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The Marrakesh Puzzle

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Abstract

This article analyzes the puzzle created by the 2013 Marrakesh Treaty in its provisions concerning the cross-border exchange of copies of copyrighted works made for use by persons who are “blind, visually impaired, or otherwise print disabled” (copies known as “accessible format copies”). The analysis should assist executive and legislative experts as they seek optimal methods for implementing the Treaty. The article provides an overview of the Treaty, notes its unique features, and examines in detail its provisions on the cross-border exchange of accessible format copies. The article discusses three possible sources for implementation tools – choice of law rules, the exhaustion doctrine, and labeling – and concludes that a suitable method of implementing the cross-border exchange provisions of the Treaty may consist of a combination of appropriately-selected rules for choice of applicable law and rules for labeling.

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Notes

  1. The Treaty will become effective 3 months after 20 countries ratify the Treaty or accede to the Treaty. Marrakesh Treaty, Art. 18. As of March 3, 2014, no country has ratified the Treaty. Contracting Parties – Marrakesh VIP Treaty, WIPO, http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=843 (accessed March 3, 2014).

  2. Marrakesh Treaty, Arts. 5, 6, and 9.

  3. See the Model Statute authored by Jonathan Band and Peter Jaszi. Jonathan Band and Peter Jaszi, “Model Statute for Implementation of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled”, available at: http://infojustice.org/wp-content/uploads/2013/09/MODEL-STATUTE-FOR-MARRAKESH-IMPLEMENTATION.pdf (accessed March 3, 2014).

  4. The Treaty follows the goals of “non-discrimination, equal opportunity, accessibility and full and effective participation and inclusion in society”, and “freedom of expression, including the freedom to seek, receive and impart information and ideas”. Marrakesh Treaty, Preamble.

  5. Dr. Ficsor suggests that with the adoption of the Marrakesh Treaty, “a quite troubled historical period of the international copyright relations seems to have ended”. Mihály J. Ficsor, “Commentary on the Marrakesh Treaty on Accessible Format Copies for the Visually Impaired” 1, available at: http://www.copyrightseesaw.net/archive/?sw_10_item=50 (accessed February 18, 2014).

  6. The information that leaked from the early ACTA negotiations about the inclusion of provisions on the enforcement of IP on the internet harmed ACTA’s chances of success, as various experts and the public at large expressed concerns about and opposition to the enforcement measures that were proposed in ACTA, and particularly to those measures that would have applied on the internet. Under the wave of public criticism that ensued, the negotiators removed the internet enforcement provisions from the draft ACTA – but this removal still did not save ACTA’s reputation.

    One treaty was concluded between the dates of the conclusions of ACTA and the Marrakesh Treaty – the Beijing Treaty on Audiovisual Performances. The Beijing Treaty was in the making for many years and some critics believe it was concluded because it was “low hanging fruit” that was picked when there was a need to demonstrate some positive developments in international IP negotiations at a time when the international IP community saw little prospect of negotiating other, more ambitious treaties. Whatever other incremental progress (other than the Beijing and Marrakesh Treaties) might have been achieved in international copyright negotiations in 2010–2014, that progress has received no publicity and has resulted in no additional international treaties.

    Commentators may argue that, as the Beijing Treaty did, the Marrakesh Treaty built on existing work – the WIPO-UNESCO Model Provisions on Exceptions or Limitations for the Visually Impaired, which was adopted in 1982, and various other documents. For an overview of the activities that predated the Marrakesh Treaty see Judith Sullivan, “Study on Copyright Limitations and Exceptions for the Visually Impaired” 12–14 (WIPO, Standing Committee on Copyright and Related Rights, SCCR/15/7, February 20 2007). For the draft texts that preceded the Treaty see “Previous Draft Treaty Texts”, Knowledge Ecology International, http://keionline.org/r2r/marrakesh/draft-texts (accessed August 15, 2014). Cf. Dr. Ficsor’s “Commentary”, in which he emphasizes the positive role that the two Treaties have played in the recent development of international IP law. M. Ficsor, supra note 5, pp. 3–4.

  7. Critics who perceived the negotiations of ACTA and the TPP Agreement (the Trans-Pacific Partnership Agreement) to be excessively secretive viewed the Marrakesh Treaty as a positive example to be followed in other international IP negotiations. See Letter of U.S. law professors and IP experts to the President of the United States, Members of Congress, and Ambassador Michael Froman, November 14, 2013, p. 1, available at: http://infojustice.org/wp-content/uploads/2013/11/Law-Professors-TPP-11142013.pdf (accessed February 18, 2014); De Beer (2013). See also Justin Hughes, “How The Marrakesh Treaty Was Negotiated”, Managing Intellectual Property, August 28, 2013, available at: http://www.managingip.com/Article/3248494/How-the-Marrakesh-Treaty-was-negotiated.html (accessed August 14, 2014): “For the IP community, the Marrakesh Treaty – and the process by which it was achieved – are important because they show that it is possible to overcome the extremely polarised IP debates we now see around the globe.” Sean Flynn, “Inside Views: WIPO Treaty for the Blind Shows That Transparency Can Work (And Is Necessary)”, Intellectual Property Watch, June 26, 2013, available at: http://www.ip-watch.org/2013/06/26/wipo-treaty-for-the-blind-shows-that-transparency-can-work-and-is-necessary/ (accessed August 15, 2014). Cf. M. Ficsor, supra note 5, p. 1 (commenting on complaints about the insufficient balancing of interests in international IP negotiations prior to Marrakesh).

  8. Marrakesh Treaty, Art. 1 and the Agreed Statement Concerning Article 5(1).

  9. Justin Hughes, “The Marrakesh Treaty for the Blind – and the Future of Global Copyright, The Media Institute, August 5, 2013, available at: http://www.mediainstitute.org/IPI/2013/080513.php (accessed August 15, 2014). As Professor Hughes mentions, some stakeholders have been concerned that the Treaty could open doors to further erosion of copyright through additional internationally mandated exceptions and limitations. See also, e.g., William New, “Negotiators, Stakeholders Tell Tale of WIPO Marrakesh Treaty Negotiation, Look to Implementation”, Intell. Prop. Watch (September 20, 2013), http://www.ip-watch.org/2013/09/20/negotiators-stakeholders-tell-tale-of-wipo-marrakesh-treaty-negotiation-look-to-implementation/ (accessed March 3, 2014); Kimberly Kindy, “Filmmakers’ Group Tries To Reshape Treaty That Would Benefit the Blind”, The Washington Post, June 22, 2013, available at: http://www.washingtonpost.com/politics/filmmakers-group-tries-to-reshape-treaty-that-would-benefit-the-blind/2013/06/22/f98e6130-d761-11e2-9df4-895344c13c30_story.html (accessed August 14, 2014).

  10. Marrakesh Treaty, Agreed Statement Concerning Article 5(4)(b), Art. 5(4)(b), footnote 8.

  11. As Dr. Ficsor points out, it would be a mistake to characterize “the Marrakesh Treaty as ‘the first treaty to deal with copyright limitations and exceptions’”. M. Ficsor, supra note 5, p. 3.

  12. Cf. WIPO-UNESCO Model Provisions on Exceptions or Limitations for the Visually Impaired, adopted in 1982. See M. Ficsor, supra note 5, p. 4. It is debatable whether the Marrakesh Treaty is the first treaty to mandate that countries introduce a particular exception to or limitation on copyright. Other treaties limit copyright by excluding particular subject matter from copyright protection (TRIPS Agreement, Arts. 9(2) and 10(2); Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”), Art. 2(8); WIPO Copyright Treaty, Arts. 2 and 5) and include other provisions limiting copyright protection in a particular manner (Berne Convention, Art. 10(1); WIPO Copyright Treaty, Art. 7(2)).

  13. Dr. Ficsor calls this “the reason for which the Treaty is truly exceptional and unique”. M. Ficsor, supra note 5, p. 10.

  14. The tradition of bilateral IP treaties is older than the tradition of multilateral international treaties.

  15. Paris Convention for the Protection of Industrial Property (“Paris Convention”), Arts. 4bis(1) and 6(3).

  16. Berne Convention, Art. 5(2); Paris Convention, Art. 6bis; TRIPS Agreement, Art. 16(2).

  17. The principle of national treatment is also designed to facilitate rights and remedies within each country.

  18. TRIPS Agreement, Arts. 51–60. Countries concluded treaties and adopted other international instruments that created unitary regional rights; however, these treaties and instruments do not concern copyright.

  19. Directive 2012/28/EU of the European Parliament and of the Council of 15 October 2012 on certain permitted uses of orphan works (“EU Orphan Works Directive”).

  20. According to the Directive, once a work is considered to be an orphan work under the conditions specified in the Directive (the conditions as implemented in the national laws of the Member States) in one Member State, the work will be considered an orphan work in other Member States as well (Art. 4). Once a work is considered an orphan work in the EU, potential cross-border access to that work from anywhere in the EU will be simplified as long as the access is provided by one of the types of organizations specified in the Directive, and as long as the organization acts while fulfilling the organization’s “public-interest missions”. The beneficiaries of the Orphan Works Directive are “publicly accessible libraries, educational establishments and museums, […] archives, film or audio heritage institutions and public-service broadcasting organisations, established in the Member States” acting to fulfill “their public-interest missions” (Art. 1(1)).

    The Member States must comply with the Directive by October 29, 2014. The EU Office for Harmonization in the Internal Market will assist in the mutual recognition of orphan-work status by recording information about orphan works in a database that the Office will establish and manage (Art. 3(6)).

  21. E.g., International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, Rome, 1961; WIPO Performances and Phonograms Treaty, 1996.

  22. Marrakesh Treaty, Art. 2(b). Dr. Ficsor refers to this characteristic of the Treaty as the “format-centric nature” of the Treaty. M. Ficsor, supra note 5, p. 6.

  23. Marrakesh Treaty, Art. 2(a) (emphasis added).

  24. While “literary and artistic works” is a term defined in Art. 2(1) of the Berne Convention, “form of text, notation, and/or illustration” is a new terminology. On Treaty scope limitations made during Treaty negotiations with respect to types of works see K. Kindy, supra note 9; Paige McClanahan, “US Film Industry Tries To Weaken Copyright Treaty for Blind People”, The Guardian, June 24, 2013, available at: http://www.theguardian.com/global-development/2013/jun/24/us-film-industry-copyright-blind (accessed August 15, 2014).

  25. Jonathan Band, “A User Guide to the Marrakesh Treaty” 9–11, available at: http://www.librarycopyrightalliance.org/bm~doc/user-guide-marrakesh-treaty-0913final.pdf (accessed February 19, 2014). See infra at section 3 for a comment on these descriptions of Arts. 5 and 6.

  26. As for the difficulties with Treaty interpretation, in the absence of official minutes from or other records of the complicated Treaty negotiations, interpretation of the Treaty must rely on “the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose”. Vienna Convention on the Law of Treaties, Art. 31(1). M. Ficsor, supra note 5, p. 7.

  27. Additionally, EU experts will have to implement the Treaty into the acquis communautaire once the European Union signs the Treaty. On April 14, 2014, “[t]he Council approved the signing, on behalf of the EU, of the Marrakesh Treaty to facilitate access to published works for blind and visually impaired persons”. Press Release, 3308th Council Meeting, Press 218, 8762/14, April 14, 2014.

  28. Cf. J. Sullivan, supra note 6, p. 119 (“It does […] seem that [the cross-border exchange] issue needs to be addressed, but it is much more difficult to decide what the solution should be.”).

  29. On the situation leading up to the conclusion of the Treaty see, e.g., Brook K. Baker, “Challenges Facing a Proposed WIPO Treaty for Persons Who are Blind or Print Disabled” (Northeastern University School of Law Research Paper No. 142-2013), available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2267915 (accessed March 3, 2014); K. Kindy, supra note 9; P. McClanahan, supra note 24; Kongolo (2012). On opposition to the Treaty see Harpur and Suzor (2013).

  30. Marrakesh Treaty, Art. 5.

  31. The Treaty uses the language “to make an accessible format copy of a work”, which refers to both (1) the conversion into an accessible format (i.e. creating a master copy in an accessible format), and (2) the reproductions of the copy. Marrakesh Treaty, Art. 4(2)(a). For simplification this article uses the term “making” to cover both the act of conversion of a work into an accessible format copy and the further reproductions of the copy.

  32. By “supply” the Treaty refers to acts that affect the right of distribution, the right of making available to the public, and the right of public performance. Marrakesh Treaty, Art. 4(1) and (2)(a).

  33. “[C]onsiderable resources are required for [the] effort of making works accessible to [visually impaired] persons.” Marrakesh Treaty, Preamble. See, e.g., Statement of Tuck Tinsley III, Ph.D., President, American Printing House for the Blind, Inc., NII Copyright Protection Act of 1995: Hearing on H.R. 2441 and S. 1284 Before the Subcommittee On Courts and Intellectual Property, 104th Cong., Part 2, p. 171 (speaking about converting an elementary math textbook to Braille: “[E]diting and translating a visual textbook […] can take up to a year to get it in understandable braille format.”).

  34. On the transaction costs associated with the production of an accessible format copy see, e.g., Statement of Tuck Tinsley III, Ph.D., supra note 33, p. 172.

  35. See infra the definition of “authorized entities”.

  36. Collaterally, the implementation of the Treaty may have the effect of encouraging copyright owners to provide access to their works on reasonable terms – and perhaps earlier than they would have provided otherwise. M. Ficsor, supra note 5, p. 26. See also infra section 3. Cf. Statement of Tuck Tinsley III, Ph.D., supra note 33, p. 172 (suggesting that the long period necessary to secure copyright permissions and licenses might be the greatest hurdle to the production of accessible format copies in some instances).

  37. On the insertion of references to the three-step test during Treaty negotiations see K. Kindy, supra note 9; Catherine Saez, “WIPO Negotiators Reach Breakthrough On ‘3-Step Test’ In Treaty For Blind”, Intellectual Property Watch, June 24, 2013, available at: http://www.ip-watch.org/2013/06/24/wipo-negotiators-reach-breakthrough-on-3-step-test-in-treaty-for-blind/ (accessed August 15, 2014).

  38. TRIPS Agreement, Art. 13; United States – Sec. 110(5) of the U.S. Copyright Act; Report of the Panel, WT/DS160/R, June 15, 2000. See also the Marrakesh Treaty, Art. 11. On the history and interpretation of the three-step test see, e.g., Christopher Geiger, Daniel Gervais and Martin Senftleben, “The Three-Step Test Revisited: How to Use the Test’s Flexibility in National Copyright Law”, Program on Information Justice and Intellectual Property, Research Paper No. 2013-04, available at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2356619 (accessed March 3, 2014).

  39. Throughout this article the term “limitations and exceptions under the Treaty” refers to the limitations and exceptions as implemented in national legislations in accordance with Treaty requirements.

  40. Marrakesh Treaty, Art. 2(a). The definition covers works “published or otherwise made publicly available in any media”. See also supra note 24.

  41. Id., Art. 2(b).

  42. See infra for potential interpretation difficulties with the term “accessible format copies”.

  43. Marrakesh Treaty, Art. 3.

  44. Id., Art. 2(c).

  45. Id., Art. 2(c). See below for further obligations that authorized entities must meet.

  46. Id., Art. 4(1)(a).

  47. Id., Art. 4(1)(b). This article refers to the right to make available to the public with the understanding that in some countries the right at issue may be the right to perform publicly.

    Although the Treaty also calls for limitations and exceptions to permit the making of changes to the original work to the extent necessary for the creation of an accessible format copy, it does not seem that these limitations and exceptions would affect the right to prepare a derivative work (the adaptation right) because the necessary changes should not likely result in the creation of a derivative work (Art. 4(1)(a), last sentence). See also id., Art. 2(b), second sentence; M. Ficsor, supra note 5, p. 20.

  48. According to J. Sullivan, supra note 6, p. 9, in 2007, “57 countries ha[d] been found that ha[d] specific provisions that would permit activity to assist visually impaired people unable to access the written word, or to assist people with a print disability more generally, by making a copyright work available to them in an accessible form”.

  49. Marrakesh Treaty, Arts. 4(3), 10, and 11. See also supra note 37.

  50. See also id., Art. 7 (on technological measures).

  51. Id., Art. 4(2)(a).

  52. Id., Art. 4(2)(b). See also Art. 7 (on technological measures).

  53. Id., Art. 4(4). A signatory country must make a notification that it intends to avail itself of the possibility (Art. 4(4), second sentence).

  54. Id., Art. 4(5).

  55. Id., Arts. 2(c) and 8.

  56. Id., Art. 2(b).

  57. Audiobooks may be made in formats specifically designed to be accessible for the visually impaired; such formats include or facilitate special navigation features. See, e.g., “Library of Congress Braille and Talking-Book Program Releases Bok Download App through Apple”, NLS Press Release, September 24, 2013, available at: http://www.loc.gov/nls/newsreleases/archive/2013-09-24.html (accessed March 3, 2014); “DAISY Standard”, Daisy Consortium, http://www.daisy.org/daisy-standard (accessed March 3, 2014). While audiobooks in such special formats are produced specifically for beneficiaries, the audiobooks could theoretically be used by non-beneficiary persons with proper equipment as well. Access to copies in such special formats is then regulated through limitations on the access to the equipment.

    As for the use of Braille, according to a document published by the American Council of the Blind in 2002, “[g]enerally, a significant number of individuals who are legally blind [in the United States] find large print or audio texts helpful, while some 8–10 percent of the group use braille as a reading medium”. Jennifer Sutton, “A Guide to Making Documents Accessible to People Who Are Blind or Visually Impaired”, American Council of the Blind, 2002, p. 6, available at: http://sabeusa.org/user_storage/govoter/ResourceClearinghouse/PDF/A%20Guide%20to%20Making%20Documents%20Accessible%20to%20People%20Who%20are%20Blind%20or%20Visually%20Impaired.pdf (accessed March 3, 2014). More people using Braille may live in developing countries, where 90 % of the world’s visually impaired live. “Visual Impairment and Blindness”, World Health Organization, updated October 2013, http://www.who.int/mediacentre/factsheets/fs282/en/ (accessed March 3, 2014).

  58. See also Roos (2005) (commenting on the similar phrase “[a format …] which is exclusively for use by blind or other persons with disabilities” in the U.S. Copyright Act, 17 U.S.C. §121(d)(4)(A): “The phrase … is puzzling, particularly in relation to digital text. One wonders whether the ‘exclusive use’ requirement refers to the intended use of the materials or whether it suggests that the medium itself must, objectively speaking, lend itself to such exclusive use only. The latter interpretation would be downright nonsensical, given the extent to which digital text can nowadays be accessed by way of not only refreshable Braille displays, but synthetic voice also.” (p. 58).

    Cf. M. Ficsor, supra note 5, pp. 14–15 (suggesting that the Treaty definition covers only copies “that may only become accessible to the visually impaired through making specific alternative format copies” and not copies that “are ab initio accessible equally” to beneficiary and non-beneficiary persons). Although copies may be created to serve only beneficiary persons, if non-beneficiary persons can perceive the format of the copies there is nothing in the physical design of the copies that will prevent their use by non-beneficiary persons. See also J. Band, supra note 25, p. 5.

  59. Marrakesh Treaty, Art. 2(a). See infra at Sec. 4.

  60. Id., Art. 2(c).

  61. Id., Preamble.

  62. For a discussion of the need for a cross-border exchange of accessible format copies see, e.g., Yun (2012).

  63. M. Ficsor, supra note 5.

  64. M. Ficsor, supra note 5, p. 5.

  65. M. Ficsor, supra note 5, p. 5 (emphasis deleted).

  66. The Treaty “mandates” the exceptions and limitations only for countries that sign and ratify the Treaty, which should be countries that voluntarily adopt the Treaty and therefore voluntarily introduce the exceptions and limitations; in these cases no “mandating” would seem to be necessary to comply with the Treaty. True “mandating” occurs when countries are pressured to sign and ratify the Treaty, for example, as part of their accession to the European Union or to other organizations. Additionally, in some signatory countries accession to the Treaty may be used in national legislative processes to force the acceptance of the agenda of the exceptions and limitations over domestic opposition. E.g., Dinwoodie (2000): “The relationship [of national, regional, and international developments] is increasingly complex and multidirectional.”

  67. The term is not a Treaty term; the term is used in this article for the simplification of the analysis that follows. The term as used here has no relation to “source country” as used in Sec. 104A of the U.S. Copyright Act (17 U.S.C. §104A(h)(8)) nor to “country of origin” as used in the Berne Convention, Art. 5(4).

  68. The term is not a Treaty term; the term is used in this article for the simplification of the analysis that follows.

  69. On the costs of producing accessible format copies and the potential cost savings if cross-border exchange is facilitated see J. Sullivan, supra note 6, pp. 47 and 119.

  70. J. Band, supra note 25.

  71. J. Band, supra note 25, pp. 9–11.

  72. “Contracting Parties shall provide that … [an] accessible format copy may be distributed or made available by an authorized entity to a beneficiary person or an authorized entity in another Contracting Party.” Marrakesh Treaty, Art. 5(1).

  73. See infra for further limitations applicable to some countries.

  74. Id.

  75. Id.

  76. On interpretation of the Treaty see supra note 26.

  77. Dr. Ficsor agrees with this narrow interpretation and suggests that “pursuant to operation of law” may refer to copies of works that are not protected by copyright because of unprotectable subject matter. M. Ficsor, supra note 5, p. 29.

  78. M. Ficsor, supra note 5, p. 27.

  79. M. Ficsor, supra note 5, p. 27.

  80. E.g. on amendments that will be necessary to implement the cross-border exchange provisions in Australia see P. Harpur and N. Suzor, supra note 29, p. 769.

  81. See supra the previous section of this article.

  82. Marrakesh Treaty, Arts. 5(3), 5(4), 10, and 11.

  83. Article 5(2) does not provide a template that would lead to a complete implementation of the cross-border exchange system envisioned by the Treaty. See infra at section 4 for a discussion of Art. 5(2).

  84. For the description of the limited number of countries that Art. 5(4) concerns see M. Ficsor, supra note 5, p. 32.

  85. Article 5(4)(a) seems to place the obligation on the authorized entities to ensure that the limitations concerning the particular purpose and territory are met. However, given the provision’s reference to compliance “with its own legal system and practices”, it is plausible that the Treaty in this case is referring to the obligation of a country (“a Contracting Party”). Article 5(4)(a) (emphasis added). See also M. Ficsor, supra note 5, p. 33.

  86. Unfortunately, the provisions of Art. 5(4)(a) and (b) refer to countries generally as “contracting parties” without specifying whether the provisions concern the source countries or the destination countries or both. Article 5(4) begins by referring in paragraph (a) to “an authorized entity …[that] receives accessible format copies pursuant to Article 5(1)” without clarifying whether it means the entity in the source country or the entity in the destination country; both entities are mentioned in Art. 5(1) and both at some point “receive […] accessible format copies” (the entity in the source country receives copies from a manufacturer or another authorized entity, the entity in the destination country receives copies from the authorized entity in the source country). However, it is possible that Art. 5(4) can be (and perhaps was intended to be) interpreted as applying to both the source country and the destination country; note that the original destination country can become a source country when accessible format copies are imported and then intended to be exported further from the original destination country to another destination country. In any event, the countries covered by Arts. 4(a) and (b) should be the destination countries from which further exportations are impermissible.

  87. For the definition of the term “national exhaustion” see infra at section 6.

  88. E.g. TRIPS Agreement, Arts. 51–59.

  89. Marrakesh Treaty, Art. 6, fn. 10, Agreed Statement Concerning Article 6.

  90. Id., Art. 9(1) and (2).

  91. See also J. Sullivan, supra note 6, p. 120.

  92. Marrakesh Treaty, Art. 4(2)(a)(i).

  93. Id., Arts. 2(c)(ii) and 4(2)(a)(iii).

  94. Id., Art. 5(2).

  95. Id., Art. 4(2)(a).

  96. For further limitations for some countries see supra at section 3.

  97. Trimble (2012, 586 ff.).

  98. Id.

  99. This additional level of verification may fall within the scope of the Agreed Statement Concerning Article 5(2). Marrakesh Treaty, Art. 5(2), fn. 8. See, e.g., NLS: That All May Read, National Library Service for the Blind, http://www.loc.gov/nls/signup.html (accessed March 8, 2014); Certifying Authority, National Library Service for the Blind, http://www.loc.gov/nls/eligible.html (accessed March 8, 2014).

  100. For instance, authorized entities in the destination countries could provide beneficiaries in the destination countries with unique codes and/or user names and passwords (see, e.g., the certification system of the National Library Service for the Blind in the United States, supra note 99) that would permit the beneficiaries to access websites offering accessible format copies from entities in the source countries, provided that the definition of beneficiaries coincides in the source countries and the destination countries (see infra for choice-of-law aspects of the implementation of the Treaty). Of course, this solution is not immune to misuse; however, the solution might bring more reliable results than self-reporting by users. On self-reporting by users see M. Trimble, “The Future of Cybertravel”, supra note 97, pp. 592–593.

  101. E.g. Regulation (EC) No. 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II). For a discussion of flexibilities and constraints that countries face when they shape their national choice-of-law rules see Trimble (2015).

  102. Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 90–92 (2d Cir. 1998).

  103. Id., p. 91; Regulation (EC) No. 864/2007, supra note 101, Art. 8(1).

  104. E.g. Ricketson and Ginsburg (2005).

  105. E.g. Goldstein and Hugenholtz (2010). For a discussion of the debate see also Strömholm (2010); Robert Brauneis, “National Treatment in Copyright and Related Rights: How Much Work Does It Do?” 27, GW Legal Studies Research Paper No. 2013-103 (2013).

  106. For a discussion of the effects that the territoriality principle has on choice-of-law rules see M. Trimble, “Advancing National Intellectual Property Policies”, supra note 101. See also Goldstein and Hugenholtz (2012).

  107. E.g. Portuguese Civil Code, Art. 48.

  108. E.g. Law of the People’s Republic of China on the Laws Applicable to Foreign-Related Civil Relations, Art. 48.

  109. Itar-Tass Russian News Agency v. Russian Kurier, supra note 102, p. 91.

  110. Whether acts are deemed to have occurred in a country depends on the localization of the acts. See infra.

  111. See supra at section 2.

  112. This determination is necessary for two reasons: first, to assess whether the authorized entity meets the requirements of the exceptions and limitations under the Treaty, and second, to determine whether any border measures concerning exportation should be taken (if the source country has border measures that apply to exportation (see supra at section 3).

  113. See supra note 112 for the reasons it will be necessary in the source country to determine the lawfulness of the acts that occur in the destination country.

  114. On problems associated with the application of foreign law in general see, e.g., T.M. De Boer, “Facultative Choice of Law: The Procedural Status of Choice-of-Law Rules and Foreign Law” 304–307 and 317–322, Recueil des Cours, Hague Academy of International Law (1996).

  115. E.g. see supra at section 3 on border measures applying to exportation.

  116. It is more likely that the discrepancy in the status of the copies would result from different interpretations of beneficiaries and authorized entities in the source country and the destination country rather than from a disagreement about which formats are “accessible formats”.

  117. Supra note 106.

  118. M. Trimble, “Advancing National Intellectual Property Policies”, supra note 97.

  119. See supra section 2 for the three-step test requirements.

  120. Marrakesh Treaty, Art. 2(c)(ii) and (iii).

  121. See infra Conclusions for a note on potential direct applicability of the Treaty.

  122. According to the chief U.S. negotiator of the Treaty, Professor Justin Hughes, the language of Art. 5(5) was drawn directly from Art. 6 of the TRIPS Agreement and was “intended to signal the same level of separation between the treaty’s obligations and any resolution of the question of international exhaustion, a very controversial issue among the different delegations”. Email from Justin Hughes to Marketa Trimble (August 13, 2014) (on file with author).

  123. Marrakesh Treaty, Arts. 4(3), 5(3), 5(4), 10, 11, and 12.

  124. 17 U.S.C. §109(a).

  125. Sullivan points out that in some countries exhaustion is triggered only by sales “by or with the consent of the owner of the rights”. J. Sullivan, supra note 6, p. 63. In the United States, the first lawful sale of a lawful copy exhausts copyright. 17 U.S.C. §109(a).

  126. E.g. Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs (codified version), Art. 4(2); Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society, Art. 4(2). Because of difficulties in the interpretation of the U.S. Copyright Act, the United States seemed for a time to have a split rule, with the principle of international exhaustion applying to U.S.-made copies and the principle of national exhaustion applying to foreign-made copies. In 2013 the U.S. Supreme Court interpreted the U.S. Copyright Act to provide for international exhaustion of copyright regardless of the place of manufacture of the copies. Kirtsaeng v. John Wiley and Sons, Inc., 133 S.Ct. 1351 (2013).

    For a recent overview and analysis of various countries’ implementations of the exhaustion doctrine see Shubha Ghosh, “The Implementation of Exhaustions Principles: Lessons from National Experiences”, University of Wisconsin Legal Studies Research Paper, No. 1248, (February 3, 2014), available at: http://ssrn.com/abstract=2390232 (accessed February 24, 2014).

  127. TRIPS Agreement, Arts. 11 and 14(4); WIPO Copyright Treaty, Art. 7; Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs (codified version), Art. 4(2); 17 U.S.C. §109(b) (commercial “rental, lease, or lending”).

  128. UsedSoft GmbH v. Oracle, CJEU, C-128/11, July 3, 2012.

  129. “[T]he downloading of a copy of a computer program and the conclusion of a user licence agreement for that copy form an indivisible whole. Downloading a copy of a computer program is pointless if the copy cannot be used by its possessor. […] It makes no difference, in a situation such as that at issue in the main proceedings, whether the copy of the computer program was made available to the customer by the rightholder concerned by means of a download from the rightholder’s website or by means of a material medium such as a CD-ROM or DVD.” Id., paras. 44 and 47. After the CJEU decision in UsedSoft at least one European court held that the exhaustion principle does not apply to digital copies of books (e-books). Bielefeld District Court (Landgericht), 4 O 191/11, March 5, 2013.

  130. DMCA, Sec. 104 Report, U.S. Copyright Office, August 2011, p. xx, available at: http://www.copyright.gov/reports/studies/dmca/sec-104-report-vol-1.pdf (accessed February 24, 2014). In a 2013 decision the U.S. District Court for the Southern District of New York rejected the proposition that exhaustion under the current U.S. Copyright Act applied to the digital copies at issue in the case because the digital copies were the result of unlawful reproduction. Capitol Records, LLC v. ReDigi Inc., 934 F. Supp.2d 640, 655–656 (S.D.N.Y. 2013).

  131. See supra at section 3 for the narrow interpretation of the term “pursuant to operation of law” and the resulting limitation on the subject of the exceptions and limitations under the Treaty.

  132. Judith Sullivan predicted that the implementation of a cross-border exchange “may be particularly complicated where countries do not provide international exhaustion of rights”, J. Sullivan, supra note 6, p. 11.

  133. EU Orphan Works Directive, Art. 4. See also supra note 20.

  134. Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society, Art. 3(3).

  135. “A digital watermark is information that is imperceptibly and robustly embedded in the host data such that it cannot be removed. A watermark typically contains information about the origin, status, or recipient of the host data”. Hartung and Kutter (1999).

  136. The U.S. Copyright Act requires a special notice to be affixed to copies and phonorecords in a “specialized format”. 17 U.S.C. §121(b)(B).

  137. For a discussion of accessible formats see supra notes 56–58 and the accompanying text.

  138. J. Band and P. Jaszi, supra note 3, p. 1 (proposing an approach to implementation that “may be the most politically feasible for countries that do not already have an exception for the print disabled in domestic law”).

  139. J. Sullivan, supra note 6, pp. 122–123. “Licensing might be a better approach to deliver international exchange of accessible formats.” Id., p. 135.

  140. E.g. TacRead, Dell Social Innovation Challenge, http://www.dellchallenge.org/projects/tacread (accessed March 3, 2014); Denise Chow, “12-Year Old Invents Braille Printer Using Lego Set”, livescience.com, February 18, 2014, http://www.livescience.com/43455-lego-braille-printer.html (accessed March 3, 2014).

  141. J. Sullivan, supra note 6, pp. 129–130 (discussing “built-in” accessibility).

  142. M. Ficsor, supra note 5, p. 2; Catherine Saez, “Miracle in Marrakesh: ‘Historic’ Treaty for Visually Impaired Agreed”, Intellectual Property Watch, June 26, 2013, available at: http://www.ip-watch.org/2013/06/26/miracle-in-marrakesh-historic-treaty-for-visually-impaired-agreed/ (accessed August 15, 2014).

References

  • De Beer J (2013) Applying best practice principles to international intellectual property lawmaking. IIC 44(8):884–901 898

    Article  Google Scholar 

  • Dinwoodie GB (2000) A new copyright order: why national courts should create global norms. Univ Pa Law Rev 149:469 480–481, 499

    Article  Google Scholar 

  • Goldstein P, Hugenholtz B (2010) International copyright: principles, law, and practice 129

  • Goldstein P, Hugenholtz PB (2012) International Copyright: Principles, Law, and Practice, 2nd edn. Oxford University Press, Oxford, pp 97–101

  • Harpur P, Suzor N (2013) Copyright protections and disability rights: turning the page to a new international paradigm. UNSW Law J 36:745 761–768

    Google Scholar 

  • Hartung F, Kutter M (1999) Multimedia watermarking techniques. In: Proceedings of the IEEE, vol 87, no. 7, p 1079

  • Kongolo T (2012) Towards an international legal instrument on exceptions and limitations to copyright for visually impaired persons/persons with print disabilities: current international negotiations. EIPR 34:823

    Google Scholar 

  • Ricketson S, Ginsburg JC (2005) International copyright and neighbouring rights: the Berne convention and beyond. § 20.08 2: 1297–1298 (2d ed 2005)

  • Roos JW (2005) Copyright protection as access barrier for people who read differently: the case for an international approach. IFLA J 31:52

    Article  Google Scholar 

  • Strömholm S (2010) Copyright and the conflict of laws 21

  • Trimble M (2012) The future of cybertravel: legal implications of the evasion of geolocation. Fordham Intell Prop Media Entertain Law J 22:567

    Google Scholar 

  • Trimble M (2015) Advancing national intellectual property policies in a transnational context. Md Law Rev 74 (forthcoming)

  • Yun CTH (2002) Moving towards a more inclusive copyright regime for the visually impaired. Sing Acad Law J 24:433 439–440

    Google Scholar 

Download references

Acknowledgments

The author thanks JUDr. Adela Faladova and Professor Justin Hughes for their comments and suggestions; Andrew Martineau of the UNLV Wiener-Rogers Law Library for his excellent research support; and Gary A. Trimble for his valuable editing advice.

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    Marketa Trimble (Associate Professor of Law)

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Trimble, M. The Marrakesh Puzzle. IIC 45, 768–795 (2014). https://doi.org/10.1007/s40319-014-0252-5

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