Comments on the Copyright Exceptions and Limitations

Newly Incorporated into the Draft of Amendments to the Intellectual Property Law

Email: vinh@bross.vn

Copyright exceptions and limitations are the legal principles set forth in Article 9(2) of the Berne Convention and Article 13 TRIPs[1] with the aim of limiting the exclusivity of copyright holders, related rights, and protecting the public's right to access information.

The 2005 Intellectual Property Law as amended twice in 2009 and 2019 (the "IP Law") transposed the above legal principles into two pairs of provisions, ie. Articles 25-26 related to copyright and Articles 32-33 relating to related rights (neighboring rights), wherein the pair Article 25-32 is of the exceptions and the other pair Articles 26-33 are the limitations. [2]

To our best knowledge, we would think that the name, content and order of limitation and exception provisions in the Draft are not appropriate. We therefore suggest the following revisions:

1.         Article 9(2) of the Berne Convention refers to acts of reproduction, not to act of "use". It means that under the spirit of the Berne Convention, it is permitted that reproduction is an exception to copyright infringement. Although the name of article in the Draft (even the current IP Law) only invokes the act of "use", the body of the article lists out such many different acts as making a copy in the form of "self-reproducing", "reproduction", "quotation", "performance", "photographing", "transcription", etc., is unreasonable. Therefore, it is necessary to amend the same to make sure its true nature, help consistently express the name of article and its content, and to help the enforcement agency understand and apply the law on the merit. For that reason, we propose to change the name of the pair of Articles 25-32 as follows:

“Article 25. Copyright Exceptions” and

“Article 32. Related Right Exceptions”.

2.         The titles of the pair of Articles 26-33 in the Draft "Cases when published works may be used without having to seek permission but royalties or remuneration must be paid" and "Cases when related rights may be exercised without having to seek permission but when royalties or remuneration must be paid” respectively are also unreasonable by reason of 5 reasons: (1) articles 26-33 are of the nature of compulsory licenses (non-voluntary license) with an aim of restricting (narrowing) the scope of enforcement of intellectual property rights, that is, literally, you can freely exploit but having to pay; (2) the concept of "use" of the published work / "use" of the published related right is too narrow and easily controversial about the connotation because there are actually many acts such as exploiting, making a copy (eg, sharing links, files, downloads, etc.,) of the published work / subject of published related rights, but not always and purely as the "use"; (3) the lack of a “published” condition for the subject of related rights in the title of article 33; (4) The Draft itself also uses the term "exploitation" in Article 56a when proposing the principle for making distribution of royalties in the course of "exploiting and using the work and related rights subjects"; and (5) Articles 26-33 aim at limiting the scope of exercising the rights of the right holder, so it would be more reasonable if such characteristic is incorporated into their titles as follows:[3]

“Article 26. Restrictions on exclusive right over the published works”

“Article 33. Restrictions on exclusive right over the published subjects of related rights”

3.         Three-step test set forth at Article 9(2) of the Berne Convention was actually included in the 1995 Civil Code even before Vietnam acceded to the Berne Convention (articles 760 and 761). Three-step test was misunderstood by the Court of Appeal of the Supreme People's Court in the dispute between the two renowned Kieu scholars.[4] Therefore, to avoid this mistake, it is best to put all of the steps 1, 2 & 3 under the three-step test into clause 1 of the two pairs of Articles 25-32 and 26-33. The term "exploitation" next to the term "use" whose connotation is too narrow in the Draft.[5] Accordingly, these 2 pairs of provisions are restructured as follows:

“Article 25. Copyright Exceptions

1. In the following circumstances, a published work may be exploited and used without permission or royalty, provided that such exploitation or use does not conflict with a normal exploitation of the work, and does not unreasonably prejudice to the legitimate interest of the author or copyright owner; information about the author's name and origin of the work shall be credited

....

2. The reproduction specified in Clause 1 of this Article does not apply to architectural work, plastic work, computer program”

             “Article 26. Restrictions on exclusive right over the published works

“1. In the following circumstances, a published work may be exploited and used without permission or royalty, provided that such exploitation, use does not conflict with a normal exploitation of the work, and does not unreasonably prejudice to the legitimate interest of the author or copyright owner; information about the author's name and origin of the work shall be credited:

1. Broadcasting organizations may exploit, use the published works for sponsored broadcasting, advertising or collecting money in any form without asking for permission, but must pay royalties to copyright owners since the exploitation or use. The amount of royalties, other material benefits, and payment method shall be agreed upon by the parties; in cases where no agreement can be reached, price negotiation shall be conducted according to the Government's regulations or initiate lawsuits at courts according to law provisions.
2. Broadcasting organizations may exploit, use the published works for unsponsored broadcasting, neither advertising nor collecting money in any form without asking for permission, but must pay royalties to copyright owners since the exploitation or use under the Government's regulations
3. Organizations and individuals that exploit, use the works fixed on a published phonogram or video recording in the course of their business and commercial activities are not required to apply for a permit, but must pay royalties as agreed upon to the owner copyright since their use or exploitation; In case of failure to reach agreement, the price negotiation shall be conducted according to the Government's regulations or initiate lawsuits at courts according to law provisions.
4. Vietnamese organizations and individuals enjoy preferences for developing countries, particularly for the right to translate works from foreign languages into Vietnamese, and the right to copy for teaching and research for non-profit purposes according to the Government’s regulations.

2. The exploitation, use of the works in the cases specified in Clause 1 of this Article are not applicable to cinematographic works."

"Article 32 Related Right Exceptions

Under the following circumstances, the published subjects of related rights may be exploited, used without permission or royalty, provided that such exploitation or use does not conflict with a normal exploitation of those subjects, and does not unreasonably prejudice to the legitimate interest of the author or related right owner; information about the author's name and origin of the subjects shall be credited:

1. Live recording or video recording of performances for teaching without commercial purposes, or for reporting news;

2. Self-copying of one copy for personal scientific research, study or entertainment purposes and not for commercial purposes;

3. Self-making a copy for teaching without commercial purpose, except where such performance, phonogram or video recording as published for the purpose of teaching;

4. Reasonable quotations for informational purposes;

5. Broadcasting organization makes temporary copies by itself for broadcasting when it enjoys the right to broadcast.“

" Article 33. Restrictions on exclusive right over the published subjects of related rights.

 Under the following circumstances, the published subjects of related rights may be exploited, used without permission but having to pay royalty, provided that such exploitation or use does not conflict with a normal exploitation of those subjects, and does not unreasonably prejudice to the legitimate interest of the author or related right owner; information about the author's name and origin of the subjects shall be credited:

1. Organizations and individuals that directly or indirectly exploit, use published phonograms, video recordings for commercial purposes for sponsored broadcasting, advertising or collecting money in any form are not required to apply for permits, but must pay agreed-upon royalties to performers, producers of phonograms and video recordings, and broadcasting organizations from the date of use; in case no agreement can be reached, the price negotiation shall be conducted according to the Government's regulations or initiate a lawsuit at court in accordance with law.
2. Organizations and individuals that directly or indirectly exploit, use published phonograms or video recordings for commercial purposes for broadcasting or adverstising without sponsorship, or without collecting any money in any form, do not ask for permission, but have to pay royalties to performers, producers of phonograms and video recordings, and broadcasting organizations from the date of use according to the Government's regulations.
3. Organizations and individuals that exploit, use the published phonograms, video recordings in their business and commercial activities are not required to obtain a permission, but must pay royalties as agreed upon to performers, producers of audio recording, video recording, and broadcasting organization from the date of use; in case of failure to reach agreement, the price negotiation shall be conducted according to the Government's regulations or initiate lawsuits at courts according to law provisions.”

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