[A2k] Letter from Profs. Peter Jaszi, Michael Carroll, and Sean Flynn to USTR on Limitations and Exceptions to Copyright in the TPP

Michael Palmedo mpalmedo at wcl.american.edu
Sat Sep 8 07:37:14 PDT 2012






September 8, 2012

Ambassador Ronald Kirk

Office of the United States Trade Representative

600 17th Street NW

Washington, DC 20508

rkirk at ustr.eop.gov


Dear Ambassador Kirk: 

We appreciate having had the opportunity to meet recently with members
of the Administration regarding the position the United States has taken
concerning limitations and exceptions in copyright law as part of the
Intellectual Property chapter of the proposed Trans Pacific Partnership
Agreement (TPP).  We write to follow up by expressing our views on
language the United States could propose that we believe would help it
answer some of the criticisms that the U.S. position is insufficiently
attentive to the public interest.

While we appreciate the time that Administration officials were able to
set aside for a private meeting, we continue to believe that setting
substantive international intellectual property obligations through the
closed door negotiating process developed for the negotiation of trade
tariff and quota concessions is antithetical to the democratic values
our country holds dear, as well as to the public interest concerns that
intellectual property policy should promote. Without the ability to read
the actual U.S. proposals for the TPP, we cannot provide specific views
to the Government or to the public on the details of the proposals and
their potential implications for public interest concerns. We have made
these points before (see http://infojustice.org/archives/21137), and
without belaboring the point, we simply state here our opinion that the
Administration's response to these procedural concerns has not been
satisfactory. All international intellectual property law making should
be conducted through public and transparent processes. 

Pursuant to meetings with multiple members of the U.S. government on its
copyright proposals in the TPP negotiation, we have come to the
following understandings with regard to the U.S. position: 

*         Consistent with other Free Trade Agreements, the U.S. proposal
would likely "confine" limitations and exceptions to exclusive rights
under copyright "to certain special cases which do not conflict with a
normal exploitation of the work, performance, or phonogram, and do not
unreasonably prejudice the legitimate interests of the right holder."
(Chile-US FTA). This language, on its face, would apply to limitations
and exceptions that are currently not subject to the similarly worded
three step test in Article 9 of the Berne Convention for the Protection
of Literary and Artistic Works.  The United States considers, however,
that these so-called Berne "small exceptions" for quotations and other
purposes are in compliance with the three-step test in its TPP proposal,
were it to be applied to them. 

*         The United States intends its proposals in the TPP and other
trade agreements to be fully consistent with the World Intellectual
Property Organization Internet Treaties (i.e. the WIPO Copyright Treaty
and the WIPO Performances and Phonograms Treaty), including all of the
Agreed Statements. The U.S. specifically affirms and supports the Agreed
Statement to WCT article 10, reading:

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 Convention. Similarly, these
provisions should be understood to permit Contracting Parties to devise
new exceptions and limitations that are appropriate in the digital
network environment. 

It is also understood that Article 10(2) neither reduces nor extends the
scope of applicability of the limitations and exceptions permitted by
the Berne Convention

*         The goal of the United States in proposing an obligation in
the TPP concerning limitations and exceptions is not to further limit
policy discretion to devise and implement limitations and exceptions at
the national level that comply with the existing multilateral treaties
on copyright, but rather to expand this discretion through a new
provision that would oblige TPP Members to "seek to achieve balance"
through adoption of limitations and exceptions.  

*         The United States is not categorically opposed to the adoption
of Agreed Statements as part of the TPP, although it has not done so for
other free trade agreements, and it does not have a position on this
matter at present. The more common model would be to include any agreed
interpretations in the text, e.g., through footnotes. 

*         The United States proposed three-step test would apply only to
limitations and exceptions to exclusive rights granted to copyright
owners rather than to provisions that delineate the scope of such
rights. For example, the absence of an exclusive right of private
performance of a copyrighted work in U.S. law would not be a limitation
or exception subject to the three-step test. 

*         The United States takes the position that nothing in existing
U.S. copyright law, as interpreted by the federal courts of appeals,
would be inconsistent with its proposed three-step test. This would
include, for example, the transformative use standard recognized in
cases such as Bill Graham Archives v. Dorling Kindersley Publishing,
Inc., 448 F.3d 605 (2d Cir. 2006) and the holding in Cartoon Network, LP
v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008), concerning the
definition of a "copy." 

*         It is not the intent of the United States that the
Investor-State provisions of the TPP would apply to provide causes of
action for investors through the intellectual property chapter that
could be used to appeal to an international tribunal fair use or other
interpretations of the U.S. Copyright Act by U.S. courts. Compliance
with intellectual property obligations in international agreements has
been a matter of state-to-state consultation and dispute resolution, and
the United States does not intend to alter that process in the TPP. 

*         The United States intends for provisions that use language
from the U.S. Copyright Act in existing bilateral Free Trade Agreements
to which the United States is a party, and in the TPP, to be interpreted
as they have been by federal courts in the United States. For example,
the safe harbor for internet service providers in other FTAs applies
only applies to "storage" of information at the direction of a user. But
U.S. interpretations of the this same language apply the safe harbor
beyond the narrow and literal issue of storage to a broader range of
user activity, including, for example, the dissemination of information
using the network. It is not the intent of the United States to limit
any Party's national safe harbor to one that is literally restricted
only to "storage."  

*         The United States describes its proposals and past FTA
language as being "consistent with," and as "coloring within the lines
of," U.S. law, even when its proposals constrain Congressional choices
on matters that are currently the subject of discussion or concern. For
example, the United States has promoted restrictions on parallel
importation of copyrighted works, even though such restrictions are not
expressly provided in the U.S. Copyright Act, are the subject of a U.S.
Supreme Court case in Kirtsaeng v. John Wiley & Sons, 654 F.3d 210 (2d
Cir. 2011) (cert. granted), and, in the final assistance, may be subject
to Congressional action. The United States has also obtained obligations
in some FTA's, such as the U.S.-Colombia Free Trade Agreement, to
prohibit adoption of statutory licensing for the retransmission over the
Internet of broadcast television signals, even though the U.S. Copyright
Act currently contains such licenses for other media (i.e. cable and
satellite television), and Congress has held hearings on the potential
desirability of similar licenses for internet service providers. Some
argue that deciding an open policy question in an FTA is acceptable
because Congress can always change the law in ways that violate our
international agreements, or that its assent to previous Free Trade
Agreements is the equivalent of deciding the issue as a matter of
national policy, notwithstanding the provisos in FTA implementing
legislation that assert that the obligations therein make no change to
U.S. law.

These understandings may be helpful in crafting additional language in
the TPP that more fully protects the public interest that copyright law
is meant to promote and that recognizes that Congress is better suited
to address undecided policy questions concerning the balance of
interests between copyright owners and the public. For example, the
following types of proposals would appear to be fully consistent with
the U.S. position as described above, and would help the U.S. proposal
appear more sympathetic to public interest concerns:

*         Stating that nothing in the TPP, including in the crafting of
its three-step test, further limits Parties' discretion to implement
limitations and exceptions that comply with the existing multilateral
treaties on copyright, including Berne, WCT and WPPT, including the
Agreed Statements to those instruments. 

*         Making clear that the so-called "small exceptions" in Berne
are not subject to, or are fully compliant with, the proposed three-step
test and that nothing in the TPP further restricts a Party's right to
adopt such exceptions. 

*         Making clear that the three-step test does not apply to
definitions of the scope of rights, as opposed to limitations of an
exclusive right already defined. 

*         Including express protections for limiting principles in the
interpretation of U.S. law, such as the interpretation of the fair use
doctrine in U.S. law in cases such as Bill Graham Archives, and the
interpretation of a "copy" in Cartoon Network.

*         Crafting appropriate exceptions from application of the
Investor-State dispute provisions to ensure that there is no private
cause of action in an international dispute resolution forum for
investors to "appeal" interpretations of limitations and exceptions and
other intellectual property substantive law by national courts under the
guise that such interpretations work a "taking" of the investor's

*         Clarifying that if the TPP or any other trade agreement
implements language identical to that in the U.S. Copyright Act, the
instrument will define such language to give effect to the
interpretation given by the federal courts in the United States, at
least as of the time the agreement enters into force.

Finally, we would like to register our concern that the Administration
may be proposing restrictions on domestic policy options on topics under
current discussion and debate on which Congress should act in the first
instance. This includes, as discussed above, areas such as parallel
importation and the possibility for statutory licenses for internet
retransmission. Such standards restrict Congressional options in the
face of currently open questions and interpretations, and the
justification that Congress can always choose to enact national
legislation that overrides our international legal obligations is
inadequate. The fact that such usurpation of Congressional authority
over domestic policy is taking place through forums where a full range
of potentially interested stakeholders - especially consumers - cannot
engage, is all the more troubling. We encourage you to closely analyze
all U.S. positions in the TPP for such issues, and to eliminate them
from the U.S. proposal. 



Peter Jaszi

Michael Carroll 

Sean Flynn




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