March 10, 2014 by Peter Yu
In Part I of this series of blog posts, I discussed a position paper I submitted to the Hong Kong government as part of its public consultation on the treatment of parody under the copyright regime. This post continues from where the previous post left off. It discusses a forthcoming article I contributed to the Symposium on User-Generated Content under Canadian Copyright Law, which was held at Osgoode Hall in October 2013 and will be published by the Intellectual Property Journal.
Entitled “Can the Canadian UGC Exception Be Transplanted Abroad?”, this article builds on the excellent panel on the international law aspects of the Canadian UGC exception chaired by Prof. David Vaver. The panel also featured presentations by Barry Sookman, a partner of the law firm of McCarthy Tétrault, and Prof. Joost Blom of the Faculty of Law of the University of British Columbia.
Although the panel presenters examined the international law aspects of section 29.21, including its compliance with the Berne Convention and the WTO TRIPS Agreement, one issue that has not been covered much is whether this exception would serve as an ideal model for other jurisdictions that are now undertaking digital copyright reform. Using Hong Kong as an example, my forthcoming article will argue that the Canadian UGC exception, with appropriate modifications, can be—and should be—transplanted abroad.
This article begins by discussing the efforts by the Hong Kong government to transplant copyright laws from abroad as part of its digital copyright reform. It further examines the benefits and drawbacks of legal transplants. Using the US Digital Millennium Copyright Act of 1998 as a point of comparison, this article argues that the Canadian UGC exception provides a timely and attractive model for legal transplant.
The article then discusses specifically the UGC exception proposal I submitted to the Hong Kong government. Focusing on two major aspects of legal transplant—modelling and adaptation—it discusses the policy choices the submission considered. It also addresses the key objections raised by copyright holders and their industry groups, in particular their claim that the Canadian UGC exception may not comply with the TRIPS Agreement.
This article concludes by recounting the Hong Kong government’s recently-released discussion paper on the parody consultation, which sadly echoed the concerns raised by copyright holders and their industry groups. Although I strongly disagree with the government’s preliminary analysis of the proposed UGC exception, this article takes the government’s international compliance concerns seriously and offers additional modifications to further adapt the proposed transplant.
To begin with, the government could easily build the relevant WTO standards into the proposed UGC exception, similar to the existing provisions in the Hong Kong Copyright Ordinance and the laws of other jurisdictions. The government could also introduce a fair dealing exception for UGC. If it takes the position that fair dealing exceptions meet international standards, a fair dealing exception for UGC will clearly meet those standards.
In addition, the government could introduce a quid pro quo arrangement that allows authors and copyright owners to use the internet users’ derivative creations for predominantly non-commercial purposes. If significant commercial interests are involved, the government could also introduce a profit-sharing arrangement that requires internet users and intermediaries to provide equitable remuneration to copyright owners. Levy systems, for example, have been widely practiced in Canada, Europe, the United States and other parts of the world.
Even if the government remains reluctant to legalize the creation of UGC, in light of the ongoing, unsettled international copyright policy debate, the government could introduce laws to prevent internet users from being criminally prosecuted or sued in civil actions. The government could also institute a five-year sunset period for the proposed exception if it considers a permanent exception unsuitable for a rapidly changing licensing environment.
In sum, regardless of whether one agrees with the Hong Kong government’s highly restrictive interpretation of the TRIPS Agreement, many ways still exist to address its international compliance concerns. From the standpoint of examining the expediency and viability of transplanting the Canadian UGC exception abroad, it is also important to separate drafting problems from modelling problems. A good model of legal transplant should not be abandoned when adaptations can be made to improve the transplanted law.
Peter K. Yu, an affiliated scholar of IP Osgoode, holds the Kern Family Chair in Intellectual Property Law at Drake University Law School in the United States. Born and raised in Hong Kong, he serves as the general editor of The WIPO Journal published by the World Intellectual Property Organization and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association.