Update February 2022 – initial publication September 20, 2018 at 4:19 p.m.
The challenge :
Is it possible for the purchaser of a creation, work, a work of the mind (cinema, photography, music, montages, video clips, cultural painting, graphics, texts, computer developments, etc.), to protect itself effectively against claims based on non-respect of copyright?
A contractor who orders intellectual services will often seek to have extensive copyright on these services, precisely in order to protect himself against claims from his service provider or from third parties who have not intervened in the contract.
Beyond case law or international texts, the intellectual property code recalls the applicable principles.
The principles :
The prohibition of the global transfer of future works
A first principle according to which the global transfer of future works is null, will prohibit him from arrogating to himself the whole of the future production of a service provider or a creator.
Article L131-1 of the Intellectual Property Code:
“The aggregate assignment of future works is void.”
In his work order, or in the employment contract with the person whose creation he intends to exploit, he must therefore be as precise as possible in what he is ordering and provide for an assignment of rights once the work has been created, delivery or during payment, for example.
Other rules will encourage him to describe precisely the rights he intends to acquire, determining their territorial scope, their duration, the uses of the work that are planned, on what media, for what audience.
The performance, publishing and audiovisual production contracts defined in this title must be recorded in writing. The same applies to free execution authorizations.
Contracts by which copyright is transferred must be evidenced in writing.
In all other cases, the provisions of Articles 1359 to 1362 of the Civil Code are applicable.
The transfer of the copyright is subject to the condition that each of the rights transferred is the subject of a separate mention in the deed of transfer and that the field of exploitation of the rights transferred is delimited as to its extent and to its destination, as to place and as to duration.
When special circumstances so require, the contract may be validly concluded by exchange of telegrams, provided that the field of exploitation of the rights transferred is delimited in accordance with the terms of the first paragraph of this article.
Assignments relating to audiovisual adaptation rights must be the subject of a written contract in a document separate from the contract relating to the actual edition of the printed work.
The beneficiary of the transfer undertakes by this contract to seek an exploitation of the transferred right in accordance with the practices of the profession and to pay the author, in the event of adaptation, a remuneration proportional to the receipts collected.
Will he be safe from claims regarding these rights?
Contact a lawyer specializing in intellectual property law in Paris
The inalienable right of the author to claim authorship of his work
The author is (always) a natural person and differs from the “copyright holder”, in that the latter can be someone other than the author, be a natural or legal person, and be invested with the economic rights of the author, that is to say the rights of exploitation of the work, by acquisition of these rights.
But the author nevertheless remains the author and as such has inalienable prerogatives (the “moral right” of the author), which he can assert in principle.
In practice, the defense of this principle can be arduous and limited to ultimately quite exceptional cases when the author considers that he is the victim of abuse by the purchaser of the exploitation rights.
This is the meaning of the following provisions:
Article L111-1 of the Intellectual Property Code:
The author of a work of the mind enjoys on this work, by the mere fact of its creation, an exclusive intangible property right and enforceable against all.
This right includes intellectual and moral attributes as well as patrimonial attributes, which are determined by books I and III of this code.
The existence or conclusion of a work or service contract by the author of an intellectual work does not derogate from the enjoyment of the right recognized by the first paragraph, subject to the exceptions provided for in this code. Subject to the same reservations, there is also no derogation from the enjoyment of this same right when the author of the intellectual work is an agent of the State, of a local authority, of an establishment of an administrative nature, an independent administrative authority endowed with legal personality or the Banque de France.
The provisions of Articles L. 121-7-1 and L. 131-3-1 to L. 131-3-3 do not apply to agents who are authors of works whose disclosure is not subject, by virtue of their statute or the rules which govern their functions, with no prior control of the hierarchical authority.
Article L121-1 of the Intellectual Property Code:
The author enjoys the right to respect for his name, his capacity and his work.
This right is attached to his person.
It is perpetual, inalienable and imprescriptible.
It is transmissible mortis causa to the heirs of the author.
The exercise may be conferred on a third party by virtue of testamentary dispositions.
The author may assign some of his rights by contract, he may even renounce seeing his name appear and refrain from any public disclosure, for the benefit of another person, natural or legal, in the context of a so-called work. “collective” to which several authors have contributed voluntarily.
The work will then be the property of the person under whose name it will be disclosed: for example the name of the entrepreneur instigator of the project, who will be qualified not as “author” but as “holder of copyright ” and “owner”.
Article L113-2 of the Intellectual Property Code, paragraph 3:
Is said to be collective the work created on the initiative of a natural or legal person who publishes it, publishes it and divulges it under his direction and his name and in which the personal contribution of the various authors participating in its elaboration is based on the whole for which it was designed, without it being possible to attribute to each of them a separate right to the whole produced.
Article L113-5 of the Intellectual Property Code:
The collective work is, unless proven otherwise, the property of the natural or legal person under whose name it is disclosed.
This person is vested with the rights of the author.
The author will therefore be able, by proving the predominance of his creation in a work that is nevertheless “collective”, to claim ownership of his contribution and specific profits.
The right for the author to withdraw his work
The author can even withdraw his work from the market and from circulation, despite the transfer of the exploitation right, with the notable exception of the author of software. However, this is an exceptional case and takes place against compensation. This may usefully be provided for in the contract.
This is the meaning of article L121-4 of the intellectual property code.
Article L121-4 of the Intellectual Property Code:
Notwithstanding the assignment of his exploitation right, the author, even after the publication of his work, enjoys a right of reconsideration or withdrawal vis-à-vis the assignee. However, he can only exercise this right on condition of compensating the assignee beforehand for the damage that this repentance or withdrawal may cause him. When, after exercising his right of reconsideration or withdrawal, the author decides to have his work published, he is bound to offer his exploitation rights as a matter of priority to the assignee he had originally chosen and under the conditions originally determined.
The right of the author to proportional remuneration
The principle of proportional remuneration gives the author the possibility of contesting the price he receives.
It allows him to impose a proportional remuneration in a contract which would abusively limit his remuneration in spite of the resounding success of his work, or in the case of exploitations which would not have been really envisaged in the contract.
Article L131-4 of the Intellectual Property Code:
The assignment by the author of his rights to his work may be total or partial. It must include, for the benefit of the author, a proportional participation in the receipts from the sale or exploitation.
However, the author's remuneration may be assessed on a flat-rate basis in the following cases:
1° The basis for calculating the proportional participation cannot be practically determined;
2° The means of controlling the application of participation are lacking;
3° The cost of the calculation and control operations would be out of proportion to the results to be achieved;
4° The nature or the conditions of the exploitation make it impossible to apply the rule of proportional remuneration, either that the contribution of the author does not constitute one of the essential elements of the intellectual creation of the work, either that the use of the work is only of an incidental nature in relation to the object exploited;
5° In the event of transfer of rights relating to software;
6° In the other cases provided for in this code.
The conversion between the parties, at the request of the author, of the rights resulting from the contracts in force into fixed annuities for durations to be determined between the parties is also lawful.
Article L131-6 of the Intellectual Property Code:
The clause of an assignment which tends to confer the right to exploit the work in a form that is not foreseeable or not foreseen at the date of the contract must be express and stipulate a correlative participation in the profits of exploitation.
Update of 10 Dec. 2022: copyright and platforms, what remuneration?
Content uploaded then downloaded or streamed, via engine or platform, is financed by advertising or data, danum directive 2019 790, article 17
Unlawful source…no private copy exception
ISP l336-2 CPI
Host Engines, art 14 dir e-commerce, com to the public … very favorable jurisp
Advertisers ordered to avoid pirate sites
Contributory platform …dir e-commerce and dir dt of author…host! No lasting deletion, ... denunciation and protest of the authors ... commissioned cspla ...
Art 17 dir 790, in 2019, transposition Fra …l137-1…CPI ..def of platforms…
Regime.. return of responsibility, qd active role, dt conclude licenses, which licit the initial upload, and the download, with exemption: made best efforts, …and dt prevent reappearance! Non-beneficiary Pirate Sites.
Small platforms…resp lightened…
Implementation of automatic filters…PB of freedom of expression. … guidance, recourse Poland…
-Numerical hash.. file number
-Watermarking… watermarking, detection tool PB alteration (photo
-Fingerprinting, above all…digital fingerprint of the file, simplified representations of the video, match database of fingerprints and uploading…refusal or acceptance…cf market solutions, we can delegate;
- File metadata, often overwritten by habit of cleaning memory (photo)
CE 15 Nov. 2022, n° 454477:
The Council of State annuls the ordinance transposing the danum directive insofar as it does not impose an appropriate remuneration for authors, beyond a proportional remuneration.
Adaptations specific to certain contracts
Adaptations are made by law depending on the type of contract envisaged.
Thus the author of software used for these purposes sees his rights ceded by law to the employer (art.L113-9). The law deprives the software author of the right of withdrawal (L121-7).
The Intellectual Property Code provides for provisions specific to the publishing contract, the representation contract, the audiovisual production contract and the commissioning contract for advertising (with a legal assignment of certain exclusive rights), the Pledge Contract of the right to use software, works by journalists, research and referencing of plastic, graphic or photographic works of art, performers, producers, audiovisual communication companies, satellite broadcasting and cable retransmission, to database producers.
The right of the author to the integrity of his work
The so-called “composite” work is provided for by article L113-2 of the intellectual property code in its paragraph 2 according to which “Is said to be composite the new work in which a pre-existing work is incorporated without the collaboration of the author. of the latter.”, and L113-4 according to which “The composite work is the property of the author who produced it, subject to the rights of the author of the pre-existing work.”.
The purchaser of a commissioned work asks his assignor for the transfer of rights to the commissioned work, but also, logically, the transfer of rights to the pre-existing works incorporated therein, in order to be able to exploit the commissioned work without difficulty.
The purchaser, however, by retaining the rights of adaptation and arrangement, and under cover of these rights, may be tempted to use the pre-existing works as they are and to manipulate them in his own way, not in the manner of its assignor.
If one conceives that the purchaser spares, on the work delivered, rights of adaptation, translation, transformation, arrangement or reproduction, quoted by the article L122-4 of the code of the intellectual property – and in particular within the framework of a collective work – one cannot however admit that these rights allow him an autonomous exploitation of a preexisting work incorporated in the delivered work, by a kind of reverse engineering.
It is the respect of the right to the integrity of the delivered work which requires it (article L121-1 of the code of the aforementioned intellectual property).
To what extent can the purchaser protect himself against claims by third parties who have not intervened in the contract, and relating to copyright?
Can the acquirer of rights protect himself against these claims by, for example, imposing on his transferor the burden of compensating him, or redoing the work, or taking the necessary steps for a peaceful use of the work?
The search for compensation may be illusory if, at the time of the claim, the said assignor has disappeared, or if he is not solvent.
Against the purchaser, the third party may claim damages for infringement and require a cessation of operation.
The purchaser, in order to defend himself, will be tempted to invoke his good faith and to accuse his negligent transferor who would therefore have granted him more rights than he himself had on the pre-existing work.
But in terms of civil liability for infringement the argument of good faith is inoperative, which otherwise would encourage many collusions, and a rather easy purge of rights. The principle is recalled, for example, in the judgment of the Court of Cassation of July 10, 2013, appeal 12-19170 “Whereas the Court of Appeal which rightly said that good or bad faith was indifferent to the characterization, before the civil jurisdiction, of the counterfeit,”
In order to attempt to reduce the effects of these risks, the purchaser will therefore take care to provide, in his contract, for liability on the part of the assignor, and will also try to ensure that the assignor has an effective liability insurance policy.
It will also be necessary to provide for a judicial cooperation clause, in order to try to involve the transferor as well as possible in the defense of the interests of the purchaser in the event of legal threat from a third party, and to avoid disputes of the said yielding on how to defend the cause.
Counterfeiting: how to react?
Remuneration for work and payment of royalties, the issues
Judicial reversal on the rights of performers of musical works
The rights of the photographer: the intellectual property lawyer responds
NFTs and copyright