02 Copyright and Neighboring Rights Introduction The Rights of Authors in General Copyright = 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 Convention Intro 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... 1 of 38 12/9/2013 8:56 PM
Law school outline for International IP - Copyright/Neighboring Rights
The casebook used in my course was: International Intellectual Property, 2nd Ed., by Chow & Lee
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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
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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
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
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,
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
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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