Thailand Law Journal 2014 Spring Issue 1 Volume 17

Nevertheless, the second and third conditions of the three-step test have simply been inserted into section 32 paragraph 1 of the Thai CA 1994 because the legislators wanted to ensure that the Act complied with the Berne Convention and the TRIPs Agreement. This way of implementation cannot be seen in the Copyright Acts of the US and the UK. Interestingly, many scholars seem to oppose this easy method of implementation. For example, Senftleben considers the question of whether or not the three-step test itself should be incorporated into national copyright law and states as follows:    

'...the question can clearly be answered in the negative. The passage of article 5(5) CD¹¹⁶ stating that limitation shall only be applied in certain special cases is a mere reference to international obligation. The three step test must be borne in mind but not be incorporated. As there is no indication that national courts are reluctant to lend weight to the test, it is not necessary to impose the obligation on national legislation to include the three step test in national copyright law...'¹¹⁷         
He also contends that the outcome of the incorporation of the three-step test into national copyright law together with literal copies of the types of exceptions listed in Article 5 of the European Copyright Directive 2001 would result in a half-way house between the open US fair use doctrine and the traditional continental European system of more restrictively delineated exceptions.¹¹⁸ Therefore, he supports the idea that the courts should be the addressees of the three-step test.¹¹⁹ Burrell and Coleman also agree with the above argument and states that:   

'...the question that needs to be addressed is whether the three-step test should also be incorporated into domestic law or whether it should merely be treated as a general statement of principle intended to guide the action of national governments. The UK Government has chosen the latter interpretation, taking the view that the United Kingdom's existing provisions already satisfy the three-step test. We support this approach and would not wish to see the three-step test incorporated into national law as part of a reformed system of users' right. As has been seen, the three-step test was never intended to fulfil the function now assigned to it in international instruments relating to copyright and it is too vague and open to too many different interpretations to make it a useful guide for national courts...'¹²⁰

Therefore, they conclude that the three-step test should be treated as a general statement of principle capable of giving some limited guidance to the court when reviewing national copyright law.¹²¹

Apparently, the US and the UK seem to take a different approach from Thailand since they have complied with the three-step test without having its conditions inserted into their Copyright Acts. This seems to be consistent with the object of the three-step test because it realizes that the conditions of the three-step test are not copyright exceptions in themselves but set the boundaries for the exceptions in national copyright laws. Thus, having these two conditions as exceptions in the Copyright Act is already a mistake in implementation since it is inconsistent with the object of the three-step test. Allowing section 32 paragraph 1 to be applied independently as a general exception will make that mistake more severe and clearly go against the object of the three-step test. Senftleben also supports this view by arguing that national legislators are not compelled to insert the conditions of the three-step test into the copyright exceptions because the task of ensuring that exceptions comply need not necessarily be fulfilled by legislation process only but can also be left to the court.¹²²

The third argument is that since the Thai CA 1994 does not define any of the terms in two conditions of section 32 paragraph 1, its recognition as a general exception will be more problematic when the Thai courts attempt to interpret them. This is because the two conditions have the same meaning as the second and third conditions of the three-step test in the Berne Convention and TRIPs, which had already been interpreted in the decisions of the WTO Panel.¹²³ In practice, it is not the authority or responsibility of the domestic court to interpret and define the meaning of the three-step test. Such conditions should normally be interpreted by a relevant international body which has authority such as the WTO Panel. Hence, the contracting countries should interpret and apply the three-step test in accordance with the interpretation of the WTO Panel.¹²⁴ I already mentioned in the previous section that the WTO Panel decision WT/DS106 is a decision which directly concerns the three-step test. In this decision the European Commission on the request of an Irish collecting society and on behalf of their member states filed WTO dispute settlement proceeding against the US for breach of the Berne Convention and the TRIPs, arguing that the 'business' exception in sub-paragraph (b) of section 110(5) of the US Copyright Act which allows the amplification of music broadcasts without an authorization and a payment of a royalty fee by food service and drinking establishments and by retail establishments did not satisfy with the three-step test in Article 13 of TRIPs.¹²⁵ The Panel agreed with the European Commission and held that the 'business' exception did not meet the requirements under Article 13 because it did not qualify as a 'certain special case' since its scope in respect of potential users covered a substantial majority of restaurants: around 70 percent of eating and drinking establishments and 45 percent of retail establishments.¹²⁶ For the second criterion, this exception also conflicts with a normal exploitation of the work since it deprived the copyright owners of musical works of compensation for the use of their work from broadcasts on radio and television. Also, this exception unreasonably prejudiced the legitimate interests of the copyright owners because the statistics indicated that around 45 to 73 percent of the relevant establishments fell within the business exception, so the author's potential losses of revenue was quite high.¹²⁷ The US had also failed to show that the business exception did not unreasonably prejudice the legitimate interests of the copyright owners, so the business exception was found to be inconsistent with Article 13 of the TRIPs. Thus, the Panel recommended the US to bring its law into conformity with its obligations under international law.

The case illustrates that it is possible for a country to be subject to a challenge in the WTO dispute settlement proceedings if its copyright exception does not comply with the three-step test in Article 13 of the TRIPs agreement. Although a Panel decision only has effect on the parties to the dispute which are obliged to comply with the decision and does not constitute a binding precedent for other WTO Members, it can be viewed by many countries as a guideline to interpret the three-step test. Thus, if the Thai court interpreted or defined these two conditions in a way opposite to the WTO Panel decision, such an approach would probably be subject to challenge in further WTO dispute settlement proceedings. In this aspect, if there is clear evidence that the copyright exceptions under the Thai CA 1994 do not comply with the three-step test under Article 13 of the TRIPs Agreement, then it is possible that other WTO members might file dispute settlement proceedings against Thailand as already happened to the US. For example, the European Commission or the US may file WTO dispute settlement proceedings against Thailand at the request of collecting societies¹²⁸ , on the basis that the exception in section 32 of the Thai CA 1994 which allows the reproduction of the entire English language materials and multiple reproductions to be done freely in the Thai education sector, does not comply with the three-step test in Article 13 of TRIPs. Interpretation of the two conditions in the opposite direction to the WTO Panel may also lead to other problems. For example, the US uses the inappropriate interpretation on copyright exception of the Thai courts as one of the reasons to put Thailand on the Priority Watching List in 2007. The IIPA, which produced the report on copyright protection in Thailand for the USTR, also referred to the inappropriate interpretations on copyright exception of the Thai court which are contrary to the three-step test as one of the reasons to put Thailand on the Priority Watching List. Even if the Thai courts attempt to interpret these two conditions in exactly the same direction as the WTO Panel, it might not be easy to do so because the key passages in the decision are quite ambiguous and open to more than one interpretation.¹²⁹ Hence, the recognition of section 32 paragraph 1 as a general exception will not lead to any good results.  

even in this way is still very broad and uncertain. So it is not confined to 'certain special cases'. The requirement is intended to make exceptions more explicit and certain. The WTO Panel observed in the report on section 110(5) of the US Copyright Act that:

'… in order to demonstrate that an exception is confined to "certain special cases", as required by Article 13, there is no need to identify explicitly each and every possible situation to which the exception could apply, provided that the scope of the exception is known and particularized. This guarantees a sufficient degree of legal certainty.'¹³⁰

This statement clearly illustrates that in order to confine an exception to 'certain special cases' under Article 13, its scope needs to be clear enough to guarantee a sufficient degree of legal certainty. The WTO Panel emphasized that an exception should be narrow in scope and have an exceptional or distinctive objective.¹³¹ Many scholars also agree with this approach. For instance, Ricketson points out that national copyright law has to contain a sufficient degree of certainty and specification which identifies the cases to be exempted from the rights, while unspecified wholesale exceptions are not permitted.¹³² Ficsor observes that the exception must be of limited application and the use to be covered must be specific and narrowly determined.¹³³