
for developing countries.
The Berne Appendix, which has specific compulsory licencing provisions
facilitating bulk access of copyright works, was included in the Paris Revision
of 1971. This was due to significant mooting for provisions on compulsory
licencing by countries such as India and Romania during negotiations at the
Stockholm Revision of 1968.29 However, Berne Appendix has largely been
un-used due to its extremely complex and burdensome administrative require-
ments.30 For a detailed study on the Berne Appendix, refer Chapter 5 section
5.2.4.1.
Apart from the compensated and uncompensated limitations and excep-
tions, BC also consists of minor reservations,31 which are implied exceptions,
first invoked in the Brussels and Stockholm Revision Conferences of BC. The
minor reservations deal with performing rights, recording rights, recitation
rights, broadcasting and cinematographic rights and translation rights, which
are used de minimis, for instance by military bands and in religious ceremo-
nies.32 The BC is also subject to one of the most controversial areas relating
to limitations and exceptions, namely the three-step test, compliance with
which is necessary to enact limitations and exceptions in domestic legislations.
A detailed analysis of the three-step test is provided under section 3.4 below.

4.3.1.2 Treatment of Limitations and Exceptions under Berne

The Berne Convention of 1886 has been revised seven times, with the latest
revision in 1971. Beginning from the initial Berne Act of 1886, all subsequent
revisions have primarily focused on the creation of new rights.33 As a matter
of fact, BC came into being with the intent of extending the rights granted to
authors within their respective countries to all other member states of BC, on

29. For a detailed analysis of the Berne Appendix, see Štrba (n 16).
30. See Okediji (n 21).
31. Ricketson (n 26) 11–20.
32. Hugenholtz (n 4) 327.
33. Daniel J Gervais, ‘Making Copyright Whole: A Principled Approach to Copyright
Exceptions and Limitations’ (2008) 5(1) University of Ottawa Law & Technology Journal 6 <
https://scholarship.law.vanderbilt.edu/cgi/viewcontent.cgi?article=1708&context=faculty-
publications> accessed 15 June 2019.

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 Chapter 4—Three-Step Test and Limitations and Exceptions to Copyright 89

the basis of the most fundamental and significant principle enshrined under BC,
namely National Treatment.34
Though BC was formulated to protect the rights of the author, neverthe-
less such protection accorded to authors also stems from the intent to cater
to the interests of the public. This public interest consideration, according to
Professor Daniel Gervais, is illustrated in the fact that the great author Victor
Hugo, who was also the then President of Association littéraire internationale,
the predecessor of the present-day Association littéraire et artistique interna-
tional (ALAI), emphasized that the rights accorded to an author is in lieu of
public interest and in the case of a conflict between the author’s rights and pub-
lic interest, the latter should prevail.35 The BC, as originally enacted in 1886,
had a minimalist approach in guaranteeing protection to authors, as apart from
national treatment, there was no significant right, save alone the right for trans-
lation. Likewise, the exceptions were also very limited, with BC mentioning
reproduction of articles for political discussions, news of the day36 and use in
publications for teaching or scientific purposes, or chrestomathies.37
However, as stated earlier, the original Berne Act and its subsequent revi-
sions predominantly focused on the extension of the scope of protection guar-
anteed to authors, by the creation of new rights. And exceptions to these rights
were largely left as ‘possibilities’ for member states to decide upon and enact in
their respective national copyright laws. Except the mandatory exceptions relat-
ing to quotation, news reporting and political discussions – which were particu-
larly retained from the first Berne Act – the other exceptions were principally
discretionary.38 The space for limitations and exceptions was therefore largely
unregulated, unlike the rights guaranteed to the authors. Therefore, though BC
envisaged a balance between author’s rights and user rights in view of public
interest considerations, it left the enactment of limitations and exceptions to the
discretion of the nation states. The limitations expressly provided under BC,

34. ibid, 7.
35. ibid 5.
36. Article 7(2) of Berne Convention for the Protection of Literary and Artistic Works 1886
However, in the case of cinematographic works, the countries of the Union may
provide that the term of protection shall expire fifty years after the work has been
made available to the public with the consent of the author, or, failing such an event
within fifty years from the making of such a work, fifty years after the making.
<http:// www.wipo.int/ treaties/ en/ ip/ berne/ > accessed 10 December 2016 (‘Berne
Convention’).
37. Article 8 of Berne Convention
Authors of literary and artistic works protected by this Convention shall enjoy the
exclusive right of making and of authorizing the translation of their works throughout
the term of protection of their rights in the original works.
38. Ricketson (n 26) 17.

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 90 Digital Copyright Law

include a fixed term of protection for copyright, the requisite for fixation and
compulsory licences in general and compulsory licences for developing countries
via the Berne Appendix – which is largely not operational.

4.3.2 Rome Convention

The Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations, 1961 (RC) deals with neighbour-
ing rights, which are rights related to copyrights. RC deals with three kinds of
neighbouring rights, namely rights of performers, phonogram producers and
broadcasting organizations.39 Limitations and exceptions are provided under
Article 15 of RC. They are not mandatory and member states may choose to
enact them in their national legislations.40 RC provides for four specific excep-
tions, which are listed below.
(i) Article 15(1)(a) – Private use
(ii) Article 15(1)(b) – Use of short excerpts in connection with the report-
ing of current events
(iii) Article 15(1)(c) – Ephemeral fixation by a broadcasting organisation
by means of its own facilities and for its own broadcasts
(iv) Article 15(1)(d) – Use solely for the purposes of teaching or scientific
research.
Also, a right equivalent to copyright is provided under Article 15(2), which
states,
any Contracting State may, in its domestic laws and regulations, provide for
the same kinds of limitations with regard to the protection of performers,
producers of phonograms and broadcasting organisations, as it provides for,
in its domestic laws and regulations, in connection with the protection of
copyright in literary and artistic works.
By making a reference to BC, the Berne-type limitations and exceptions are
considered applicable to RC, except for the provisions relating to compulsory
licences that may be provided as specifically under RC.

4.3.3 TRIPS
The Agreement on Trade Related Aspects of Intellectual Property Rights, 1995
(‘TRIPS’) provides minimum standards of protection for intellectual property law,
including copyright, to be incorporated in national legislations. Unlike its predeces-
sors, TRIPS gains significance as it functions under the auspices of the World Trade
Organization (WTO) and has Dispute Settlement Mechanisms in place, thereby

39. See Goldstein (n 2) 274–81.

40. See Ricketson (n 26) 44–45.

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 Chapter 4—Three-Step Test and Limitations and Exceptions to Copyright 91

ensuring that its Articles are legally enforceable.41 The TRIPS Agreement through
Article 9(1)42 ensures that Articles 1 to 21 of BC’s Paris Act 1971, excluding Article
6bis relating to moral rights, applies to all signatories of TRIPS, irrespective of
whether they are signatories of the BC or not. Also, domestic law of member states
is required to be compliant and not run contrary to BC as per Article 2(2)43 of TRIPS.
Therefore, Article 9(1) of TRIPS, which extends provisions of BC to TRIPS,
ensures that all limitations and exceptions enshrined under BC are applicable to
members of TRIPS. This implies that the mandatory limitation under BC, namely
the right of quotation is accorded the same mandatory status under TRIPS, while
and all other permissive limitations and exceptions under BC may or may not be
guaranteed protection by member countries of the TRIPS agreement.44
TRIPS, only extends the protection guaranteed to limitations and excep-
tions under BC to its signatories, as there is no specific limitation or exception
enacted under TRIPS,45 save alone Article 13. The three-step test under Article
9(1) of BC is enshrined with certain modification under Article 13 of TRIPS
agreement. Article 13 gains significance, as it provides the requirements upon
fulfilment of which, national states can enact limitations and exceptions. While
the application of three-step test is limited to limitations and exceptions relating
to reproduction rights under BC, the three-step test under TRIPS, in addition to
applying to limitations and exceptions of reproduction rights under BC, which
are extended to TRIPS, also applies to limitations and exceptions relating to all
other rights guaranteed by both BC and TRIPS.46

41. Peter K Yu, ‘The Objectives and Principles of the TRIPS Agreement’ in Carlos M
Correa (ed.) Research Handbook on the Protection of Intellectual Property under WTO
Rules: Intellectual Property in the WTO, vol 1 (Edward Elgar Publishing 2010) 146. See
also Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis (3rd edn, Sweet
& Maxwell 2008).
42. Article 9(1) of TRIPS Agreement
9. Relation to the Berne Convention
(1) Members shall comply with Articles 1 through 21 of the Berne Convention (1971)
and the Appendix thereto. However, Members shall not have rights or obligations
under this Agreement in respect of the rights conferred under Article 6bis of that
Convention or of the rights derived there from.
<https://www.wto.org/english/docs_e/legal_e/27-trips.pdf> accessed 2 December 2016
(‘TRIPS’).
43. Article 2(2) of TRIPS
Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that
Members may have to each other under the Paris Convention, the Berne Convention,
the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated
Circuits.
44. Ricketson (n 26) 46–55.
45. ibid. See also Hugenholtz (n 4).
46. ibid.

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 92 Digital Copyright Law

4.3.4 WCT and WPPT

The traditional balance in copyright law ensured by balancing the rights
of the author with the public interest through enactment of limitations and
exceptions, has found renewed significance with the advent of digital tech-
nology. As the balance, so ingeniously fostered by copyright law in the past,
has found new threats through the enactment of provisions relating to dig-
ital rights management that have been persistently criticized – not without
sound evidence – for tipping the balance in favour of copyright owners.47
In this regard, it is significant to examine the international treaties enacted
with the intention to extend copyright protection to works in digital format,
namely the WCT and WPPT, for its treatment of limitations and exceptions
to copyright.
Similar to the negotiations that led to BC and TRIPS, the air was rife
with dissenting views from nation states in the negotiations that led to the
enactment of WCT, over the introduction of specific provisions relating to
limitations and exceptions to copyright.48 The only provisions that were
finally agreed upon were Article 1(4) and Article 10. Akin to Article 9(1) of
TRIPS, Article 1(4) of WCT also extends the application of Articles 1 to 21 of
BC, relating to reproduction rights, to signatories of the WCT.49 Further, the
Agreed Statement adopted by the delegations at the close of the Diplomatic
Conference of WCT reads,
(t)he reproduction right, as set out in Article 9 of the BC, and the exceptions
permitted thereunder, fully apply in the digital environment, in particular
to the use of works in digital form. It is understood that the storage of a
protected work in digital form in an electronic medium constitutes a repro-
duction within the meaning of Article 9 of the Berne Convention.
Thereby, the right of reproduction under Article 9 is extended to WCT, includ-
ing the right for nation states to classify incidental and transient reproduc-
tion, which occurs over digital transmissions, as an exception to copyright
infringement.50

47. For a profound analysis of the ill-effects of DRM see Lawrence Lessig, Code and Other
Laws of Cyberspace (Basic Books 1999); Lawrence Lessig, The Future of Ideas: The Fate
of the Commons in a Connected World (Random House 2001); Kamiel J Koelman and
Natali Helberger, ‘Protection of Technological Measures’ in P Bernt Hugenholtz (ed.)
Copyright and Electronic Commerce: Legal Aspects of Electronic Copyright Management
(Kluwer Law International 2000); Niva Elkin–Koren and Neil W Netanel (eds) The
Commodification of Information (Kluwer Law International 2002).
48. Jörg Reinbothe and Silke von Lewinski, The WIPO Treaties on Copyright: A Commentary
on the WCT, the WPPT, and the BTAP (2nd edn, OUP 2015) 406.
49. Ricketson (n 26) 56.
50. ibid.

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 Chapter 4—Three-Step Test and Limitations and Exceptions to Copyright 93

The three-step test is embodied in Articles 10(1) and 10(2) of WCT. The
Agreed Statement of contracting parties with reference to Article 10 reads,
(i)t is understood that the provisions of Article 10 permit Contracting Parties
to carry forward and appropriately extend into the digital environment lim-
itations and exceptions in their national laws, which have been considered
acceptable under the BC. Similarly, these provisions should be understood
to permit Contracting Parties to devise new exceptions and limitations that
are appropriate in the digital networked environment.
It is also understood that Article 10 (2) of the WCT neither reduces nor
extends the scope of applicability of the limitations and exceptions permit-
ted by the Berne Convention.
The WCT, as reflected in Article 10 read with the Agreed Statement, does not
limit the application of the three-step test solely to the limitations and excep-
tions to the right of reproduction as under Article 9(2) of BC. But similar
to Article 13 of TRIPS, WCT extends the application of the three-step test
to limitation and exceptions of all rights enshrined under the BC and WCT.
Moreover, it also extends the reach to the three-step to test to any new limi-
tations and exceptions that may arise in the future due to new technological
advancements.51
The WPPT, incorporates the three-step test under Article 16(2), which is
similar to Article 10(2) of WCT. The Agreed Statement concerning Article 10 of
WCT applies mutatis mundis to Article 16 of WPPT.52 Article 16 (1) of WPPT,
reproduces the principle enshrined in Article 15(2) of the RC, which reads,
(c)ontracting Parties may, in their national legislation, provide for the same
kinds of limitations or exceptions with regard to the protection of per-
formers and producers of phonograms as they provide for, in their national
legislation, in connection with the protection of copyright in literary and
artistic works.
Unlike TRIPS and WCT, WPPT does not incorporate the provisions of RC nor
does it require the application of provisions under RC by WPPT members.53
Though there was consensus in WPPT to upgrade protection guaranteed under
RC to performers and producers of phonograms by granting “the exclusive
right of authorizing the direct or indirect reproduction of their performances
fixed in phonograms [or of their phonograms], in any manner of form,”54 the
treatment of limitations and exceptions under WPPT, did not receive any spe-
cial attention or additional protection.

51. ibid. See also Hugenholtz (n 4).

52. Ricketson (n 26) 64.
53. ibid.
54. Article 7 of WPPT.

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