An analysis of the Three-Step-Test as a rule of thumb in the judicial protection of Intellectual Property rights

An analysis of the Three-Step-Test as a rule
of thumb in the judicial protection of
Intellectual Property rights
TAIEX Training Seminar on the Enforcement of Intellectual Property rights
Protection against piracy, illegal trade and counterfeiting
JHA 33457
European Commission & European Public Law Organization

by
Marinos Papadopoulos

Attorney-at-Law J.D., M.Sc., Managing Partner of

Patsis, Papadopoulos, Kaponi & Associates

Marinos Papadopoulos | URL: www.marinos.com.gr

Athens, June 29-30, 2009

The Three-Step-Test in International Conventions

The Berne Convention (article 9§2).
The TRIPS Agreement (article 13).
The WIPO Treaties (articles 10 & 16).



The Three-Step-Test criteria

Criterion 1: Limitations are allowed in certain
special cases.
Criterion 2: There may neither be a conflict
with the normal exploitation of the work.
Criterion 3: Nor an unreasonable prejudice to
the legitimate interests of the author (and/or
right-holder and/or user)



The Three-Step-Test criteria

The three criteria have always been
understood to be cumulative.
All three criteria of the three-step-test must
be deemed relevant tests deserving the
same interpretative effort.
Its three steps make it possible to approach
the core of copyright’s balance in stages.



The Three-Step-Test & The Fair Use Doctrine
Specified in section 107 of the U.S. Copyright
Act.
The 4 factors of the Fair Use doctrine are:
The purpose and character of the use, including
whether such use is of a commercial nature or is
for non-profit educational purposes.
The nature of the copyrighted work.
The amount and substantiality of the portion used
in relation to the copyrighted works as a whole.
The effect of the use upon the potential market for
or the value of the copyrighted work.



The Three-Step-Test: Criterion 1
Personal use justifies for a permitted exception in
law.
3 groups of users when analyzing the personal use:
Case 1: copyrighted material is used by individuals
in privacy solely for personal study, learning and
enjoyment.
operating within non-profit organizations and
public entities within the scope of their statutory
goals.
operating within for-profit organizations and
private entities within the scope of their statutory
goals.


The Three-Step-Test: Criterion 1, Case 1
copyrighted material is used by individuals in
privacy solely for personal study, learning and
enjoyment.
A legislator who exempts the use in privacy of
copyrighted material for personal use reconciles
the authors’ interest in the exploitation of their
works with the user’s interest in free pathways
through society’s landscape which allows the
participation in cultural life as well as the discovery
and development of one’s own creative
potential.




copyrighted material is used by individuals
operating within non-profit organizations and
public entities within the scope of their
statutory goals.
Non-profit organizations and public entities
involved in either the dissemination of knowledge
and culture and/or in the process of serving the
public interest in knowledge and culture within the
scope of their statutory goals, would potentially be
hindered from fulfilling their mission properly were
authors to exert control over their output on the
basis of the provisions of their exclusive rights
rendered in intellectual property law.




copyrighted material is used by individuals
operating within for-profit organizations and
private entities within the scope of their
statutory goals.
It makes sense NOT to include said case in the
limitations in law.
The economic activities of industrial undertakings
and the profit motive underlying uses of
copyrighted materials by individuals operating
within the context of for-profit organizations and
private entities are enough reasons to silence
arguments supporting a limitation in copyright law.




There cannot be a conflict with the normal
exploitation of the work.
the use of copyrighted material must not enter
into economic competition with all forms of
exploiting a work which have, or are likely to
acquire, considerable economic or practical
importance.
Concerns not only actual markets, but also
potential ones which might emerge in the future.




a limitation cannot unreasonably prejudice
the legitimate interests of the author.
This criterion is established by the following 3 elements:
It refers to interests rather than rights.
Only legitimate interests must be considered and
not every conceivable relevant concern.
Prejudices to the circle of legitimate interests are
permissible insofar as they are not unreasonable—
they do not harm the legitimate interests to an
unreasonable level.




A reference to the principle of
proportionality: if a limitation fulfils the criteria
1 and 2, said limitation is accepted to the
point that it favors the principle of
proportionality.
Depicts the core thinking in the intellectual
property discipline which is regulating with
the aim to strike proper balance among
interests of all the involved parties and not
only of authors and subsequent right-holders.



Signpost: The principle of proportionality

The last signpost in the intellectual property
field generally and the three-step-test rule
specifically is the widely accepted and
constitutionally safeguarded principle of
proportionality.



The Three-Step-Test: The principle of proportionality

If a proper balance between the concerns of
authors, subsequent right-holders and users is
to be struck, all the involved parties must
leave room for a balancing movement.
case Sabam v. s.a. Tiscali (Scarlet) District Court of
Brussels, June 29, 2007
case Productores de Música de España
(Promusicae) v. Telefónica de España S.A.U. C275/06, 2008 CELEX no 62006J0275 (Jan. 29, 2008)
of the European Court of Justice



The Three-Step-Test: The principle of proportionality

ECJ: …do not require the Member States to lay down, in a

situation such as that in the main proceedings, an obligation
to communicate personal data in order to ensure effective
protection of copyright in the context of civil proceedings.
However, Community law requires that, when transposing
those directives, the Member States take care to rely on an
interpretation of them which allows a fair balance to be
struck between the various fundamental rights protected by
the Community legal order.

ECJ: … when implementing the measures transposing those
directives, the authorities and courts of the Member States
must not only interpret their national law in a manner
consistent with those directives but also make sure that they
do not rely on an interpretation of them which would be in
conflict with those fundamental rights or with the other
general principles of Community law, such as the principle
of proportionality.



The Three-Step-Test: limits of private use

Limits in the meaning of private use are
subject to revision in consideration of
technological, societal as well as legal
developments in society.
Said limits are not fixed by law and/or judicial
precedent, but rather a court in front of
which a case is heard must consider widely
the circumstances of private use as they’ve
evolved in society and are affected by
technological means, societal ethics and the
existing legal framework.



The Three-Step-Test: interpretation

The three-step-test should not be interpreted in a
manner that jeopardizes an adequate solution
which balances the usually conflicting interests of
the author, the subsequent right-holders and
people’s interest in making use of a work in
Cyberspace.
The three-step-test should always be interpreted in
a manner that respects the legitimate interests of
third parties including interests deriving from
human rights and fundamental freedoms, interests
in competition notably on secondary markets,
and other public interests notably in scientific
progress and cultural, social or economic
development.



France’s unconstitutional step: the Three-Strike Law

On Wednesday, June 10, France’s
Constitutional Court ruled that the ThreeStrikes Law passed by the French Senate &
the National Assembly contravenes the
holiest of French documents, the Declaration
of the Rights of Man and Citizen of 1789. The
Constitutional Court ruled that cutting off
Internet access by the Hadopi agency without recourse to a court of law contravened three articles of the Declaration
of the Rights of Man, France’s fundamental
document setting out the rights of French
citizens, breaching rights to freedom of
expression and the presumption of
innocence.


Intellectual property vs. Real property

Real property: the law must both create an

incentive to produce and protect the right of
possession.

Intellectual property: the law need only to
create the incentive to produce.

The three-step-test must ensure that authors
have a sufficient incentive to produce works.



Intellectual property vs. Real property

The incentive to produce works is not
diminished by the non-commercial use of the
works when they become available online,
even if that online availability means that
their works acquire the traits of public goods
and/or works that are set available in the
commons, i.e. once online and freely
accessible for non-commercial use, they
become “non-excludable” and “nonrivalrous”.
It is questionable whether this reasoning is
applicable in all kinds of works.



An analysis of the Three-Step-Test as a rule
of thumb in the judicial protection of
Intellectual Property rights

Thank you!
The presentation is available through the bulletin
board of the URL: www.marinos.com.gr



An analysis of the Three-Step-Test as a rule of thumb in the judicial protection of Intellectual Property rights

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An analysis of the Three-Step-Test as a rule of thumb in the judicial protection of Intellectual Property rights