   
  
IP/C/W/663  
 
29 January  2020 
(20-0662) Page: 1/3 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original: English  
 
INTELLECTUAL PROPERT Y AND THE PUBLIC INT EREST:  
THE WTO TRIPS AGREEM ENT AND THE COPYRIGH T THREE -STEP TEST  
COMMUNICATION FROM S OUTH AFRICA  
The following communication, dated 24 January 2020 , is circulated at the request of the delegation 
of South Africa.   
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1  INTRODUCTION  
1.  The main purpose of this submission is to address the relationship between the World Trade 
Organization 's (WTO) Agreement on Trade -Related Aspects of Intellec tual Property Rights 
(TRIPS  Agreement) and copyright, as it relates to the three -step test on limitations and exceptions 
to copyright, with a view to clarifying the flexibilities to which Members are entitled, and, in 
particular, in fulfilling the principl es and objectives of the TRIPS Agreement as set out in Article 7 
and Article 8 of the Agreement.  
2.  A balanced interpretation of the copyright three -step test, contained in Article 13 of the 
TRIPS  Agreement, and predicated upon Article 9 .2 of the Berne Conven tion for the Protection of 
Literary and Artistic Works would ensure that WTO rules do not undermine Members ' policies to 
promote access to knowledge, culture and development, protect human rights and otherwise 
promote the public interest, including through  appropriate limitations and exceptions to copyright 
and related rights.  
3.  We note the contours of the three -step test, as articulated in Article 13 of the TRIPS Agreement, 
states that "Members shall confine limitations or exceptions to exclusive rights to c ertain special 
cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice 
the legitimate interests of the right holder ." 
4.  The objectives of the TRIPS Agreement as contained in Article 7 indicates that "protection sh ould 
contribute to the promotion of technological innovation and to the transfer and dissemination of 
technology, to the mutual advantage of producers and users of technological knowledge and in a 
manner conducive to social and economic welfare, and to a b alance of rights and obligations ." 
5.  The implementation of principles in Article 8 of the TRIPS Agreement provide Members with 
safeguards in formulating or amending their laws and regulations, to "promote the public interest in 
sectors of vital importance to  their socio -economic and technological development, provided that 
such measures are consistent with the provisions of this Agreement " and affording Members the 
right to adopt appropriate measures, provided that they are consistent with the provisions of t his 
Agreement, "to prevent the abuse of intellectual property rights by right holders or the resort to 
practices which unreasonably restrain trade or adversely affect the international transfer of 
technology ." 
6.  Flexibilities afforded under Article 40 of the  TRIPS Agreement to remedy anti -competitive 
practices in contractual licences that "may have adverse effects on trade and may impede the 
transfer and dissemination of technology " remain relevant and applicable in this regard.  IP/C/W/663  
 
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  7.  Access to information and know ledge is fundamental to achieve many objectives, including 
education and scientific progress. While recognizing the need to protect the legitimate interests of 
authors and other right holders, we note that the TRIPS Agreement has "room to manoeuvre " with 
respect to the implementation of its obligations, including in the area of promoting access to 
knowledge, culture, education and development as well as other overarching public policy objectives.  
2  APPLICABILITY OF THE  THREE -STEP TEST  
8.  Althoug h the relationship between the TRIPS Agreement and the three -step test for limitations 
and exceptions to copyright has not been the subject of in -depth scrutiny at the WTO, the Panel 
established to consider the U nited States - Section 110(5) Copyright Act case (WT/DS160/R) does 
provide some interpretation of Article 13 of the TRIPS Agreement in relation to Articles  11bis(1)(iii) 
and 11 (1)(ii) of the Berne Convention (1971). The panel found that the three -step test requests 
three separate, independent and cu mulative tests for copyright limitations and exceptions. There is 
disagreement with this interpretation among academic scholars and as is reflected in state practice. 
It would be useful to address the relationship between the TRIPS Agreement and the three -step test 
for limitations and exceptions to copyright in order to further clarify the flexibilities afforded to 
Members to fulfil their obligations in implementing the objectives and principles of the 
TRIPS  Agreement.  
9.  The limitations that Members may provi de pursuant to the provisions of the Berne Convention 
that have been incorporated into the TRIPS Agreement consist of so -called 'free use ' (i.e. the use of 
a protected work is without an obligation to request authorization or the payment of remuneration) 
and 'non-exclusive licences ' (use without authorization but with the obligation to pay equitable 
compensation). Outside of specific free uses, common law jurisdictions also recognize the notion of 
'fair use ' or 'fair dealing ', which covers various free uses  under international law. The use of privileges 
at a national level are generally based on the international copyright acquis. There are many 
examples of national exceptions and limitations resting on the international three -step test as can 
be found in th e copyright laws of parties to the Berne Convention, including for example reproduction 
for research or teaching purposes; privileges of libraries, archives or exemption of reproduction 
required for administrative, parliamentary or judicial proceedings. It  should be emphasized that fair 
use and fair dealing exceptions per se  are not in conflict with the international three -step test, 
including under the more specific approach that the TRIPS Agreement takes to the three -step test 
under Article 13.1 
10.  Samuelson  and Hashimoto observe the following: "…there is growing recognition that in an era 
of rapid technological change, flexible open -ended L&Es, such as fair use, can play a useful role in 
balancing the legitimate interests of rightsholders, subsequent creator s (such as fan fiction authors), 
and the public (such as in making backup copies of music) in regulating various uses of copyrighted 
works that do not have market -destructive effects. These days, legislatures simply cannot anticipate 
new uses of works in d igital form and decide which ones should be permitted through crafting of a 
specific exception. Applying fair use or a similar flexible doctrine can enable courts to weigh various 
factors in order to reach principled decisions.2 
11.  The above -mentioned paragra ph provides an important context to our ongoing discussion on 
the 1998 Work Programme on Electronic Commerce. In 1996, the three -step test was incorporated 
into the  WIPO  Copyright Treaty  (WCT) and  WIPO Performances and Phonograms 
Treaty  (WPPT),  both are co llectively referred to as the WIPO Internet treaties. The Diplomatic 
Conference that adopted the WCT and WPPT texts, adopted the following agreed statement in 
respect of Article 10 of the WCT, which applies mutatis mutandis to Article 16 of the WPPT: "It is 
understood that the provisions of Article 10 permit Contracting Parties to carry forward and 
appropriately extend into the digital environment limitations and exceptions in their national laws 
which have been considered acceptable under the  Berne Convent ion. Similarly, these provisions 
should be understood to permit Contracting Parties to devise new exceptions and limitations that 
are appropriate in the digital network environment. " 
 
1 See for example Pamela Samuelson and Kathryn Hashimoto "Is the U.S. Fair Use Doctrine Compatible 
with Berne and TRIPS Obligations? " pp. 1 - 22 at p.14. 
[https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3228052  accessed 24 January 2020].  
2 Ad pp. 14 – 15. IP/C/W/663  
 
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  12.  South Africa invites Members to contribute to this discussion and to share their national 
approaches and experiences. We also include a range of questions that would benefit our discussion 
of this very important topic.  
QUESTIONS:  
1. Does the three -step test constitute an indivisible whole to the extent that each of the 
three  steps are to be considered together and as a whole in a comprehensive overall 
assessment?  
2. What approaches have Members taken to reflect limitations and exceptions in their IP 
laws?  
 
 
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