02 copyright and neighboring rights

02 Copyright and Neighboring RightsIntroduction

The Rights of Authors in GeneralCopyright = bundle of exclusive rts granted to authors

Allows authors ability to authorize/control/prevent different uses of their works

2 Traditions of Copyright

English (Public Good) -- Utilitarian

Based on

Society benefits from the usefulness of the work

Limitation

Trouble quantifying the incentive

How much protection constitutes 'incentive' for different types of authors?

Continental European (For the Good of the Author) -- Author's Tradition / Natural Rights

Natural Rights

Based on

Work = direct expression of author; it's a part of the author

Moral Rights

Neighboring rights/related rights

Limitation

Contradiction: under property theories, it's illegal e.g. to sell a body part; but if a

work is a 'part' of the author, this theory contradicts the property theories

Treatment of Performances

English System = performances receive same treatment/protection under Copyright law as

literary/artistic works

Continental European System = lesser treatment for performances than Copyright (i.e. performances

receive protection under Neighboring rights)

International Agreements: TRIPS, Berne Convention, Rome ConventionIntro

Copyright Laws of all countries within WTO are governed by:

TRIPS

Berne Convention Articles 1 - 21

Berne Convention (1886)

Revisions

Berne has been through 6 revisions (most recently in Paris, in 1971)

Rules/Requirements

Minimum standards for copyright laws

02 Copyright and Neighboring Rights file:///C:/Users/lherard/SkyDrive/DePaul/Fall 2013/International IP/Min...

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National Treatment

Got rid of "material reciprocity" - approach of extending protections if other countries

also extended protections (through bilateral agreements)

Background

Formed in 1886

10 Countries: Belgium, France, Germany, Haiti, Italy, Liberia, Spain, Switzerland, Tunisia, and

the UK

The US and Japan were "unofficial obersvers"

TRIPS

Introduction

TRIPS incorporated Berne and Rome + several new provisions

Together, TRIPS + Berne are the central int'l agmts covering copyright

Rules/Requirments

National Treatment

Minimum standards for Copyright Protection

Sound Recordings/Broadcasts

TRIPS covers/protects sound recordings/broadcasts

(Berne does not)

Rome Convention (1961)

Requires

National Treatment

Minimum standards

Protects

Performers, Producers of Phonograms , and Broadcasting organizations

Geneva Phonograms Convention and Brussels Satellite Broadcast Convention

Less influential than Rome

Protects Producers of phonograms

Not as impt as it one was, largely because Members of Geneva are also members of TRIPS and

Rome

Foreign Nationals Acquiring Copyrights and Neighboring RightsCopyrights

Points of Attachment and National Treatment for Copyrights

Who is Entitled to Protection by Berne? (Article 3 Berne)

Authors who are Nationals of One of the Countries of the Union (Berne Nationals)

Authors who are Not Nationals of one of the Countries of the Union (Foreign Nationals)


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Authors of cinematographic works, who are not Berne Nationals, IF the headquarters or

habitual residence is in a Union country

Authors of works of architecture, who are not Berne Nationals, IF the works are erected in a

country of the Union

Authors of other artistic works, who are not Berne Nationals, IF the works are incorporated in

a building or other structure located in a country of the Union

Who is NEVER Entitled to Protection by Berne?

A Foreign (non-Union author) who first publishes the work on a non-Union country.

However, in a rare case, the author's country could join Berne, and possibly get retroactive

protection

Which Works are Protected by Berne? (Article 3 Berne)

Berne Nationals

All of author's works, "whether published or not"

NOTE: "Published" means published with author's consent

Foreign Nationals

Author's works first published in a country of the Union, OR (Berne Art 3)

Author's works published "simultaneously" (i.e. within 30 days) in a country outside theunion and a country of the Union (Berne Art 3), OR

Author's cinematographic works, IF Author's HQ or habitual residence is in a Union

country (Berne Art 4)

Author's works of architecture, IF the work is erected in a country of the Union (Berne

Art 4)

Author's artistic works, IF the works are incorporated in a building or other structure

located in a country of the Union

NOTE: If an author is not a national of one of the countries of the Union, but has habitualresidence in a Union country, then the author is treated as a national of a Union country (i.e.that author's works, whether published or not, are protected by Berne)

What is the Point of Attachment (a.k.a. the Connecting Factor)?

i.e. the "Point of Attachment" is not a date -- it is a justification for the authorreceiving Copyright protection under Berne..

For Works in General (Berne Art 3)

For Berne Nationals

The Point of Attachment is the Author's Nationality


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Copyright Copyright attaches immediately upon "creation" of the work, whetherpublished or unpublished (Berne Art 3(1)(1))

For Foreign Nationals

The Point of Attachment is the Geographic Location of the Publication

Copyright attaches to works first published in the Union, (presumably on the date offirst publication in the Union), OR

Copyright attaches to works "simultaneously published" in a Union Country and aForeign Country

"Simultaneously published" means that the work was published in a Union

country, within 30 days of publication in a foreign country

Therefore, the date of copyright protection must begin on the date of foreign

publication (otherwise, if it were the Union publication date, the benefit of

"simultaneous publication" wouldn't really exist)

NOTE: Foreign Nationals who are habitual residents are treated as Berne

Nationals, for copyright protection purposes

For Cinematographic & Architectural works (Berne Art 4)

Even if author is not a Berne natl, does not habitually reside in Union country, or has not

first published in Union country:

Cinematographic Works

Non-Berne-National authors get PA if they have HQ or habitual residence in

Union country

NOTE: This provision avoids any question about the nationality of a filmproduction company (as opposed to the nationality of the writers, etc)

Architectural Works

Non-Berne-National authors get protection if the work/building is

located/built in Union country

The erection or incorporation of a work in a Union country establishes a

lasting connection w/ the Union country

NOTE: Together with the provisions in Berne Art, the Point of Attachment establishes national

treatment

The Backdoor to Berne

If a Foreign author wants to establish a Point of Attachment under Berne, the author must "first


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or simultaneously" publish the work in a Union country.

This provision enabled US authors (before the US joined Berne in 1989) to claim copyright

protection in Berne countries, based on first publication of their works in a Berne country, or

simultaneous publication of their works in a Berne country and the US. (e.g. publishing

simultaneously in US and Canada, which was a Berne country)

NOTE: Berne Article 56 & abuses of the "Back door" to Berne

Art 6 allows Union countries to penalize non-Union countries that "fail to protect, in an

adequate manner, the works of authors who are natls of Berne countries"

TRIPS Incorporation

TRIPS Article 9 incorporates Berne Articles 3 and 4. i.e. TRIPS extends these provisions to all

WTO countries.

Independent Treatment (Art 5(2)) -- p. 99

The © treatment in other Berne countries (outside the country of origin) is independent of ©

treatment in the country of origin

e.g. The work does not have to be protected in its country of origin (of the work); it still

gets protection in other Berne countries

e.g. Formalities

A work made in the US may get protection in other Berne countries, even if the author

did not follow registration rules for US copyright

So e.g. author did not get US ©, but author did have © in Europe

Territoriality

Berne only sets forth that an Author receives Copyright in each Member country. The details

of the copyright are subject to the domestic law of each Member country (but Berne sets minimum

standards, so there would be some common ground)

Berne's Prohibition on Formalities

Rule

No Berne countries can impose formalities on foreign nationals of Berne Countries for their

foreign works (Art 5(2))

(e.g. this is what enables the "Backdoor to Berne")

BUT "countries of origin" can impose formalities for work originating within their borders (Art5(1) & Art 5(2))

Protection in the country of origin is governed by that country's law. If an author is not a

national of the country of origin, he still enjoy's that country's laws (Berne Art 5(3))

Art 5(4) defines "country of origin"

If work is first published in a Union country

Country of origin is the Union country of 1st publication

If work is published simultaneously in several Union countries


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Country of origin is the Union country whose ligeslation grants the shortest term

of protection

If work is published simultaneously in a country outside the Union and a Union country

Country of origin is the Union country

If work is unpublished, or first published in a country outside the Union, without

simultanous publication in the Union; AND the author is a Foreign national:

Country of origin is the country where the Author is national (provided that... (see

p. 101))

This provision favors 'foreign countries'

Berne Retroactivity

Default Rule for International Treaties (Retroactivity)

An international treaty is not intended to apply retroactively UNLESS it contains is an express

indication to the contrary

TRIPS Art. 70(3) follows the General Rule

"No obligation to restore protection to subject matter which, on the date of application of this

Agreement for the Member in question, has fallen into the public domain"

Trips contains an express provision of Retroactivity Specifically for Copyright and Neighboring

Rights

TRIPS Art. 70(2) incorporates Art. 18(1) of Berne

The Convention (protection) applies to all works which, at the moment of the Convention's

coming to force, have not yet fallen into the public domain

A country that newly joins Berne must extend copyright protection ('retroactively') to

Future works from Union countries AND

All existing foreign works from Union countries that are still under copyright protection

in the country of origin (or at least not in the public domain there)

NOTE: In some cases, this provision could mean that a County A, which newly joins

Berne, could have to extend copyright protection to works that originated in countries other

than Country A, but may have fallen into the public domain in Country A

But the country gets to decide the conditions under which the retroactivity must apply

Dam Things v. Russ Berrie (3d Cir 2002) (p. 107) (the Troll doll case)

Facts

Thomas Dam = woodcarver; citizen of Denmark created Troll dolls

Dam had valid © in Denmark

There were different versions of the trolls

1950 "boy version"

Failed to get US patent

1961 "Girl version"


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Got US patent

Dam Failed to get US © protection for either the boy or the girl version

Dist Ct D.C. held that the trolls were in the public domain (because of procedural

failings)

Russ Berrie began to sell trolls manufactured by Dam Things' US licensee (called

Royalty Design)

Royalty Design went bankrupt; Berri started using Dam Things molds to manufacture

trolls

His company began to modify the trolls

e.g. a Troll "pencil topper" to manufacturers in China

Russ obtained 15 copyright registrations for trolls

Dam Things claimed copyright infringement of its public domain troll

NOTES:

Dam says the 'work' in question is the P1 doll (the 'boy' doll, earlier -- 1950),

which was first published in Denmark

Russ says the 'work' in question is the 1960 doll (the one that was in the public

domain), which was first published in the US (see p. 110)

Dist Ct held "likelihood of infringement"

Issue

1 Has © in Dam Things' troll doll been restored?

Rule

§104A of US Copyright Act

Automatic restoration of © for an original work of authorship if:

Wk not in pub dom in home country thru exp of term of protection, AND

Wk IS in pub dom in US due to

Non-compliance w/ formalities or

Lack of subject matter (snd rec) or

Lack of nat'l eligibility; AND

Wk's author/rightsholder = national of an eligible country, AND

(if published) the work was first published in an eligible country, but NOT

simultaneously in the US

NOTE

This Implements Berne Retroactivity (see p. 109)

But also, §104A provides some relief for "reliance parties"

American authors who copied the restored works, while the works were still in the

pub dom, have one year to sell the now-infringing works, after being given a "Notice


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of Intent to Enforce" the copyright, byt the author of the restored work

Held

Yes-ish -- 3d Cir agrees w/ Dist Ct, that Dam Things will likely be able to establish that

P1 (the "boy" version) satisfies all 4 elements for restoration, including first publication in

an elgible country

The issue of copyright infringement should be decided on remand

Analysis

Dist Ct should have compared the relevant trolls against each other

Russ does not contest that the P1 doll ('boy' version') was first published in Denmark. It

argues that a different doll is the relevant troll

Ownership and Transfer of Copyrights

Unlike points of attachment and national treatment, ownership is left largely unaddressed by

international IP treaties

Philosophies

Continental European Philosphy

Mostly, authors can only be PEOPLE

e.g. France

Authors (for Copyright) must be people, BUT

Corporate Entities can be authors (for Copyright purposes) of Collective Works

(e.g. newspapers)

Most other countries' Philosophy

People or Companies can be authors

Who Owns Copyright?

Art 5(1) Berne

Countries are OBLIGATED to vest initial Copyright Ownership to the "Author" of the

literary/artistic work

What is an "Author?"

Art 15 Berne

"Author" = person whose name appears on the work "in the usual manner"

Who Qualifies to Be Deemed "Author?"

Countries are divided over treatment of corporate entities as "authors" and the

employer/employee relship

Some countries (e.g. Germany) say

Employee = both author and © owner

Natural person licenses work to company (dictated by contract))

Ownership vests in the natural person who created the work


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(C)s can be LICENSED to companies, but companies cannot be © owners

Other countries (e.g. USA) say

EmployER = author & owner

Natural person receives rights from company, based on

Works made for hire: for Wks made in the context of employment, © vests in the

COMPANY, and not necessarily the natural person

The natural person who made the work might not even be considered the author

Art 14bis Berne -> Authors of Cinematographic Works

"Cinematographic works" are protected as original works. i.e. Authors of

cinematographic works enjoy the same protection as the author of an original work

Ownership of © in cg works is a matter of national law (i.e. Berne does not set the rules)

Art 15 Berne

Ownership of cg works may be vested in corporate entities

Note on Neighboring Rights

Rome establishes minimum standards for "performers", "producers of phonograms", and

"broadcasting organizations"

Enforcement of Copyright Protection/National Treatment

I'm not exactly sure where to put this case...

China--Measures Affecting the Protection and Enforcement of IP Rights

Facts

China © law states that certain works that violate other parts of Chinese law will not be

protected

US Arg: Authors of such works do not enjoy the minimum rights that are "specially

granted" by Berne, which violates Art 5(1) (National Treatment)

China arg: "Shall not be protected" (in Art 4) means that the works may have ©, but

cannot be published

China also arg: TRIPS (as it incorporated Berne) does not affect the right of the Govt of

each country to control the exhibition of works (Art 9.1 TRIPS (via Art 17 Berne))

Issue

Under the standards set forth in Berne, can a country deny copyright protection based on

the content of the work?

Held

China's © law violates TRIPS

Rule

Berne Art 17: The sovereignty of Member Countries to exercise their rights to maintain

'Public Order'


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Art. 17 Berne:

“The provision of this Convention cannot in any way affect the right of theGovernment of each country of the Union to permit, to control, or to prohibit,by legislation or regulation, the circulation, presentation, or exhibition ofANY work or production in regard to which the competent authority may findit necessary to exercise that right”

Art. 9(1) TRIPS incorporates Art. 17 Berne

Analysis

WTO Panel found that China's Copyright Law, on its face, shows that it denies copyright

protections to certain works, including those of WTO Member nationals, as the US claimed

i.e. Panel found that China's law Art 4(1) is not just limiting the publication of wks that

are contrary to Chinese law; but that it actually takes away the whole © protection

Art 17 Berne does NOT authorize the denial of all copyright protection in any work

There are exclusive rights provided by Berne that countries CANNOT control

Even though countries have right to control circulation, presentation, or exhibition does

not mean countries can deny ©

China's law did deny ©

Note 3, p. 179

US motivation for this case is to protect its movies -- US wants the ability for US

authors to enforce copyrights in China

Neighboring RightsBerne Convention

Does not speak directly to the rt of performers or their snd recording

Berne countries have option to include performers' rts w/in the rubric of ©

Which Law Governs Neighboring Rights?

If Berne Country opts to include performers' rts in ©, Berne law applies

If Berne Country opts NOT to include performer's rts ©

If country is member of Rome Convention, Rome Convention law applies

If country is NOT member of Rome Convention, domestic law applies

Rome Convention

Note: The United States is NOT a member of the Rome Convention

What Does Rome Convention Protect?

Performance rights (i.e. rights "neighboring rights", or rights that are 'neighbors to' copyrights)

National Treatment for Neighboring Rights is Provided to: (see p. 116)

Performers: Actors, singers, musicians, dancers, and others who perform literary or artistic


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works

Producers: Person who, or legal entity which, first fixes the sounds of a performance (or other

sounds)

Broadcast organizations

Pt of Attachment for Performers (Art 4 Rome)

Rule

Once a Point of Attachment exists, the person/entity entitled to protection under the RomeConvention is entitled to receive performance rights under the domestic laws of everycontracting state to the Rome Convention

If Performance takes place in Rome Convention country:

Performers establish a Pt of Attachment, regardless of nationality

(This is particularly useful for US performers, who get a backdoor to Rome protection, eventhough US is NOT a Rome Convention country).

If Performance takes place in non-Rome Convention country

Performer can establishes a Pt of Attachment he/she can "piggyback" on the Producer

(Rome Article 5); OR

The Producer of the phonograms or recording of the performance is a Rome

country national, AND

The first fixation (of work) was made in a Rome country, AND

The phonogram was first or simultaneously published in Rome country

NOTE: Countries may elect NOT to apply the criterion of publication or fixation (orrequire both -- up to them

Performer can establish a Pt of Attachment if he/she can "piggyback" on the Broadcast

Organization (Rome Article 6)

HQ of broadcasting org is in Rome Country, OR

Transmission of broadcast was from a tx'er located in a Rome country

NOTE: Countries may elect to provide protection only if both conditions are met

Rationale: To create a system in which a performance fixed on a phonogram is always

protected if the producer of the phonogram enjoys protection, and in which a transmitted

performance (except for that fixed on a phonogram) is always protected if the broadcasting

company enjoys protection

Formalities


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TRIPS does not officially prohibit the imposition on formalities for obtaining

neighboring rights

However, most countries don't (Note 3, p. 125)

Bruce Springsteen and his Band (Supreme Ct of Germany) (p. 122)

FP

Bruce Springsteen & his band gave a performance in the US (Los Angeles)

US is NOT a Rome Convention member

The concert was transmitted/broadcase live by numerous stns; including one in

LA, and others from Rome Convention countries (Argentina, Brazil, Austria,

Paraguya, and Uruguay).

Def recorded the show & sold it in Germany

Ptf Fontayne is a citizen of UK

UK is a Rome country

Dist ct allowed the infringement claim

Ct of App denied the ptfs claims for infringement (saying there was no fault that

would give rise to liability)

Issue

Does Fontayne have a Pt of Attachment for neighboring rights, under the Rome

Convention?

Does Fontayne, a UK citizen (Rome country) have rts because the transmission

was broadcast by companies that are nationals of (or habitual residents of) Rome

Convention countries?

Rule: Rome Convention

Use Art 6 (piggyback on broadcasters' pt of attachment) -- the performer gets

national treatment if (a) the performance is not recorded on a phonogram, and (b) is

transmitted by radio/television broadcast

Not Art 5 (producers) -- no producers in this case

Not Art 4 -- because performance didn't take place in a Rome country

Held

Fontayne did not have rights under Rome Art 6

i.e. look to the broadcast from which the recording was made

Was the infringing recording from the broadcasting that provides rights

(under Rome Art 6?)

BUT Fontayne can get national treatment pursuant to Art 7(1) of the EEC Treaty

(now Art 6(1) of the EC Treaty) as a natl member state of the European Union

Analysis

Ptfs argued that, even if the performance was only transmitted in one contracting

state, the performing artists must be granted national treatment in Germany, whether


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or not the contested reproduction of the transmission derived from that transmission

However, the court of appeals was correct -- Art 4(c) of the Rome convention only

provides national treatment if the performance has been copied from the broadcast

transmitted by the Rome country-based broadcaster

Notes

It seems like Ptf loses under Rome Convention, but could win under the EEC

treaty like in the Phil Collins case

Key differences btwn Rome/Berne

Berne: Focus on nationality of author

Rome: Focus on the place of performance

Rights Conferred by Rome Convention

Performers' Rights

Art 7 Rome / TRIPS Art 14(1) - Members must give performers the "possibility ofpreventing" prohibited acts: broadcasting w/o consent; fixation of an unfixed performance;reproduction

Note: "Possibility of preventing" does not explicitly create an exclusive right

Rome Art 12 - Performers are entitled to an "equitable remuneration" for public

performances

Note: The remuneration right has been an obstacle to the US joining the Rome

Convention. US Copyright law does not recognize a right of public performance for

sound recordings (except in the case of digital transmissions)

Producers' Rights

Art 10 Rome / TRIPS Art 14(2) - Producers may authorize or prohibit direct or indirect

reproduction of their phonograms

TRIPS Art 14(2) - Grants a rental right for producers (similar to the rental right for

computer programs under TRIPS Art 11)

Rome Art 12 - Producers are entitled to an "equitable remuneration" for public

performances

Broadcasting Organizations' Rights

Art 13 Rome - Grants several exclusive rights against unauthorized rebroadcasting,

fixation, and reproduction of their braodcasts

Subject Matter of Copyright ProtectionProtected Works

What IS Protected by Copyright

Expressions (TRIPS Art 9)


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Protects expressions only, not ideas, procedures, methods of operation, or mathematical conceptsas such

"Expression" means "literary and artistic works." (Art 2bis).

"Literary and Artistic Works" includes every production in the literary, scientific, and artisticdoman, whatever the form. Includes books, films, music, encyclopedias.. all types of stuff

Computer Programs (TRIPS Art 10)

Computer programs (source or object code) are protected as literary works (incorporates theBerne Convention 1971)

Compilations of Data (TRIPS Art 10)

Compilations of data, which by reason of the selection or arrangement of their contentsconstitute intellectual creation, are protected as compilations.

Graphical User Interfaces (GUIs)

EU Law

GUIs are not computer programs; not copyrightable as such

BUT a GUI MAY be copyrighted if it is its author's "own intellectual creation"

What is NOT Protected by Copyright (TRIPS Art 9(2))

Ideas. e.g. an author who write a tragic novel about star-crossed lovers can claim copyright for the

expression in the novel (i.e. the particular words used), but cannot get copyright for the basic idea of a

tragic love tale

Fixation RequirementsBerne Convention leaves it up to Countries to decide whether they want to require fixation

Originality or Creativity Requirements"Originality" is not mentioned in TRIPS or Berne

Both TRIPS and Berne require "intellectual creation", but only for compilations of data or for collections ofworks

How much "intellectual creation" is needed?

Feist Publications, Inc v. Rural Telephone Service Co (US 1991) (p. 133)

Facts

Rural = certified public utility that provides phone service to several communities in


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NW Kansas

Rurla has phone svc monopoly

Rural publishes an annually updated phone directory --> white pages list names, towns

& phone #s of subscribers; yellow pages list Rural's biz subscribers alphabetically by

category

Rural collects its own phone subscriber data

Feist = publishing co' specializing in area-wide phone dirs (covers larger range than

Rural)

Feist & Rural compete w/ each other for Yellow Pages advertising

Feist isn't a phone co — it pays for right to use phone listings from regional phone

carriers

Rural refused to license its listings to Feist

Feist used white pages listings w/o Rural's consent

1309 of Feist's listings in its 1983 directory were identical to Rural's, including 4

fictitious listings that Rural had inserted to detect copying

Issue

Are telephone directory white pages subject to copyright protection?

Held

Rural loses. Rural had valid copyright, but

The names, towns and telephone #s copied by Feist were not original to Rural; therefore,

the data was NOT protected by the © Act

Rule

To establish infringement, a ptf must prove 2 elements

1) Ownership of a valid copyright

2) Copying of constituent elements of the work that are original

Facts are NOT © able; Compilations ARE © able

The © is limited to the particular selection or arrangement of the compilation; not

to the facts themselves

Copyright Act: © protection requires more than a de minimis quantum of creativity

17 USC § 101 does not protect a collection of facts that are selected, coordinated,

and arranged in a way that "utterly lacks originality"

Analysis

In this case, the originality in the selection/arrangement was not creative

It was just in alphabetical order, etc.. The lowest limit of originality

CCH Canadian Ltd v. Law Society of Upper Canada (Sup Ct Canada, 2004) (p. 137)

Facts

CCH = legal publishing company (similar to Westlaw in the US)


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Law Society is a non-profit in Canada, which maintains the "Great Library", a collection

of legal materials

LS offers a photocopy service -- users can make their own copies of materials in the

Great Library; users can also order custom photocopies of legal materials

CCH sued for Copyright Infringement on 11 works

Trial ct found that copyright existed in the works

Ct of Appeal applied "sweat of the brow" -- found that because the works were more that

'mere copies', they were original

LSUC appeals -- argues that the headnotes, case summary, topical index, and reported

judicial decisions are not "original" w/in the meaning of the Copyright Act; therefore, not

copyrightable

Issue

Does LSUC breach copyright by either (1) providing the custom photocopy service) or

(2) maintaining self-service copiers and copies of the publisher's works?

(1) Are the publishers' materials "original works" protected by copyright?

(2) Did the Great Library authorize copyright infringement by running the copying

service?

Held

The publishers' works are "original works" and protected by Copyright Law

However, LSUC did not authorize infringement by maintaining self-service

photocopiers in the Great Library for use by patrons

Rule

In Canada, Copyright subsists in every original literary, dramatic, musical, and artistic work

An "original" work:

is one that originates from an author and is not copied from another work

Must not be so trivial that it could be characterized as a purely mechanical

exercise

Must be the product of an author's 'skill and judgment'

While by definition, "creative works" will be "original" (and protected by copyright),creativity is not required to make a work "original"

Analysis (see CB p. 141)

Copyright Protection

The "Sweat of the brow" approach is too low a standard

Too easy to obtain © -- it extended © protection in compilations beyond

selection & arrangement, and to the facts themselves


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The American "creativity" standard of originality is too high

Implies "novel" or "uniqueness" -- too strict (e.g. like for patents)

Canadian court used "Creativity" standard: requires an exercise of "skill and

judgment"

Selection of headnotes required skill/judgment (e.g. summarizing legal

principles and facts of the cases)

Skill = acquired knowledge, experience, etc

Judgment = discernment based on application of skill

Case summaries also required skill/judgment (e.g. choosing which portions

to extract, and how to arrange them in summary form)

Topical Index and Reported Judicial Decisions also required skill &

judgment

Authorization of Infringement

No evidence that the copiers were used in a manner inconsistent w/ Copyright law

Note 2, p. 143

The Canadian court's understanding of Feist is somewhat inconsistent with the US

court's holding in Feist

Canadian ct seems to have simply re-stated the Feist principle

e.g. Skill/Judgment vs Selection & Arrangement is roughly the same thing

My opinion:

The Canadian "Skill & Judgment" standard sounds like it requires more skill and

more judgment than the US standard

It "implies" expertise

But I think the US stand of "Selection and Arrangement" works out the same

It does not "imply" the same level of expertise

The Canadian court says a "creativity" standard implies novelty and uniqueness

I think the Canadian court misinterprets US copyright law based on Feist..

US does not actually require "creativity" as the Canadian the courts say it

I think "Creativity" as the Canadians are calling it, is the same as "Skill &

Judgment" in application

Special Case: Database ProtectionArt. 10 TRIPS Protects Compilations of Data

Provides for protection to those compilation of data “which by reason of selection or arrangement oftheir contents constitute intellectual creations”


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The protection in TRIPS Art 10 does not extend to the data or material itself and “shall be withoutprejudice to any copyright subsisting in the data or material itself”

i.e. TRIPS Art 10 is consistent with the Fact/expression dichotomy from Feist

EU Directive Provides Special Protection to Compilations of Data in the Form of Databases

The name of the EU Directive is EU Directive 96/9/EC

EU Directive Art 3 - Copyright

Mimics Art 10 TRIPS (Copyright Protection)

Protects

Databases, which by reason of selection/arrangements of data, constitute "the author's

own intellectual creation"

Does NOT Protect

The underlying content (similar to Feist)

EU Directive Art 5 - Exclusive Rights

Grants author exclusive rights to carry out, or authorize:

Temporary/permanent reproduction by any means, and in any form, in whole or part,

Translation, adaptation, arrangement, and any other alteration, of the database

Any form of distribution to the public of the database, or of copies of the database

But Note: The "First Sale" in the European Community of a copy of the database,by the rightholder, or with his consent, shall exhaust the right to control resale ofthat copy within the Community

Ask Prof: Does a legitimate purchaser of a database still haveto get authorization from the rightholder to sell his legitimately-owned, used copy of the database? Or can the legitimatepurchaser sell his used copy?

Any communication, display, or performance to the public

Any reproduction, distribution, communication, or performance to the public of anytranslated, adapted, or otherwise altered versions of the original database


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EU Directive Art 6 - Exceptions to Art 5 Rights

A lawful user of a database is allowed to perform any of the acts in Article 5 "for the purposes ofaccess to the contents of the databases and normal use of the contents by the lawful user"

Does this mean that a lawful user can copy the underlying contents, willynilly?

Countries MAY exempt four other uses:

Reproduction of a non-electronic database, for private purposes

Use for the sole purpose of illustration for teaching or scientific research. Two

requirements for this usage:

The source must be indicated

The degree/substantiality of the usage may only be to the extent justified by the

non-commercial purpose

Use for the purpose of public security, or for the purposes of an administrative or judicial

procedure; and

Uses based on other exceptions to copyright traditionally authorized under national law

EU Directive Art 7 - Sui generis database right

"Sui generis" right = a right for the maker of a database to prevent the extraction and/orre-utilization of the whole or of a substantial part.

"Extraction" means the permanent or temporary transfer of all, or a substantial part, of

the contents of a database to another medium, by any means, or in any form

"Re-utilization" means "any form of making available to the public all, or a substantial

part, of the contents of a database, by distributing copies, by renting, by on-line, or by other

forms of transmission"

Requirements for Protection

To qualify for protection, the author must have made a "substantial investment" - both

qualitatively and/or quantitatively - in the obtaining, verification or presentation of the

content

Term of Protection (see p. 147)

15 years, by default (In some cases, can be renewed indefinitely)

Begins from the date of completion of the making of the database

Expires 15 years from January 1 of the year following the completion of the database.

(e.g. if DB complete on 10/1/2011, then, sui generis expires on 1/1/2017

Exceptions to Protection

EU Directive Art. 8: lawful users of a database that is made public can useinsubstantial parts of the content (evaluated both qualitatively and quantitatively) for any


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purposes whatsoever

However, repeated and systematic extractions and/or re-utilization of insubstantial

parts ARE NOT permitted

EU Directive Art. 9: Countries MAY have the same exceptions to the sui generis right thatArt. 6 of the EU Directive provides for copyrights in databases

EU Directive Art 11: The EU sui generis database right applies only to nationals, orhabitual residents, of EU countries (i.e. does NOT apply to outsiders)

Who Qualifies for Sui Generis Protection

Nationals or habitual residents of EU countries

Businesses, if:

its "registered office, central administration, or principal place of business is

within the Community."

Note: If the business has only its registered office in the territory of theCommunity, its operations must be genuinely linked on an ongoing basis with theeconomy of a Member State

Foreign nationals, only if

The EU Council approves it (acting upon a proposal from the EU Commission),

AND

The foreign national's country has a reciprocal database right for EU nationals

who habitually reside in that country (a.k.a. reciprocity)

Criticisms of EU Directive

EU Directive protects facts -- the contents of the database

EU Directive ignores important copyright distinction btwn "ideas" and "expression"

Facts are not created; they are discovered

Policy: Society has an interest in having access to facts

The British Horseracing Board Ltd. v. William Hill Organization Ltd (ECJ 2004) (p. 150)

Facts

BHB is the governing authority for the British horse racing industry; maintains a large

database.

BHB works in conjunction with Weatherbys, maintained a DB of horse lineage (since

1973).

Weatherbys performs several functions in compiling horse and race data:


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Registration of data concerning horses, and their owners, trainers, and jockeys.

Compiling a list of running horses for each race occurring under BHB’s oversight.

(This occurs in a call center. A caller identifies himself, the code for the race he wants

to enter, the horse who will run, and the horse’s owner.)

Verifying qualifications (e.g. by having call operators speak with

trainers/owners/etc)

The cost of maintaining this database is estimated at 4 million pounds UK per year (a lot

of money)

Weatherbys recovers some of the costs by selling the information to bookmakers and

other information services. The data is available to publishers, bookies, and to the public.

William Hill is a bookmaker, which provides betting services through its offices

throughout the UK.

WH provides live coverage of horse races, as well as screens displaying race odds.

At the time of the dispute both services were provided by Satellite Information Services

(SIS); SIS received its horse racing information as a data feed from BHB.

Issue

Did WH violate BHB's sui generis rights?

i.e. What constitutes substantial investment?

Rule

EU Directive Art 7: DB can be protected by sui generis right to databases for which it canbe shown that there has been qualitatively and/or quantitatively a substantial investment inthe "obtaining, verification, or presentation of their contents"

"investment in the obtaining of the contents" means

substantial "investment in the verification of the contents" means

Held

BHB loses -- WH did NOT violate sui generis rights

Analysis

Investments in the creation of the data is NOT the same as investments the creation of

the database

Investments in the creation of THE DATABASE counts, but investments in the

creation of the DATA does not count

Definitions of "investements"

"Investment in the obtaining of the contents" refers to the resources used to seek outexisting, independent materials, and collect them in the database. The term doesNOT refer to the resources used for the creation as such of independent materials


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"Investment in the verification of contents" refers to the resources used to ensure thereliability of the contents of the DB, and to monitor the accuracy of contents duringits operation.

i.e. The "investments" to be considered are the ones that are independent of the

resources used to actually create the contents of the DB

Analysis of the Investments made in this case

The resources used to make a list of horses in a race and to carry out checks to

verify them do not constitute investment in the obtaining and verification of the

contents of the database (based on the interpretations)

Investments in the selection of the horses admitted to run in the race relates to thecreation of the data -- not to the creation of the database

Cannot be taken into account for assessing substantial investment in the

obtaining, verification, or presentation

The process of entering a horse on a list for a race requires a number of checks as

to the ID of the person making the entry, the characteristics of the horse, its

classification, its owner, and jockey

BUT cannot be taken into consideration -- that is investment in the creation

of the data, not the database itself

Notes

Selection/Arrangement

Art 3 protects only the selection/arrangement

WH did not copy selection/arrangement -- only took some data from database

(arguably?)

Data itself

Art 7 protects the underlying data in the database

WH took data

Examples of "Substantial Investment"

Cost of 'creating' data (e.g. the cost of conducting science experiments) does not count as

a substantial "investment"

But cost of 'getting' data (e.g. licensing, buying data from the company that did the

experiments), in order to create a database that uses the data is a substantial investment in

obtaining the data

Special Case: Folklore and Traditional Cultural ExpressionProf Notes

Issues:

Should be protected?

Which form of protection?


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Copyright? Sui generis law?

Mulpurrurru (1994)

WIPO Definition of "Folklore and Traditional Cultural Expression"

Any tangible or intangible, or a combination thereof, forms of creativity in which culture an

knowledge are embodied +

Passage from one generation to another

Issues

Should be protected? (see p. 157)

Practical problems

Problems identifying authors

Problems with originality

Problems with fixation

Policy Problems

Problems with assigning property rights to cultural/spiritual stories, etc

e.g. societies may treat works of art/stories/etc as property of the community

e.g. Historical significance (of the whole community)

(e.g. the culture didn't mean for the stories to be treated as property in the

Western sense)

Arguments in Favor

Provide economic gain for the society

Create a marketplace for the culture's works

Preserve/maintain the culture

Indirectly by incentivizing the work of the culture

Protect the culture from unfair misappropriation of that culture's works

Which form of protection?

Copyright? Sui generis?

Rationale

Copyright in General

Economic Incentive to creators to create works of art/authorship

Milpurrurru v. Indofurn Pty Ltd (Some Australian Court) (p. 158)

Facts

The case involved reproduction of artistic works on carpets.

Beechow Pty = Australian import co. Beechow carpets from Vietnam made in factories, under

agreement with Beehcow.


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The carpets were copies of aboriginal artworks protected under copyright law in Australia

Issue

Were the subject to copyright protection?

Held

The court held that the unauthorized reproduction caused a breach of copyright.

More importantly, customary Aboriginal laws were taken into account in quantifying the

damages, which had been suffered. This decision demonstrated a sensitive and flexible approach

of the court:

Exemplary damages were awarded for culturally based harm, the court acknowledging

cultural sensitivity.

The Aboriginal custom of not using the names of deceased artists was respected.

Lump-sum damages were awarded to enable Aboriginal clans to take account of

collective ownership of the designs.

Additional damages were also awarded for humiliation or insulting behavior to a

particular cultural group.

Rule

Under Australian copyright law, the copyright owner has the right to prohibit importation of

unauthorized copies of the copyrighted work.

Analysis

The court recognized the difficulty in applying the Western copyright regime to Indigenous

peoples.

This litigation brought to the fore the fact that the Western legal system and the Aboriginal

customary laws are two conflicting legal systems.

Aboriginal law emphasized group ownership and community involvement in decision-making,

whereas the Anglo-Saxon legal system focuses on individual ownership and personal rights.

Exclusive Rights of Copyright (Economic)Note: Berne does not define the meaning of "public" -- thus, "public" communications, displays, etc. are a matter

of National Law

See also notes on pp 171 - 174?

Reproduction (Copying)

What about Dramatic, Dramatico-Musical, Musical, etc???

The book doesn't cover it...

Author's Rights in His/Her Own Literary and Artisti c Works

Authors of literary and artistic works protected by this Convention have the exclusive right of

authorizing the reproduction of the works, in any manner or form (Berne Art 9)

Author's Rights in Cinematographic Adaptations/Reproductions of His/Her Works


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Author has the exclusive right to authorize the cinematographic adaptation/reproduction of his own

work, as well as the distribution of the adapted works (Berne Art 14(1)(i))

DistributionAuthor's Rights in General

Berne does not specifically recognize a right of distribution, because countries don't agree on rights

Different Countries' Approaches

Some countries (e.g. France) treat the right of distribution as part of the right of reproduction

Some countries (e.g. USA) treat the right of distribution as a separate right

Therefore, authors' rights are a matter of National law??

Authors Rights in Cinematographic Adaptations/Reproductions of His/Her Works

Author has the exclusive right to authorize the distribution of cinematographic adaptations of his/her

own work (Berne Art 14(1)(i))

Adaptation / Translation (Derivative Works)Authors' Rights in Their Own Works

Authors have the exclusive right to authorize adaptations, arrangements, and other alterations of their

works (Berne Art 12)

Authors have the exclusive right to authorize the translation of their works into other languages

(Berne Art 8)

Authors' Rights in Cinematographic Adaptations of Their Works

Authors have the exclusive right to authorize cinematographic adaptations of their works, whichincludes both the first cinematographic adaptation, AND any other adaptations of thatcinematographic work (Berne Art 14(2)

Example:

Say Author writes a novel. Screenwriter adapts the novel into a movie. Now, Playwright wants

to adapt Screenwriter's movie into a play. Playwright needs to obtain authorization from both

Author (the original author) AND Screenwriter (because Screenwriter has copyright in the movie

adaptation of Author's novel)

Public Communication, Performance, and Broadcast (Public Performance)General Intro

Author has the exclusive right to authorize the dissemination of a copyrighted work, whether the

dissemination is in tangible or intangible form (whaaat?)

Authors' Rights in Dramatic, Dramatico-Musical, and Musical Works

(e.g. opera, play, musical (play), or symphony)

Authors have the exclusive right to authorize


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The public performance of their works by any means or process. (Berne Art 11), and

Any "further communication" of such performances to the public (Berne Art 11), and

Does this mean, e.g. the author has the right to authorize the TVbroadcast of a recording of a stage play?

The public performance of, or any "further communications of" any version of the worktranslated in a different language (Berne Art 11)

Authors' Rights in Literary and Artistic Works

Authors' Rights in Broadcasts of Their Work

Authors of literary AND artistic works shall enjoy the exclusive right of authorizing: (Berne Art11bis)

The broadcasting of their works to the public by wireless means, and

any communication to the public by wire or by rebroadcasting of the broadcast of thework, when this communication is made by an organization other than the original one;and

the public communication by loudspeaker or any other analogous instrument transmitting,by signs, sounds or images, the broadcast of the work.

Compulsory Licenses May Be Possible

Countries are allowed to determine "the conditions under which" the rights under Art 11bismay be exercised (Berne Art 11bis)

Authors' Rights in Cinematographic Adaptations of Their Works

Authors have the exclusive right to authorize the "public performance and communication to thepublic by wire of the adapted/reproduced works"

Authors' Rights in Public Recitations of Their Works (Literary Works Only)

Authors have the exclusive right to authorize the public recitation of their work by any means or


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process, as well as any further communication of such recitation to the public (Berne Art 11ter)

Resale Right (Droit De Suite)

Authors have an inalienable right to recoup compensation for resales of the original works of art ormanuscripts (Berne Art 14ter)

Here, "Original" means the first work of art/manuscript

(after author's death, persons or institutions authorized by national legislation, may recoup)

Note: the right is OPTIONAL for Berne Countries. The right in this article apply ONLY if the country

permits

TRIPS Rental RightsIntro: In addition to incorporating the rights contained in Berne, TRIPS adds rental rights for authors of

computer programs and cinematographic works

Authors' Rights in Computer Programs and Cinematographic Works

Member countries shall provide authors (and their successors in title/ownership) the right to

authorize or prohibit the commercial rental to the public of originals or copies of their copyrighted works

(TRIPS Art 11)

Exceptions To Rights in Computer Programs

The author does not have authorize/prohibit rental if "the program itself is not the essential object of

the rental"

Exceptions to Rights in Cinematographic Works

TRIPS does not require countries to grant rental authorization/prohibition rights to authors UNLESS

such rental has led to widespread copying/piracy that materially impairs the author's exclusive

reproduction rights in that country

Authors' Rights in Other Types of Works

TRIPS does not specify. It is maybe up to Member countries to decide. (TRIPS only requires rentalrights "In respect of at least computer programs and cinematographic works...")

Exceptions to Exclusive RightsBerne Convention and TRIPS Agreement

Exceptions/Limitations to Right of Reproduction (in General)

Both Berne (Art 9(2)) and TRIPS (Art 13)--> copyright exceptions

The treaties only establish THAT there are exceptions

They don't establish WHAT the actual exceptions are

Countries set their own exceptions


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Berne/TRIPS recognizes differences in cultures -- different countries would want

different types of exceptions

Requirements

Must be confined to "certain special cases"

Must not conflict with a normal exploitation

Must not unreasonably prejudice the legitimate interests of the author/right holder

Note: Both Berne Art 9(2) and TRIPS Art 13 say the same thing here

Limitations on Reproduction Rights in Certain Types of Works

Note: We did not specifically study the exceptions under Berne Arts 2bis, 10,10bis, 11bis, and 13). The actual agreement does not offer much detail, either --just that countries may decide to limit the Right of Reproduction related to certaintypes of works

Political Speeches; Speeches Made During Legal Proceedings; Reporting and broadcasting of

publications (Berne Art 2bis) (i.e. Berne gives countries the discretion to exclude political speeches/legal

proceedings, wholly or in part

Quotations consistent with fair practice; Using works for illustration in teaching consistent with fair

use (Berne Art 10)

News-related exemptions (Berne Art 10bis)

Compulsory licenses for public broadcasts and performances (Berne Art 11bis(2))

Compulsory licenses for the making "cover" recordings (Berne Art 13)

Compulsory licenses to produce translations of copyrighted works (Berne Appendix) -- Only allowed

for developing countries

Rome ConventionRome Convention allows several specific exceptions to performers/producers/broadcast organizations'

rights, such as for:

"private use",

"use of short excerpts in connection with the reporting of current events," and

"uses solely for the purposes of teaching and scientific research

WTO Panel ReportUnited States - Section 110(5) of the US Copyright Act (WTO 2000) (p. 187)

Facts

US Copyright Act has provisions--the Homestyle and Business exceptions to Distribution

rights--which limit the rights of copyright owners to prohibit distribution of certain works

European Communities (EC) initiated a dispute settlement proceeding against the US

Issue

Did Sec 110(5) of US Copyright Act violate TRIPS?

Sec 110(5) is the "homestyle use" exception, and the "business" exception (it's long.. see


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p. 187, FN6)

Held

Homestyle Use Exception (US Copyright Act § 110(5)(A)) is consistent with TRIPS Art 9

Business Exemption (US Copyright Act § 110(5)(B)) is NOT consistent with TRIPS Art 9

Panel recommends that US modify the Copyright Act to conform with TRIPS

Rule

TRIPS Requirements: Limitations on exclusive rights must be

Must be confined to "Certain Special Cases"

Must not conflict with the "normal exploitation of the work"

Must not "unreasonably prejudice the legitimate interest" of the right holder

Analysis

"Certain Special Cases" (see p. 189)

"Certain" means known and particularized, but not necessarily 'exact'

"Special" means both quantitatively and qualitatively limited

Analysis of Homestyle Exemption

Certain? Yes

Statute expresses the degree of clarity in definition required

Statute does not need to specify specific equipment, but does sufficiently

describe the KIND of equipment that qualifies

Special? Yes

The impact of the provision greatly limits the number of establishments

(homes) that can qualify for the homestyle exemption

There was a limitation on the type of works that the homestyle exemption

applies to

Analysis of Business Exemption

Certain? Yes

Provision specified particular definitions of what size of business could

qualify; how many speakers it could play audio on; how many TVs it could

display audio/video on

Special? No

Too many establishments qualify as "businesses" -- statutory limitation

Note: This is where the Business Exemption fails. The court did not continue to

analyze it

"Not conflicting with normal exploitation of the work"

Use conflicts w/ exploitation if it enters into economic competition w/ the ways the right

holder normally extracts economic value from the right to that work, and deny them of

significant or tangible commercial gains


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"Normal exploitation" means something less than full use of an exclusive right (p. 193)

Homestyle Exemption

Homestyle Use exception does not conflict w/ TRIPS

Generally, rights holders do not license "dramatic" works (plays etc) for public

communication/transmission (e.g. no Broadway on the radio). So it's not an issue

Therefore, the homestyle exception, as limited to works other than nondramatic

musical works in its revised form, would probably not rise to the level of economic or

practical importance

i.e. Homestyle Use exception to exclusive rights does not conflict w/ normal

exploitation of works, w/in the meaning of TRIPS Art 13

In short, "normally", rights holders don't go after trhese types of institutions

"Not unreasonably prejudice the legitimate interests of the right holder"

"Prejudice to the legitimate interests of right holders" reaches an "unreasonable level" if

an exception or limitation causes (or has the potential to cause" an unreasonable loss of

income to the copyright owner

Homestyle Exemption

Small shop and restaurants are not the type of establishments where rights holders

would attempt to do business by licening.

They are small, and playing music is often incidental to their services. i.e. the

public performance of e.g., music on the radio, does not increase revenue for the

businesses, nor does it impair the copyright owners' ability to earn revenue from the

music.

Note: Points 2 and 3 overlap

Note on the Applicable Law

The WTO Panel was concerned with the US Copyright Act's conformance with Articles

11bis(1)(iii) and 11(1)(ii) of the Berne Convention, as they were incorporated into TRIPS Art 9.

Countries' Approaches to Copyright ExceptionsSpecific, Enumerated Exceptions vs. General Exceptions

Some copyright exceptions set forth in detail the specific activity that is exempted

e.g. Argentina

Advantages

Easy to apply to disputes/legal analysis

Disadvantages

Not scaleable

Most copyright exceptions set forth open-ended standards that require case-by-case analysis

e.g. USA fair use standard (4-step test)

Advantages


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Harder to apply to disputes/legal analysis

Disadvantages

More easily scaleable (e.g. to accommodate new technology)

Payment-Based vs. Free Uses

Some copyright exceptions require payment to the copyright holders

e.g. Germany has some copyright exceptions that require "equitable remuneration" to the

author

e.g. Some US "compulsory" licenses to the copyright holder, e.g. for the right to "cover"

copyright-protected music

Most copyright exceptions, amoung countries, follow are free

What constitutes "Fair Compensation?"

Padawan SL v. Sociedad General de Autores y Editores de Espana (SGAE) (European Ct of

Justice 2010) (p. 199)

Facts

SGAE is a body which is responsible for the collective management of intellectual

property rights in Spain.

Padawan is a company that sells CD-Rs, CD-RWs, DVD-Rs and MP3 players.

SGAE claimed payment from Padawan of the ‘private copying levy’ provided for

in Article 25 of the Spanish IP Law for 2002 to 2004.

Padawan refused, saying that the application of that levy to digital media,

indiscriminately and regardless of the purpose for which they were intended (private

use or other professional or commercial activities), was incompatible with Directive

2001/29.

In June 2007 the trial court upheld SGAE’s claim and ordered Padawan to pay.

Padawan appealed to the Audiencia Provincial de Barcelona

Issue

Does the indiscriminate application of the private copying levy (specifically w.r.t.

digital reproduction equipment, devices, and media clearly intended for uses other

than the production of private copies) comply with Directive 2001/29?

Held

No -- The indiscriminate application of the private copying levy to all types of

digital reproduction equipment, devices, and media does NOT comply with Article

5(2)(b) of Directive 2001/29

Rule

The concept of "fair compensation," described in the DIrective, is an autonomous

concept of EU law, and must be interpreted uniformly throughout the EU

Analysis

Policy of EU Directive 2001/29

EU Directive 2001/29 is intended to harmonize certain aspects of the law on


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copyright and related rights in the information society, and to ensure that

competition in the internal market is not distorted as a result of Member States'

different legislation

There is a necessary link btwn the application of the private copying levy to

the digital reproduction equipment, devices, and media; and their use for

private copying

A system for financing fair compensation is compatible with the

requirements of a 'fair balance' ONLY IF the digital reproduction equipment,

devices, and media concerned are liable to be used for private copying, and

therefore are likely to cause harm to the author of the protected work.

Private Copies do not cause harm to author / "Fair Balance"

However, where (as here) the equipment has been made available to natural

persons for private purposes, it is unnecessary to show that they have in fact

made private copies w/ the help of that equipment (thereby causing harm to the

author)

The people are righly presumed to be able to benefit fully from the

functions associated with that equipment, including making private copies (in

this way, the court maintains the "fair balance")

Moral RightsPurpose

Moral rights are designed to protect the interests of the author in the paternity and integrity of the work (i.e.

rights to control the modification, mutilation, destruction of the works)

Berne requires only 2 moral rights: Attribution and Integrity

Art. 6bis Berne explicitly GRANTS moral rights

The author shall have, even after the transfer of her economic rights, the right to:

Claim authorship of the work (a.k.a Attribution)

Object to any distortion, mutilation, other modification or derogatory action in relation to the work

which would be prejudicial to his honor and reputation (a.k.a Integrity)

After the death of the author, the moral rights should last at least until expiration of the economic rights

Exception: if, at the time of ratification/accession to Berne, the country does not provide for protection


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after death, the countries MAY provide that some of the rights may cease after death

The means of redress shall left to the legislation of the country where protection is claimed

Art. 9 TRIPS specifically LEAVES OUT moral rights

"Members shall comply with Articles 1 through 21 of Berne" (which should include Art 6bis for moralrights... BUT

“... Members shall not have rights or obligations under this agreement in respect of the rights conferredunder Article 6bis of ... [Berne] or of the rights derived therefrom”

Moral Rights and the Civil Law CountriesBerne Art 6bis only guarantees 2 moral rights: paternity and integrity

In Civil Law countries, "moral right" also covers the divulgation and the right to repent or withdraw

Two Theories of Moral Rights

Dualist Theory

Moral rights are treated separate from, and prior to, economic rights.

Thus, moral rights must be treated under different legal rules

France follows this system

Monist Theory

Moral rights and copyrights must be treated under a single set of legal rules

Germany follows thsi system

The Moral Rights

Paternity Right (p. 218)

Paternity: right to be identified as author – this must be asserted by authors (see Berne Art 6bis(1),casebook p. 214)

Author can claim recognition of authorship by 3rd parties

Negatively

In a defensive way -- to prohibit 3rd party claims of authorship

Positively

To authorize how a work should bear the author's designation, and what

designation should be used (e.g. real name, pseudonym)

Even with a pseudonym, the author can disclose his real name, and claim paternity

of the work

Transfer/Waiver

Some countries do not allow rt of paternity to be transferred in any case


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e.g. France

Others allow a sliding scale

Integrity right

Integrity: Author's right to object to distortion, mutilation, or other modifications of the author'swork (see Berne Art 6bis(2), casebook p. 214)

Some countries do not allow any modification

e.g. France

Others allow some (w/in acceptable, reasonable limits -- determined by jurisdiction)

Transfer/Waiver

Some countries strictly stress inalienability of this right

Others allow author to contract away, or to waive, integrity rights

Divulgation right (a.k.a. right of disclosure)

Right to be the first person to "disclose" or publish the work

Right to repent or withdraw

"Right of access to the sole or rare copy … in another person's possession"

Right to Prevent Destruction

Art 6bis Berns does not discuss prohibition of destruction

Presumably, each country may decide for itself whether or not to grant authors the right to

prohibit destruction

Transferability of Moral Rights

Berne Art 6bis does not address whether rights can be freely transferred.

Presumably, each country may decide for itself whether or not to allow authors to transfer their moral

rights

Many countries (e.g. France/Germany) treat moral rights as inalienable during life, but transferable bywill upon death

(Because moral rights belong to the actual author -- the work is an extension of the person. You

can't freely transfer 'a part of you' to someone else)

Enforcement after death

There is no unanimity as to whether pertuity of moral rights exists or should exist (see p. 216)


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In some countries: the legal successors of the author (his family members or other person as

determined by laws) clearly have to enforce the moral rights, in "nomine auctoris" (i.e. the name of the

author -- the successors must act in the author's interests, not in their own) (e.g. France)

This is why the French court allowed Huston's heirs to win

Moral Rights in the United StatesThe US has resisted any formal recognition of moral rights for authors -- the US obtained the express

exclusion of moral rights from incorporation into TRIPS Art 9

The US believes that federal and state laws outside of copyright approximate the moral rights of

integrity and attribution required by Berne

e.g. Lanham Act for misappropriation of marks; unfair competition; prevention of free riding/passing

off; etc

But US recognizes moral rights for a limited class of "works of visual art" under the Visual Artists Rights

Act (VARA)

VARA applies ONLY to a single copy of

a "painting, drawing, print, or sculpture," or

a "still photographic image produced for exhibition purposes only, or

a limited edition of 200 copies or fewer of such works, signed and consecutively numbered by the

author

VARA does NOT apply to any works made for hire, motion pictures, and many others

Case LawUSA Treatment of Foreign Authors

Gilliam v. American Broadcasting Companies, Inc. (2d Cir 1976) (p. 223)

Facts

MP = Monty Python

Scriptwriters' agmt btwn MP & BBC says:

Authorship

MP = authors of various comedy shows (tv shows)

BBC's rights

BBC = final authority to make changes.

BBC = only make "minor changes" w/o consultation w/ the writers

BBC CANNOT to alter the program once it's been recorded

Licensing

BBC MAY license transmission of the tv programs in any overseas territory

Time-Life (TL) got rts to distribute MP shows in US

TL's rights

Edit programs ONLY FOR "insertion of commercials, applicable censorship

or governmental rules/regulations, and the like"

ABC + TL


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Agreed to broadcast each MP program "in its entirety"

Issue

Violation of integrity right?

i.e. could BBC give ABC/TL rights to modify the works (esp when BBC did not itself

have those rights)?

Held

Violation of moral rights -- MP wins injunction

Rule

One who obtains the permission to produce a derivative work may not exceed the specificpurpose for which permission was granted

Analysis

MP = author, BBC = licensee

Copyright remains w/ MP (bc MP = original author)

Thus, BBC's use of work = limited by scriptwriter's agmt

BBC was not entitled to make unilateral changes to the script, and was specifically

prohibted from altering the recordings once made

Also, regardless of ABC's rights to broadcast an edited program, the cuts made

constituted an actionable mutilation of MP's original work

Even though work is an authorized derivative work, it can still violate the author's rights

in ©

Article 43(a) of Lanham Act discusses "unfair competition"

Note: Lanham Act usu. Applies to trademarks, but in this case, Invoked to prevent

misrepresentation of an artist's work (unfair competition)

Ct held: Lanham act = violated if a representation of a product, although

technically true, creates a false impression of the product's origin

Can be used even where no registered trademark is concerned

Concurrence (in the result, but not in the judgment)

No need for additional cause of action beyond copyright infringement

Lanham Act does not come into play

Does not deal w/ artistic integrity

Use contract law

If licensee violates contract, then hold breach of contract

Notes

No Moral Rights in US

US does not formally recognize moral rights


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Not in © law

US even expressly EXCLUDES the incorporation of moral rights provided

in Art 6bis of Berne into TRIPS Art 9

Moral Rights equivalents provided by other federal/state laws

VARA (Visual Artists Rights Act)

Provides moral rts for limited class of "works of visual art" (17 U.S.C.

106A)

Sooo… why not? (see p. 230 -- Who might be opposed to formally recognizing moral

rights?)

Who might be opposed to recognizing moral rights?

Constitutional concerns

Congressional power to enforce

1st Amendment -- freedom of speech

Big corporations -- entertainment industry

Piecewise moral rights codification allows uncertainty

Uncertainty = more power for Corporations

Foreign Treatment of USA Authors

Huston v. Société Turner Entertainment (Cour de Cassation 1991) (p. 214)

Facts

Huston = director of movie in black & white, made in U.S.

Original agmt said:

Orig movie studio owns all copyrights to the movie

Huston has no claim of authorship or moral rights in the movie

Turner Entmt bought the © to the movie; made a colorized version

Huston's estate objected, and sued to stop the dissemination of the movie in France

French ct of appeal rejected Ptf (Huston's heirs)

Issue

Violation of moral right of integrity?

Held

Ptf wins -- Distribution in France should be enjoined

French Ct of appeals' decision overturned -- case remanded to Ct of Appeal

i.e. follow moral right of integrity

(by Ct of Cassation (highest ct of France)

Rule


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French Copyright Law -- The integrity of a literary or artistic work in France must not beimpaired. This applies independently of the state in which the work was first published

Analysis

The court of appeals misinterpreted the copyright statute on moral rights

The ct of appeal was also wrong in arguing that granting Moral rts law would supplant

US law and the disregard of contracts made in the United States

Notes:

This case took place in 1991, 2 years after US joined Berne. Even so, it appears that

France decided, independently, to honor the US author's moral rights because his heirs were

acting "in nomine auctoris" (in his interests)

French ct does not allow the transfer of moral rights

Even if parties contract the moral rights away

But the parties (i.e. Huston) contracted away the moral rights in the US… So the

heirs may continue the moral right??

Huston's estate sued here (i.e. Huston died)

France = Dualistic view

Moral rts can be enforced after economic rts expire

Is this national treatment?

Yes -- France's treatment of author is "at least as favorable" as the US

(is that the correct way to read this?)


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02 copyright and neighboring rights

Documents