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les Nouvelles March 2023 Article of the Month: A Right To Copy, Right?

Dr. Madelein KleynDr. Madelein Kleyn

Mad IP Consulting (Pty) Ltd., Somerset West
South Africa

One dictionary definition1 for copyright is “the exclusive and assignable legal right, given to the originator for a fixed number of years, to print, publish, perform, film, or record literary, artistic, or musicalmaterial.”

Copyright is an intellectual property right that vests automatically. The question arises whether the right has international enforcement due to the nature of the right itself. Copyright subsists the moment it meets the two basic criteria that qualifies the work to be protected by copyright, i.e., originality and reduction to material form. This begs the question, is it then an international right? The mere creation vests an international right despite per-country national legislation. Or does it not? International instruments such as TRIPS and the Paris Convention address the authorship2 and enforcement of copyright by its members. In terms of the Trade Related Aspects of Intellectual Property (TRIPS) Agreement under the General Agreement on Tariffs and Trade (GATT), signatories to the GATT are required to implement national laws of a basic minimum protection and establish procedures for the effective enforcement of the copyright of national and foreign rightsholders.

The Berne Convention3 deals with the protection of copyright works and the rights of their authors and sets the minimum standards of protection that its members should grant copyright creators. Three basic principles are defined:

  1. Works of an author that is a national of a contracting member state must be given the same protection in each of the other contracting member states as the latter grants to the works of its own.
  2. Protection must not be conditional upon compliance with any formality—it must thus be automatic. And,
  3. Protection is independent of the existence of protection in the country of origin of the work.

The Berne Convention sets the minimum duration that copyright will apply in various types of work and defines, for the duration of copyright, the exclusive rights that require the permission of the copyright owner. These are:

  • The right to authorise translations of the work.
  • The exclusive right to reproduce the work, though some provisions are made under national laws that typically allow limited private and educational use without infringement.
  • The right to authorise public performance or broadcast, and the communication of broadcasts and public performances.
  • The right to authorise arrangements or other types of adaptation to the work.
  • Recitation of the work, (or of a translation of the work).
  • The exclusive right to adapt or alter the work.

The Berne Convention also provides for the protection of an author’s moral rights, i.e.,

  • The right to claim authorship
  • The right to object to any treatment of the work that would be “prejudicial” to his honour or reputation.

Each member country may permit certain uses of works in its legislation, such as a statutory licence for reproduction and communication of works by educational institutions. The Berne Convention limits the impact of such exceptions to the copyright owner’s (author’s) exclusive rights by providing that the normal exploitation of the work and legitimate interests of the author must not be affected.

In addition to the Berne Convention, but less significant4 and effectively no longer relevant,5 is the Universal Copyright Convention (UCC). The UCC is an international instrument that was drawn up in 1952 under the auspices of UNESCO. The UCC was concluded in an attempt to incorporate a greater number of countries into the international copyright community.

The UCC contains the following generally recognized principles of international protection of copyright:

  1. Requirement for the adequate and effective protection of copyright at the national level.
  2. The national treatment of foreign authors.
  3. Replacement of the obligatory formalities as a condition of copyright by the copyright notice.
  4. The minimum terms of protection.
  5. The exclusive right of translation.
  6. The notion of publication of a work.
  7. Non-retroactivity.
  8. The system of compulsory licences in favour of developing countries.

Not All Rights Are Equal

Although copyright protection is obtained automatically without the need for registration or other formalities, most countries nonetheless have a system in place to allow for the voluntary registration of works.

Despite the international conventions, there is no “international copyright” that will automatically protect a work throughout the world. Protection against unauthorized use in a particular country depends on the national laws of that country.

The vesting of the right, in the opinion of the author, is an “international right,” by the true nature of the right. The enforcement thereof, however, remains a jurisdictional matter, which tips the scale to the unbalanced side.

If a right vests automatically when the work is created, the default position in terms of copyright law is that the creator owns the work created—the author-owner concept.

An author-owner is free to assign copyright to anyone. Outsourcing work to freelance consultants such as software development, website development, or creation of logos, designs, and drawings, are thus owned by the person who authored them. A written contract can change this basic rule. As an example, many publishers require assignment of copyright as a condition of publication. In some jurisdictions legislation prescribes certain categories for commissioning of a work (work-for-hire), where such commissioning of the work is in writing and signed by the creator or creators before the work begins.

In an employment relationship, depending on the national law, the author-owner rule generally does not apply. Work created by an employee in the course and scope of the employee’s employment belongs to the employer.

Works for hire, on the other hand, require a contractual arrangement between the creator and hirer to transfer copyright ownership.

There are two ways by which a copyright owner can transfer some rights, through permission to perform certain restricted acts, or all rights to the copyright: either through a license or by assignment.

 A copyright assignment is when the copyright holder transfers ownership of the copyright to another person or organisation. A license is the permission to perform certain restricted acts with regards to the copyright work and the copyright owner retains ownership and certain rights to the work. A license is often preferred over an assignment when the copyright holder wishes to maintain and exercise some ownership control over the rights and how the licensee uses the copyright holder’s rights.

A valid assignment of copyright must be in writing and signed by, or on behalf of, the copyright owner/assignor. The subject of the assignment must be clear as to what copyright is being assigned in which work(s).

A copyright license, i.e., the permission to use a copyright work, does not have to be in writing unless it is an exclusive license. A license can be oral or arise by implication when considering all of the facts and circumstances surrounding the transaction between the copyright owner and the purported licensee. For example, when a website is made available on the world wide web, an implied licence is granted to internet users to copy that website for the purpose of viewing it on a web browser. However, the exact scope of implied and unwritten licences may be unclear.

The Territoriality Conundrum

The vesting of copyright may be international; however, copyright protection remains territorial in nature. A work will only enjoy copyright protection if it meets the legal requirements of the copyright law of the country where protection is sought.

The scope of the right and the assignability thereof is also a matter of territorial nature.

Of specific importance is the creation of a work by more than one author from more than one employer, where the authors and the employers are of different nationality and based in different countries, and the work is commissioned on the understanding that the product qualifies as a work-for-hire.

Under the work-for-hire doctrine, the employer or the company that has commissioned the work is considered the author and automatic copyright owner of the work.

Not all jurisdictions acknowledge the assignability of copyright works. In a scenario where a copyright work is completed as a “work-for-hire,” the jurisdiction of the creator of the work becomes relevant.

For example, German copyright law does not recognise the work-made-for-hire doctrine. Even when an employee creates a work in the course of employment, the employer will not become the owner of the copyright; likewise, an independent contractor will remain the owner of the copyright work created. An author/ creator can however grant licences to other persons authorising the use of the copyright work.

The right of a licensee is more restrictive than an owner right. Where the subject of the copyright work is a design for a product or equipment that is needed by the commissioner of the work for commercial exploitation or use, the impossibility of ownership could have severe economic impact. It is thus important to verify on works-for-hire whether ownership in the work is transferable, or whether the only possible right may be a license, thus depriving the “contractual” owner of copyright enforcement. In this analysis, consideration is given to established contractual devices to achieve the same, or a very similar, commercial outcome of copyright “assignment” in the relevant work.

A comparative analysis of key countries’ assignment possibilities and requirements for assignment recordal in official registries is tabled below. ■
Available at Social Science Research Network (SSRN):
https://ssrn.com/abstract=4179617.

Table 1A. International Copyright Assignments

Jurisdiction

Formalities for Assignment of Copyright

Registration Requirements

Form of Assignment of Copyright Required to be Effective Against a Third Party

Brazil

Assignment must be in written form and signed by both the assignor and the assignee.

Copyright can be registered, although it is not mandatory. Registration can serve as rebuttable evidence of creation and ownership.

Copyright law 92610/98 no longer requires the recordation of the assignment of an existing registration for it to be enforceable against third parties.

Canada

To be valid, the assignment must be made in writing and signed by both the assignor and the assignee.

The assignment does not have to be registered or recorded, but can be registered.

Written assignment signed by both assignor and assignee.

Chile

Works of authorship can be registered in Chile before the Department of Intellectual Rights (DDI).

To be valid, assignments of copyrights should be registered with this same institution within a 60-day term following execution of the assignment document.

Formalities of assignment require the signature of the assignment document in the presence of a notary public and, if executed outside of Chile, the assignment must be apostilled.

China

Owner may assign ownership provided it is in writing and signed by both assignor and assignee. Personal rights can belong only to the author because they cannot be assigned or inherited.

Not compulsory, but possible. The Copyright Protection Centre of China can provide such services. The applicant must first complete an online application form and then submit the materials requested for recording to the Centre personally or through its agent. Materials include the application form, the transfer contract, the identification certificate of the applicant, the registration certificate of the rights, and the search results for the registration of the rights, if available.
After the application fee is paid, the applicant receives a receipt. The process usually lasts 10 working days, during which time the applicant may be requested to supply further supporting documents. After recording is complete, details of the transfer record may be found online, and the applicant should receive a certificate of the record within three working days.

Written assignment signed by both assignor and assignee.

France

Only performance, publishing, and audio-visual production agreements and free performance authorisations must be in writing (Article L. 131-2, IPC). However, considering the importance of mandatory clauses in copyright assignment under Article L. 131-3 of the IPC, it is recommended that a written agreement be entered into in all cases, in particular when the agreement is entered into with the individual author.

Copyright arises automatically from the mere act of creation, that is, no registration is required. It is however recommended to proceed with some sort of filing (for example, via an envelope Soleau or with a bailiff) so as to evidence the date of creation of the work.

Written assignment signed by both assignor and assignee.

 

Table 1B. International Copyright Assignments

Jurisdiction

Formalities for Assignment of Copyright

Registration Requirements

Form of Assignment of Copyright Required to be Effective Against a Third Party

Germany

Copyright cannot be assigned, only licensed. There are generally no formal requirements for copyright licences.
However, licences covering future works that are not specified, or are only referred to by type, must be in writing.

Copyright cannot be registered.

Not applicable.

Gibraltar

In writing and signed by the assignor.

Copyright cannot be registered.

If assigned as a deed, it must also be clear that the document is a deed. Executed and delivered as a deed.

Hong Kong

An assignment of copyright must be in writing and signed by the assignor, or in the case of a body corporate, signed or under the seal of the corporate body.

Copyright cannot be registered in Hong Kong.

Written assignment signed by both assignor and assignee.

India

Assignable in writing, or by inheritance. An assignment may be general, i.e., without limitation or an assignment may be subject to limitations. It may be for the whole
term of copyright or any part thereof. An assignment transfers an interest in and deals with copyright itself as provided under section 14 of the Act.

Can be registered. If the copyright in a work has been registered with the Copyright Office and its particulars have been recorded in the Register of Copyrights, then transfer of ownership may be recorded in the Register pursuant to an application to the Registrar of Copyrights in a prescribed form, along with a prescribed fee.

Written assignment signed by both assignor and assignee.

Indonesia

A copyright assignment must be executed in writing by the assignor and assignee.

To ensure optimum protection, copyright can be recorded with the Directorate General of Intellectual Property (DGIP).

An assignment of copyright must be recorded with the DGIP.

Ireland

An assignment of the copyright in a work, whether in whole or in part, is not effective unless it is in writing and signed by or on behalf of the assignor.

Copyright cannot be registered.

Written assignment signed by both assignor and assignee.

Italy

A written assignment is preferable, signed by both parties and including specific provisions on the rights of the seller (if purchased, from whom and which rights) and a clear indication of what kind of rights are assigned.

Copyright can be registered at the Italian Society for Authors and Producers. It is not mandatory.

Copyright is protected and effective against third parties even without registration. Written assignment signed by both assignor and assignee.

Japan

Copyright cannot be assigned in Japan.

Copyright can be registered.

Copyright must be registered to be effective against a third party.

Malaysia

Copyright can be assigned like a personal property, all or part of it. Assignment must be in writing. Nothing is formally required. Future copyright can be assigned that is copyright that will exist once the work is made in order for the copyright to be transferred automatically by law as soon as the work comes into existence.

With Copyright (amendment) Act 2012, an easy process was made for the copyright owners to notify the IPCM of any copyright, through the Voluntary Notification System. This is done willingly and does not hinder the necessities of non-formality under the Berne Convention to enjoy and practice copyright protection.

Copyright must be registered to be effective against a third party.

Malta

A copyright assignment must be in writing and signed by or on behalf of the assignor.

Copyright is granted automatically by application of the law. There is no copyright registration under Maltese law.

An agreement in writing is sufficient for enforcement against third parties in the Maltese courts,
or to be effective with regards to third parties.

 

Table 1C. International Copyright Assignments

Jurisdiction

Formalities for Assignment of Copyright

Registration Requirements

Form of Assignment of Copyright Required to be Effective Against a Third Party

Mexico

Acts, agreements, and contracts by which the owner of the economic rights are assigned must be in writing, signed by the assignor and assignee, temporary and for consideration.

Copyright can be registered.

Any assignment by which economic rights are transferred must be recorded with the Mexican Copy Office to be effective against third parties.

Paraguay

A document of assignment is required, executed by the assignor and assignee, in Spanish or translated by a sworn translator. Legalisation is required. A power of attorney document (legalised) is granted by the assignee.

Copyright need not be registered, but an assignment of copyright must be recorded as a deed.

The assignment must be recorded to be effective against a third party.

Romania

Although no formalities are required for validity of the assignment, proof of its existence and the terms of the agreement can only be made in writing, signed by the parties.

Copyrighted works can be optionally registered with the Copyright Office, but this is not a condition for protection. Assignment of copyright (in registered or non-registered works) can but need not be registered.

Written assignment signed by both assignor and assignee.

Russia

Written form and signed by both assignor and assignee.

Some form of registration is possible, e.g., software and databases can be optionally registered with Rospatent.

For enforcement against third parties, the assignment of copyright vested in the registered software or database must be registered.

South Africa

A valid assignment of copyright must be in writing and signed by or on behalf of the assignor.

In general, copyright cannot be registered, and the recordal of an assignment of copyright on a register is therefore not possible. Cinematographic films can be registered.

In practice, copyright assignment agreements are entered into between the parties for clarity or to enable a party to bring infringement proceedings.

Spain

Any assignment must be carried out in writing. The assignment must specify the rights assigned and the duration of the assignment. If not specified, the duration will be five years by default.

Registration is not mandatory to validate the assignment.

Parties can register the assignment in the General Registry of Intellectual Property. Registration ensures effectiveness of the assignment against a third party.

Switzerland

Copyright is transferable by assignment or by inheritance. Moral rights (e.g., the right of recognition of authorship and the right of integrity of work) are not assignable.

No.

Written assignment signed by both assignor and assignee.

UK (England and Wales)

An assignment of copyright must be in writing and signed by the assignor. Must be executed and delivered as a deed.

There is no copyright registration system in the UK.

Written assignment signed by both assignor and assignee.

United Arab Emirates

In writing, signed by both parties, as consideration is a requirement.

Copyright can be registered. The assignment needs to be notarised and legalised for it to be recorded.

The copyrights and the assignment must be recorded for the assignment to take effect against third parties.

United States of America

Copyright is transferable by assignment, license, mortgage, or security. It can also be transferred by inheritance or by involuntary transfer, for example, bankruptcy, mortgage foreclosure, or divorce by court order.

In general, registration is voluntary. Copyright exists from the moment the work is created. You will have to register, however, if you wish to bring a lawsuit for infringement of a U.S. work. (https://www.copyright.gov/registration/)

Written assignment signed by both assignor and assignee.

  1. The Oxford Dictionary of English.
  2. Although the Berne Convention generally refers to the “author” as the relevant recipient of the economic rights of copyright, it is recognised that member states may have different national approaches to copyright authorship and ownership.
  3. Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, as revised at Paris on July 24, 1971, and amended in 1979.—https://www.wipo.int/treaties/en/text.jsp?file_id=283698 (last visited 23 April 2020).
  4. Since almost all countries are either members or aspiring members of the World Trade Organization (WTO), and thus comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS), the UCC has lost significance.
  5. Rosati, E., 2022. [Guest post] Universal Copyright Convention— RIP. [online] The IPKat. Available at: <https:> [Accessed 31 March 2022].</https:>

 

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