European Intellectual Property Review
2005
Authorship, ownership of right and works created by employees: which law applies?
Paul Torremans
Subject: Intellectual property. Other related subjects: Conflict of laws. Media and entertainment
Keywords: Authorship; Choice of law; Copyright; Employees works; Films
*E.I.P.R. 220Authorship of a copyright work and (first or initial) ownership of the copyright in such a work have long been considered straightforward issues. The rules concerning these issues were hardly ever discussed in great detail. This hides complex issues, even at a national level. These issues can no longer be ignored, especially at an international or transnational level, and a reference to the concept of territoriality will not be sufficient to solve all the problems involved. In order to deal effectively with complex cases such as cross-border infringement of copyright or cases in which rights need to be cleared for more than one country, as well as in order to answer the (apparently) simple question whether one is the owner of the copyright in a work in a number of jurisdictions, vital issues arise in terms of applicable law. Which law will determine who is the author and who is the owner of the copyright in a work? Copyright law may not have straight answers to these questions, but this article will attempt to set out the alternatives.
Authorship of copyright works
Authorship could be said to be a factual matter. The author of a work is the person who creates it: the writer, painter, sculptor, etc. The Copyright, Designs and Patents Act 1988 sets off in s.9(1) by restating that rule. However, it does not stop there. A set of legal fictions follow. For example, the author of a film is taken to be the person who makes the necessary arrangements for the making of the film.1 English law has traditionally referred to the producer in this respect, but other legal systems have traditionally (also) referred to the director. As a result of European harmonisation attempts on this point, English law now refers to the producer and the principal director. In general, a different person could be designated as author, according to the choice of the applicable law.2 Despite the first impression that authorship is a factual or at least straightforward issue there is clearly a legal rule involved and this rule may differ depending on the applicable law. There is therefore an identifiable need for a choice of law rule on this point. This does of course not answer the question on which connecting factor such a choice of law rule should be based. It does show, however, that it is essential not to engage in a definition of the concept of the author or the creator at this stage. This is not an issue for private international law; instead it is an issue of substantial law that is to be decided by the applicable law. That applicable law has not yet been chosen and the choice of law rules in private international law should therefore limit themselves to choosing that law and should not get involved in issues of substantial law that can only be addressed in a next stage once the applicable law has been chosen.
Two obvious laws could be chosen as the law applicable to the issue of authorship. The law of the protecting country is an obvious candidate, if the function of copyright is to reward the author. This starting point is based on a utilitarian view of copyright. Like any other form of intellectual property rights copyright is then seen as a restriction on competition at one level (e.g. the reproduction, distribution of communication to the public level) in furtherance of competition at another level (i.e. the creation or production level). Copyright is in this view a tool of economic policy that serves to regulate competition and to achieve a fair and equitable level of protection for all sides involved. This is achieved by putting certain restrictions in place, and there is a clear link between these restrictions and public policy as they restrict competition and touch on competition law. It could seem logical to apply the law that authorises the restriction and that determines its scope to the authorship issue if the reward is to take the form of a restriction on competition. After all, the author could well be the beneficiary of the right that is created. It may therefore seem logical that from a public policy point of view the granting of a restriction necessarily includes the issue of to whom it is granted, and the choice for the law of the protecting country to determine authorship allows this public policy concern to be taken into account in practice. However, this only goes as far as to recognise that public policy concerns are an issue on this point. There may be other issues though and one should not rush to the conclusion that that link with public policy leads inevitably to the necessary application of the law of the protecting country on this point. Other issues may point in another direction and may eventually prevail, especially as Art.5(3) of the Berne Convention does not impose an obvious choice for the law of the protecting country on this point. A strict territorial approach cannot therefore be taken for granted and nor can it be seen as an inevitable conclusion.
The law of the country of origin could be an alternative, though. The author is also the first point of contact for those parties that are interested in the worldwide exploitation of the copyright in the work. Such a *E.I.P.R. 221worldwide exploitation has become the norm, for example on the internet, and it is important that the same starting-point is available on a worldwide scale. The logical aim of identifying the same author for the same work in every jurisdiction can be achieved if the issue of authorship is to be governed by the law of the country of origin, as each work has one country of origin only. One should, however, define the concept of origin more closely and a strict reference to the rules of qualification may not be the best approach. The key element is to have a choice of law rule that refers to a single law on this point. The concept of authorship refers to the creation of the work or to its origin. An easily identifiable origin of the work may be found in its first publication. It is therefore suggested that one should define origin as first publication and apply the law of the place of first publication of the work to the issue of authorship.3 For works that have not yet been published, reference can be made to the centre of main interests of the person who de facto created the work, as this concept avoids the use of legally defined concepts such as habitual residence that require the application of the applicable law which one is trying to identify. Both first publication and the centre of main interests are more precise tools to identify a close or the closest connection between the work and its creation in terms of authorship on the one hand and the applicable law on the other hand. Admittedly there is a problem of substantial IP law when it comes to publication on the internet, but this is a wider IP problem and needs to be addressed as such. It should not stand in the way of the use of such IP concepts for choice of law purposes. And one could argue that, just like communication, the concept of publication has in it the link with the public. The idea of publication is that the public can gain access to the work. It may therefore be a workable solution to refer to the server to which the work is uploaded and its location when the issue of publication on the internet is discussed. Finally, one can envisage that the parties may be allowed to overrule the presumption of linking authorship with the law of first publication or centre of main interests by demonstrating a closer connection with another law.4
It is submitted that the latter solution, i.e. the “origin” single law approach, is the better option.5 It would facilitate the international exploitation of the work, eliminates the artificial situation in which a single work could have different authors in different countries, and English case law, as well as the statute and the Convention, do not preclude it.
Apart from being used often to identify the owner of the copyright, the definition of authorship is also used to identify the beneficiary of moral rights. Indeed, one cannot deny that in practice this may well be a major role for the concept of authorship from which the majority of disputes in relation to authorship arise. The Copyright, Designs and Patents Act 1988 grants to the “author” of the work the right to be identified and the right to object to derogatory treatment. If someone is not identified as the author, he cannot be granted moral rights from a substantive law point of view. Since moral rights have been recognised as elements of human rights in international human rights conventions and since they are seen as minimal guarantees to protect the basic rights of the author,6 it can consistently be argued that moral rights touch public policy and it must therefore follow that the identification of the author, only for the purposes of the attribution of moral rights,7 must also touch on public policy. The provisions of ss.9 et seq. of the Copyright, Designs and Patents Act 1988 should apply whenever the law of the country of origin grants an insufficient level of protection for moral rights, as compared with the level offered by the provisions of the law of the forum. This is a clear exception to the choice of law rule set out above, but it remains an exception rather than a second rule that takes over in a substantial part of all cases. The normal rule stands and the law that is applicable in its application will normally prevail as international copyright conventions will impose a standard minimum moral rights protection in each national law. Only in those cases where that minimum standard is plainly not respected or where it falls substantially short of the level of protection offered by the law of the forum will the exception operate and the law of the forum on this point overrule the applicable law on public policy grounds.
The French Cour de Cassation applied the French authorship rules as mandatory rules for the purpose of the identification of the author of the film Asphalt Jungle. John Huston was, in his capacity as director, not the author under the law of the country of origin,8 the United States. Under US law he was therefore not entitled to moral rights protection. The French Cour de Cassation argued that lack of moral rights protection in the United States would lead to a French court being obliged to deny moral rights protection in France. This was unacceptable from a French public policy point of view. The problem was solved through the mandatory *E.I.P.R. 222application9 of the French rules on authorship, according to which Huston was an author. This meant that he was entitled to moral rights protection in France. It needs to be stressed, though, that the Huston ruling is restricted in scope to the moral rights and authorship for the purposes of moral rights issues.10 The public policy argument does not apply to any other issue and the normal choice of law rules can then be applied to the authorship issue.11
First ownership of copyright works
The Copyright, Designs and Patents Act 1988 contains only a substantive rule on ownership. The author is supposed to be the first owner of the copyright in the work.12 The case law has never addressed the issue of choice of law in relation to the first ownership of copyright. Finally, the Berne Convention contains one detailed rule on ownership. Article 14bis(2) determines that the law of the protecting country will govern the issue of ownership in relation to cinematographic works. It is important to trace back the history of this rule to see what implications it has. The original version of the Convention contained no rule at all concerning ownership. In practice almost no real problems arose because most legal systems considered the creator of a work to be the author of a work and the author to be the first owner of the copyright in the work, and cases concerning co- and jointauthorship are relatively rare. Differences did however arise in relation to the ownership of copyright in a cinematographic work. One could primarily look towards the maker of the film or alternatively to the individual creator of contributing parts of the work.
Article 14bis(2) was introduced during the Stockholm revision conference of the Berne Convention to deal with these specific differences. There are no explicit indications that the Member States wanted to introduce an exception for cinematographic works to the general rule on ownership, but there are no indications to the contrary either. All that is known is that the Member States could not agree who was to be the author of a cinematographic work. In the absence of an agreement as to who, in substantive law, was the author of a film, the point was addressed from a choice of law point of view. The rule that the issue will be governed by the law of the protecting country means that all Member States can continue to apply their own (different) substantive rules, without any of them having to give way. The choice of law rule confirms and continues the disagreement in the area of substantive law. The general point concerning the first ownership of copyright was not necessarily raised, but why would the draughtsmen restrict the application of the rule to one category of works if the same rule was already applicable to all other works? If the latter had been the case, a note mentioning that the same rule would also apply to cinematographic works would have been sufficient.
That brings us to the general rule. Which law should be applied to the issue of ownership?13 At first sight, there seems to be a strong link between the grant of the copyright and the issue of to whom it is granted. It may make sense to apply the same law of the protecting country to both issues,14 especially when taking into account the competition policy issues and links which were set out above in relation to authorship but which also apply at this stage. This would also result in a situation where a single choice of law rule deals with the issue of ownership in relation to all types of works. It is submitted, however, that upon closer analysis, these arguments are not convincing. Other arguments point towards the law of the country of origin, as defined above.15 The exploitation of copyright works to an increasing extent takes place at an international level. For example, literary works, photographs and films are disseminated and exploited over the internet. The internet does not know any borders and it would create enormous practical difficulties and costs if the first ownership of these works were given to different persons in different countries. A choice of law rule that links the first ownership of copyright to the law of the country of origin would solve this problem.16 The copyright in each work would have a single (first) owner. The latter would be able to sell the rights for the worldwide exploitation of the work and the buyer would have certainty that he would be dealing with the real rightholder.17 It would also make sense to apply the same law to the issues of authorship and first ownership, because most legal systems would have a substantive rule that makes the author the first owner of the copyright in the work.
The approach which is advocated here seems to have been adopted in the Itar-Tass case in the United States. The Second Circuit, when discussing the issue of the law applicable to the issue of copyright ownership, reached the conclusion that the issue was governed by Russian law as the law of the country of origin of the *E.I.P.R. 223work.18 One should add, though, that this conclusion was reached in a somewhat strange way, as the court relied on the property rules in the Second Restatement to reach its conclusion. It must be clear that this case does not offer strong support for the suggested approach, even if the choice for Russian law is not straightforward on the basis of a purist application of this property approach.
This discussion is not entirely academic in nature because, although most legal systems operate the same general ownership rule, there are differences between the provisions in the various national copyright regimes which deal with issues such as co- and jointauthorship and authorship in relation to films and sound recordings.
Article 14bis(2) in more detail
Article 14bis(2) does not simply determine that the ownership of copyright in a cinematographic work is governed by the law of the protecting country; it also provides for certain exceptions and rules on formalities. Certain countries may include certain contributors to a film among the owners of the copyright in the film. If these contributions were made on the basis of a specific undertaking to do so,19 the normal Art.14bis(2) rule is that these owners of copyright cannot object to the “reproduction, distribution, public performance, communication to the public by wire, broadcasting or any other communication to the public, or the subtitling or dubbing of texts, of the work”. This is subject to a stipulation to the contrary.20 However, authors of scenarios, dialogues and musical works that are created for the making of a film are exempted from this rule, unless there is a national legislative provision to the contrary.21 The form of the undertaking concerned, i.e. whether a written agreement or a written text with the same legal effect is required, is to be determined by the law of the country where the maker of the film has his headquarters or habitual residence.22 This is a sensible move, as it will enable the maker of a film to settle the legal position in one agreement which satisfies the formal rules of his own domestic law and the coverage of which is worldwide. The application of the different provisions of the various laws of the protecting countries would have given rise to great practical problems.