Economic rights and infringement

Prof. Estelle DerclayeUniversity of NottinghamTurin, 25 October 2012

I. Economic rights

• Economic rights = most harmonised in the EU (except: right of adaptation and public performance)

• Also right of lending and rental – see later• Infosoc Directive (2001):

– Reproduction – art. 2– Communication to the public (+ making available

right) - art. 3– Distribution – art. 4 (+ exhaustion principle)

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Infosoc Directive, chapter 2 Art. 2 – Reproduction right

• “Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part:

• (a) for authors, of their works; • (b) for performers, of fixations of their performances; • (c) for phonogram producers, of their phonograms; • (d) for the producers of the first fixations of films, in respect of the

original and copies of their films; • (e) for broadcasting organisations, of fixations of their broadcasts,

whether those broadcasts are transmitted by wire or over the air, including by cable or satellite.”

• Infopaq decision, July 2009 ECJ

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Art. 3 – right to communicate and making available to the public

• “1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.

• 2. Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them: …

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Art. 3 – right to communicate and making available to the public

• (a) for performers, of fixations of their performances; • (b) for phonogram producers, of their phonograms; • (c) for the producers of the first fixations of films, of the

original and copies of their films; • (d) for broadcasting organisations, of fixations of their

broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.

• 3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.”

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Interpretation of “communication to the public”

• SGAE v Rafael Hoteles (2006), case C-306/05 • 1. While the mere provision of physical facilities does not as

such amount to communication (…), the distribution of a signal by means of television sets by a hotel to customers staying in its rooms, whatever technique is used to transmit the signal, constitutes communication to the public within the meaning of Article 3(1) of that directive.

• 2. The private nature of hotel rooms does not preclude the communication of a work by means of television sets from constituting communication to the public within the meaning of Article 3(1) of Directive 2001/29.

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CJEU case law on communication to the public

• distributing TV signals in hotels generally (SGAE)• providing, in the hotel’s bedrooms, apparatus (other than tvs

and radios) and phonograms in physical or digital format so that the guests can hear them by means of the apparatus (Phonographic Performance v Ireland)

• transmitting broadcast works, via a television screen and speakers, in a pub (Football Association Premier League)

• distributing radio signals (music) in a dental practice (Società Consortile Fonografici (SCF) v. Marco Del Corso

• Communication to the public must be interpreted in accordance with international conventions inc. WCT, WPPT

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CJEU case law on communication to the public: factors

• 1) public means an “indeterminate number of potential [television] viewers or [radio] listeners” and a “fairly large number of people”

• 2) must be a new public i.e. “different from the public at which the original act of communication of the work is directed”

• 3) public must be targeted and receptive• 4) public is present at the place of the operator’s (hotel, pub, dentist)

transmission, but is not present at the place where the communication originates, that is to say, at the place of the representation or performance which is broadcast

• 5) operator is intentionally distributing the works i.e. without the intervention of the hotel, pub or dentist, the new public cannot receive the signals

• 6) the operator’s communication is for profit • + the mere provision of physical facilities is not a communication to the

public.

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CJEU case law on communication to the public: factors

• Irrelevant factors:• 1) whether the customers have or not switched the

TV or radio on - it is sufficient that the apparatus and the signal or protected content are provided (art. 3 Infosoc and art. 8 WCT say “in such a way that the persons forming that public may access it

• 2) which technique is used to transmit the signal • 3) whether the place where the communication

takes place is private or public

Airfield – AG opinion

• Question 1: Must the provider of satellite ‘bouquets’ obtain an authorisation from copyright owner when retransmitting tv channels indirectly?

• Communication to the public by satellite = autonomous notion which must be interpreted uniformly

• The communication is indirect because the broadcasters uses Canal Digitaal to code its signals by the intermediary of Airfield which uploads them

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Airfield

• Communication to the public refers to ‘le grand public’ and thus excludes professionals and can be only potential. Thus the acts of retransmission which correspond to capturing the signals are not such a communication but only the provision of signals which attain Airfield’s subscribers

• These may be different from the viewers of the broadcaster => new public (as per SGAE)

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Art. 4 - Distribution right

• 1. Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.

• 2. The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent.

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Economic rights

• Secondary liability is not harmonised but may be more difficult to harmonise as in many Member States, this touches upon tort law, an area of debatable Community competence

• See later next week

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Moral rights

Moral rights

• 1. Introduction• 2. The Berne Convention• 3. The content of moral rights • 4. WIPO treaties : WCT and WPPT• 5. Main differences in national laws

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1. Introduction

• Moral rights are personal to the author/creator. A company cannot have moral rights

• Independent of the author’s economic rights and inalienable (exception: Germany and Austria)

• Civil Law origins - French ‘droit moral’ or ‘droits moraux’ >< common law: copyright centers on economic - not a personal right.

• Concerns an author’s relationship with his/her work (name, honour and reputation) rather than commercial value/exploitation of the work

• The two main moral rights are the rights of:1) Paternity or attribution – the right of the author to be made known

to the public as the creator of the work; and2) Integrity – which prevents distortion of the work

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2. International acceptance of moral rights

The foundation for international protection of moral rights is in Article 6bis of the Berne Convention.

The Convention mandates two types of rights which must be granted by the member countries:

1. Paternity (attribution) right

2. Integrity right

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2. The Berne Convention

• Art. 6 bis : 2 moral rights: • Attribution : "(1) Independently of the author's economic

rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work... ”

• Integrity : (…) the right "to object to any distortion, mutilation or other modification of, or other derogatory action in relation to... [his] work, which would be prejudicial to his honour or reputation".

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3. Content of the moral rights: Paternity or attribution right

-General rules applicable in most countries:- Right to claim authorship of a work even after the transfer of copyright.- Right to be identified in relation to the work when work is commercially exploited.- Identification should be reasonably prominent on the work- No identification necessary if reasonable not to identify the author.

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Integrity right- General rules applicable in most countries:- The right of integrity or to object to derogatory treatment

protects the artist’s personality as expressed in the work- The right to object to any derogatory treatment allows the

author to sue if there is any action (Berne convention) which can be an addition, deletion, in short a change, but also simply an action without change to the work which is prejudicial to the author’s honour or reputation.

- Depending on the country it includes destruction (see below)

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Right against False Attribution

• Right of ANY person against misleading and deceptive attributions = so does not only belong to authors

• Reverse of paternity right

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Other moral rights- Conferred in some jurisdictions but mainly in civil law

countries - Right of an author to choose whether his/her work should

be published or not (divulgation right)- The right of retractation ie to withdraw a work (subject to

compensation)- Right of access – right of author to see the original of the

work (eg painting) mainly to exploit it (eg make photographs)

- The right to privacy in respect of photographs commissioned for private or domestic purposes (“the privacy right”). Belongs to the commissioner of the photograph

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Duration of moral rights

• Unclear as not stated in article 6bis of the Berne Convention

• Depends on the country but in most, duration is the same as economic rights (see following slides for more detail)

• Any infringement of the right occurring after the author’s death is actionable by his/her heirs or if no heirs, the state

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Waivers

- Moral rights are inalienable between living persons but transferable upon death and can be waived

- Lenient in common law countries >< strict in civil law countries.

- Publishers with their superior bargaining position often obtain authors’ consent to acts or omissions that might otherwise infringe their moral rights.

- In addition, employees (ie for works made in the course of employment) enjoy reduced or even no moral rights in the UK (similar provisions allow this in other common law countries eg Australia) – see more on following slides

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4. The WCT and the WPPT

• WCT : nothing on moral rights• WPPT : art. 5 : performer’s moral rights"(1) Independently of a performer's economic rights, and even

after the transfer of those rights, the performer shall, as regards his live aural performances or performances fixed in phonograms, have the right to claim to be identified as the performer of his performances, except where omission is dictated by the manner of the use of the performance, and to object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation."

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Main differences

• Duration : I, F : perpetual

• Right of divulgation: some do recognise, some don’t or recognise an economic right of publication (UK)

• Right of attribution : UK: assertion for right to object to false attribution >< other European countries

• Right of integrity : absolute >< limited right, variations with type of work

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UK

• 4 moral rights in the UK: paternity, integrity, false attribution and privacy

• Paternity: – Right does not arise automatically; need to be asserted by

author– Extensive exceptions some e.g. technical or functional

works (computer programs, computer-generated works, typefaces…), works made for the purpose of reporting current events, contributions in a newspaper, magazine or periodical, encyclopaedia or similar work

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UK

• Derogatory treatment: addition, deletion, alteration or adaptation of the work; mutilation or distortion of work or the change is prejudicial to the author’s reputation or honour. Includes destruction (Harrison v Harrison case)

• Exceptions include: computer program, a change of key or register for a musical work or a translation of LD work not a treatment of the work

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Example

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France• Right of paternity:• According to French courts, an editor cannot reveal

the name of the author if the author chose to remain anonymous or chose a pseudonym.

• The name of the architect must be mentioned on the building. However, if the architect’s work is not original, his name must not be mentioned. Similarly, his name must be mentioned on photographs of the building.

• On the contrary, the right of attribution of an author of design or of a work of applied arts, may be limited.

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France• Right of integrity: case law• Changing the context of the work can be a breach (>< UK)• Dramatic works: The director of a play must respect the

author’s conceptions. In particular the director cannot change the play’s ending and the scenic indications such as to distort the work. He cannot take a character out of his environment.

• Musical works: A song (or a work in general, such as a picture) cannot be used for an advert or a broadcast which would go against the conceptions of the author

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France • Works of visual and plastic art: • The following acts been held to infringe the integrity right :

– to sell a work in separate parts– to centre a photograph differently– to present a drawing upside down

• TGI. Seine, June 7, 1960; Paris, May 30, 1962, D., 1962, 572; Cass. July 6, 1965, Gaz. Pal., 1965, II, 126: the owner of a refrigerator’s panels decorated by Buffet wanted to sell the Different panels or parts of the refrigerator separately. The Court of Appeals of Paris decided that it is an abuse of his right of ownership in the work for the owner to sell the parts separately. The owner can only sell them in their integrity.

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France

• Status of the employed author: • There is never a transfer of moral rights in case of

employment. The author can demand his name to be mentioned, even after the termination of the employment contract, as the right is imprescriptible.

• The employer can impose on the author certain constraints justified by aesthetic or financial reasons. The author cannot in these cases, object to such modifications, and invoke his moral right of integrity.

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France

• Partial waivers are nevertheless allowed - not in advance but a posteriori

• The Court of Appeals of Paris found that an employed American ghost-writer who had waived his right of attribution under U.S. law, could exercise his right in France, because the waiver was against the French ‘ordre public’. See Paris 1st ch., Feb. 1 1989, Anne Bragance, La Nuit du Sérail, RIDA, 1989, n°142, 301. See also the John Huston case.

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Angelica Huston v Turner Entertainment

• [1992] ECC 334 (French Supreme Court) • A black and white film, “Asphalt Jungle”, directed

by John Huston, colourised by Turner Entertainment (the producer’s successors)

• Heirs sued in France for breach of integrity right to prevent showing the colourised version on TV

• Ruling: as with previous case re attribution right, Huston’s waiver in US contract is against French ‘ordre public’.

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The US and moral rights

• Even if US joined the Convention in 1989, no protection for moral rights except the Visual Artists Rights Act 1990 (VARA).

• VARA gives some moral rights protection to paintings, drawings, prints, sculptures, and photographs produced for exhibition purposes.

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Assignment and licensing

Assignments

• The main provision as regards assignments is s. 90

• Concept: Assignment means transfer: this means the copyright goes, leaves from A to B. A (the author if he is the first owner for example) is not the copyright owner anymore.

• Possible to assign copyright in future works• Form: royalty or a lump sum, can be for some

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Assignments

• Conditions: in writing and signed by or on behalf of the assignor, clearly identify work(s), consideration

• What if orally? The equitable rule applies i.e. so long as there is consideration, an oral contract purporting to assign will be enforceable

• Exception to these rules: for film production: when there is a contract between an author and a film producer, the author is presumed to have transferred his/her rental right to the film producer (s. 93A); springs from Rental right Directive art. 2(6)

• Moral rights are non assignable between living people, s. 94, but are on death (s. 95).

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Licenses

• Permission to do an act that would otherwise be prohibited without the consent of the copyright owner

• Exclusive and non exclusive: difference• Exclusive licensee can sue infringers even without the

copyright owner; action can be brought by both the excl. licensee and the copyright owner

• But formality to accomplish: licence must be in writing and signed by or on behalf of the licensor

• Implied licences: see Ray v Classic FM40E. Derclaye 2001-2012

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Civil law countries

• More formalities, author is more protected (e.g. France, Belgium, Germany)