IS THE THREE-STEP TEST AS A FAIR USE AGAINST COPYRIGHT OR RELATED RIGHTS INFRINGEMENT CLAIM FORGOTTEN IN VIETNAM?
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A Quick Look at the Three-Step Test
The use or reproduction of a copyrighted work, whether in part or in full, in some circumstances may not constitute an infringement, even where the copyright right holder has not granted any permission, if such use of or making a copy of copyrighted material falls into the so-called “limitations and exceptions” on the right holder’s exclusive right to the reproduction. This practice has been widely recognized long as fair use, fair dealing, limitations on exclusive rights in various countries.
According to the Electronic Frontier Foundation, a great number of multilateral, regional, and bilateral trade agreements carry language that has come to be known as the “three-step test” to define the freedom of signatory countries to create “exceptions and limitations” to copyrights, which in essence, it is a way to restrict the kinds of permitted fair uses in national laws.
The three-step test is derived from Article 9(2) of the Berne Convention for the protection of literary and artistic works, a first and most comprehensive global convention regarding copyright protection was first approved in 1886 and revised many times, of which revision latest was in 1979.
Article 9(2) of the Berne Convention states “it shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author”.
Decompressing Article 9(2), we can realize that copying or making a reproduction of a copyrighted work will not be considered an infringement of the author's exclusive right to reproduction if that act of reproduction satisfies at the same time 3 steps or 3 conditions of the following test:
(a) Such copying is permitted only in exceptional exceptions that are required by national law; and
(b) Such copying does not conflict with the normal exploitation of the work; and
(c) Such copying does not cause unreasonable harm to the legitimate interests of the author
It was not until the revision of the Berne Convention in 1967 that the three-step test was introduced into Article 9(2). The three-step test is essentially a compromise rule achieved between drafters for the purpose of limiting or narrowing the exclusive scope of the author or copyright owner to the exclusive act of making a copy, thereby helping balance the author's legitimate rights and interests with those of the public and society.
Currently the three-step test is present in many other conventions and treaties such as Article 13 of the TRIPs Agreement, Article 10 of the WIPO Treaty on Copyright (WCT), or Article 16 of the WIPO Performances and Phonograms Treaty (WPPT), or Article 18.65 of the CPTPP
In assessing the effectiveness of deciding fair use based on the three-step test, the Max Planck Declaration ever commented that the three-step test has already established an effective means of preventing the excessive application of limitations and exceptions.
Three-Step Test in the Vietnamese IP Law and the Oblivion of Three-Step Test in Copyright Dispute Settlement
Vietnam transposed its membership obligations imposed by the Berne Convention, the Rome Convention, the TRIPs Agreement as well as the CPTPP into the Intellectual Property Law in 2005 as revised in 2009 (the “IP Law”), in which the three step test was included in Section 25 titled “use of the published work neither requires permission nor pays royalties or remuneration”, and Section 32 named “use of related rights without having to ask for permission, not to pay royalties and remuneration”.
Before Vietnam joined the Berne Convention, Vietnam actually put this three-step test into its national law quite early, 10 years prior to the issuance of the IP Law. Specifically, the three-step test can be found in Sections 760 and 761 of the 1995 Civil Code, but unfortunately the three-step test has never been properly applied by the trial system at the time when the Civil Code was in force.
One of the most typical examples is the lawsuit involving two Kieu renowned scholars: Mr. Nguyen Quang Tuan and Mr. Dao Thai Ton, according to which the plaintiff - Mr. Nguyen Quang Tuan - sued the defendant - Mr. Dao Thai Ton because the defendant was accused of infringing copyright by copying the plaintiffs' 4 copyrighted articles without permission so as to put into the defendant’s own book named "the Tale of Kieu - Research and Discussion". The Court of Appeal of the Supreme People's Court in Hanoi at its appellate civil judgment No. 127/2007 / DSPT dated 14/06/2007 annulling the first instance civil judgment of 68/2006/DSST handed down by the People's Court of Hanoi and ruled that the defendant did not violate the plaintiff's copyright. It is worth mentioning that in both of these judgments, no three-step test had been analyzed and dissected. The details of the case and our comments can be found at: http://bross.vn/newsletter/ip-news-update/How-Did-a-Vietnamese-Bench-Court-Err-in-Determining--%E2%80%9Cthe-Whole-Quotation-of-Other%E2%80%99s-Copyrighted-Writing%E2%80%9D-as-Fair-Use-in-a-Copyright-Infringement-Lawsuit
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Bross & Partners, a renowned intellectual property law firm founded in 2008, regularly ranked as one of the Vietnam's leading intellectual property law firms by the reputable legal profession assessment organizations such as the Managing Intellectual Property (MIP), World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). Bross & Partners has had intensive expertise and extensive experience enabling it to assist clients to effectively protect or defense in complex intellectual property disputes regarding copyright, related rights, patent, design, trademark and domain name in Vietnam and abroad.
 It is very unfortunate that many Vietnamese translations of Article 9 (2) of the Berne Convention made a serious mistake, particularly, the mistranslated term “or” instead of the correct one "and". The three-steps in correct order should have been "in some special cases", and “does not conflict with normal exploitation of the work” and “not unreasonably harm the author's legitimate interests”.
Article 9 [Right of Reproduction: 1. Generally; 2. Possible exceptions; 3. Sound and visual recordings]
(1) Authors of literary and artistic works protected by this Convention shall have the exclusive right of authorizing the reproduction of these works, in any manner or form.
(2) It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.
(3) Any sound or visual recording shall be considered as a reproduction for the purposes of this Convention.
 Article 3(5) Decree 22/2018/ND-CP of February 23, 2018 defines copy of a work means a version which has been reproduced either directly or indirectly with any mean from part of or the entire work. A photocopy of a work shall also be deemed to be a copy of the work. Whereas pursuant to Section 28(6) of the IP Law provides for any person who without permission by the author, right holder makes reproduction of a copyrighted work shall be regarded as having committed an act of infringement upon the exclusive right of reproduction held by the author or right holder, except where the cases stipulated
in sub-clause a (making one copy of the work of an author for scientific research or teaching purposes) and sub-clause dd (copying of a work by a library for archival and research purposes) of article 25.1 of this Law.
 Article 13 of the TRIPs Agreement. Limitations and Exceptions
Members shall confine limitations or exceptions to exclusive rights to certain 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.
 Article 10 of the WCT. Limitations and Exceptions
(1) Contracting Parties may, in their national legislation, provide for limitations of or exceptions to the rights granted to authors of literary and artistic works under this Treaty in certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author.
(2) Contracting Parties shall, when applying the Berne Convention, confine any limitations of or exceptions to rights provided for therein to certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author
 Article 16 of the WPPT. Limitations and Exceptions
(1) Contracting Parties may, in their national legislation, provide for the same kinds of limitations or exceptions with regard to the protection of performers and producers of phonograms as they provide for, in their national legislation, in connection with the protection of copyright in literary and artistic works.
(2) Contracting Parties shall confine any limitations of or exceptions to rights provided for in this Treaty to certain special cases which do not conflict with a normal exploitation of the performance or phonogram and do not unreasonably prejudice the legitimate interests of the performer or of the producer of the phonogram
Article 25 of the IP Law. Cases of using published works without obtaining permission, paying royalties, remuneration
1. The cases of using published works without asking for permission, and paying royalties, remuneration include:
a) Self-reproducing a single copy for private scientific research, teaching purpose;
b) Properly quoting the works without altering the author’s words for commentary or for illustration in one’s own work;
c) Quoting the work without altering the author’s words for use in articles, periodic publications, in radio and television programs and documentaries;
d) Quoting the work for teaching in schools without altering the author’s words, and aiming for commercial purposes;
đ) Reproducing the work for archives in libraries for research purpose;
e) Performing dramatic works and other forms of performing arts in cultural gatherings or in propaganda campaigns without any form of charges;
g) Directly recording the performances for news programs or teaching purpose;
h) Taking photos of or televising the works of plastic art, architectural, photographic and applied fine arts already displayed publicly for introduction purposes;
i) Translating the works into Braille or the like for visually-impaired people;
k) Importing copies of others’ works for personal use only;
2. Organizations, individuals used the works as prescribed in Clause 1 of this Article shall neither make any effect to normal exploitation of the work nor cause any harm to the rights of the author, the copyright owner; and shall provide information on the name of the author, origin and source of the work.
3. Regulations at points a and dd, Clause 1 of this Article shall not be applicable for architectural works, plastic artistic works and computer programs.
 Section 32 of the IP Law. Cases when related rights may be exercised without having to seek permission or pay royalties or remuneration
1. Related rights may be exercised without having to seek permission or pay royalties or remuneration
in the following cases:
(a) Making one copy of a work for personal scientific research purposes;
(b) Making one copy of a work for teaching purposes, except for performances, audio and visual fixation or broadcasts which have been published for teaching purposes;
(c) Reasonable quoting from a work in order to provide information;
(d) Making of provisional copies of a work by a broadcasting organization for broadcasting purposes when such organization has the broadcasting right.
2. Organizations and individuals who use works stipulated in clause 1 of this article must neither affect
the normal use of performances, audio and visual fixation or broadcasts; nor cause prejudice to the
rights of performers, producers of audio and visual fixation, or broadcasting organizations.