French Supreme Court on 5(2) BC: national law determines who is the copyright owner

“The law of the country where protection is sought governs all matters relating to the exercise and enjoyment of copyright, including the determination of the rights holder.”

Article 5(2) of the Berne Convention for the Protection of Literary and Artistic Works provides that “The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.”

This treaty rule means that the law of the signatory country where protection is sought has exclusive jurisdiction to determine the legal regime applicable to works of foreign origin. However, article 5(2) does not specify which national law applies when determining who is the copyright owner.

The facts of the present case are the following: a reporter-cameraman was hired in 1978 by the US company ABC News Intercontinental Inc, and was then sent to the French office from 1993, finally being made redundant for economic reasons in 2004. He brought his case before the Labour Law Court, before which he claimed that his employer had infringed on his copyright by exploiting his reports and documentaries without his authorization. With regard to his claims based on copyright, the Court of Appeal of Paris, in a judgement of 15 December 2010, ruled that since article 5(2) of the Berne Convention does not give any indication as to ownership, acquisition and assignment of copyright, it is necessary to apply the French conflict of law rules; therefore in this situation, the law of the country of origin of the work would apply in order to determine who is the copyright owner. The Court of Appeal consequently applied 17 USC § 201 A and B of the US Copyright Code, which provide that in the case of a work made for hire, the employer owns all the rights comprised in the copyright, unless the parties have expressly agreed otherwise.

In its ruling of 10 April 2013, the Cour de Cassation, the French Supreme Court, quashed the Court of Appeal’s judgement and stated that the law of the country where protection is sought governs all matters relating to the exercise and enjoyment of copyright, including the determination of the rights holder. The Supreme Court therefore extends the principle of ‘national treatment’ to the determination of the copyright holder, thus making it easier for copyright infringement victims to seek protection and remedies in France, but maybe excessively dangerous for copyright assignees.

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France: Supreme Court makes music synchronisation safer

The Franco-Belgian movie Podium, released in 2004, tells the story of a Claude François lookalike who prepares for a contest. Claude François, AKA ‘Cloclo’, was a famous French pop singer of the 60s and 70s. In order to use recordings from the 60s and 70s in the movie, the producer of the film, Fidélité, entered into what is referred to as‘synchronisation agreements’ with the producers and owners of the recordings, namely EMI, Sony, Warner and Universal, who were supposedly the assignees of the rights held by the performers.

Had all the performers assigned their rights to the record producers? No! Not all, thought SPEDIDAM, a collecting society that mainly represents side musicians in the music industry. SPEDIDAM therefore brought an infringement action against the movie producer on the grounds of article L.212-3 of the Intellectual Property Code, which provides that “The performer’s written authorisation shall be required for fixation of his performance, its reproduction and communication to the public as well as for any separate use of the sound or images of his performance where both the sounds and images have been fixed”. In turn, within the same proceedings, the movie producer asked for a guarantee from the producers and the broadcasters.

This gave the Supreme Court the opportunity to settle two major issues in French neighbouring rights: (1) a collective management organisation may only take action for the defence of its own members; (2) the collective agreements entered into before the Act of 3 July 1985 granting neighbouring rights to performers, are still in force.

1. A collecting society may only take action for its own members

Claiming that the synchronisation of the film Podium infringed on the performers’ rights, SPEDIDAM brought this case against the movie producer in order to defend the interests of the collective interest of the profession, which is of course legitimate, and also to claim damages not only for the prejudice allegedly suffered by certain of its members, but also by artists that are not its members. Some are foreign, deceased or members of other collecting societies.

SPEDIDAM based its action on its articles of association (which authorise it to take action for performers, whether they are its members or not) in combination with article L.321-1 of the Intellectual Property Code (which provides that the “societies shall be entitled to take legal action to defend the rights for which they are responsible under their articles of association”). Surprisingly, since the beginning of the 90s, many courts, but not all, accepted this argument. Equally surprising, this issue was only brought to the Supreme Court in the present case, after over 20 years of incomprehensible and diverging court rulings.

In the present case, the Court of Appeal of Paris, in its judgement of 20 May 2011, declared that SPEDIDAM may not act in defence of the interests of performers that it does not represent. The Cour de Cassation, the French Supreme Court, in a judgement of 19 February 2013 has upheld this decision, stating that it follows from article L. 321-1 of the Intellectual Property Code, that whatever is provided by its articles of association, a collecting society may only defend the individual rights of a performer that has given the said society the power to take such action.

This solution of course applies to collecting societies that manage the rights of authors and publishers. This puts an end to a French oddity and makes the business of music synchronisation safer…

2. The collective agreements entered into before the creation of neighbouring rights are still in force

In France, performers have been granted neighbouring rights on their performances since the 3 July 1985 Act (now codified in article L.212-3 of the Intellectual Property Code). In 1959, collective agreements had nevertheless been entered into between the national union of performers and the national union of record producers. These agreements provided that the performer who participates in a recording authorises the use of his interpretation in a movie, subject to receiving a fee in addition to the payment received for the recording session. SPEDIDAM claimed that when the 3 July 1985 Act came into force on 1 January 1986, the collective agreements terminated.

The judgment of the Court of Appeal of Paris rejected SPEDIDAM’s arguments, stating that the recordings in question had been made in the framework of the 1959 collective agreements. The Supreme Court upholds this judgement, explaining that the 1959 agreements, which are binding on SPEDIDAM, must be interpreted as granting the producers the right to exploit the recordings for the sound of the motion pictures yet to come, subject to paying an additional fee to the performers. In addition, the Supreme Court notes that when the performers signed the attendance sheets during the recording sessions between 1963 and 1981, they had not made any reservation for the use of their performances.

It will now definitely be easier and safer to synchronise music recorded before 1986.

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Personal data: no notification needed for a simple software update

French Supreme Court (Cour de cassation, chambre sociale), 23 April 2013, 11-26.099 (published in the bulletin)

Under article 22 of the French personal data Act, automatic processing of personal data must be notified to the French personal data authority CNIL.

In the present case, a youth educator had been dismissed for refusing to enter data concerning minors under protective measures into a software that had been updated. The employee considered that he was not obliged to accept allegedly unlawful orders given by the employer.

The Court of Appeal of Aix-en-Provence found that the dismissal of the employee was not justified, because when the computer program EVA 3 was upgraded in January 2007 to EVA 4, personal data, which had been originally notified to the CNIL, had to be re-entered into the system by the educators, which meant that they had to be notified a second time to the CNIL beforehand.

The French Supreme Court has annulled the judgement of the Court of Appeal, stating that "only a substantial change in the information that has been previously declared has to be notified to the CNIL". The Court added that the mere updating of a computer program processing personal data does not entail an obligation for the data controller to notify the data-processing a second time.

The Supreme Court therefore annulled the judgement of the Court of Appeal of Aix-en-Provence as it had not verified whether the change of the computer program was a simple update or a change necessitating a new notification to the CNIL.

Read the case: Judgement

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France: YouTube, Universal and SACEM enter into a new agreement

"This agreement covers all types of videos broadcasted by YouTube"

The French collecting society SACEM, which manages the rights of authors and publishers of musical works, announced, on 3 April 2013, that it has entered into a new agreement with YouTube and Universal Music Publishing International (UMPI). This agreement defines the conditions of use of SACEM’s repertoire and UMPI’s Anglo-American repertoire in videos broadcasted by YouTube in 127 countries across Europe, the Middle East, Africa and Asia. The deal, however, does not include the United States. This agreement, which commences on 1 January 2013, covers all types of videos broadcasted by YouTube, including user-generated content.

In its public announcement, SACEM explained that “This agreement enables greater transparency, due to better coordination in the exchange of data, while ensuring a fair remuneration of the right holders who are entitled to a share of the revenues generated by the platform". However, the rights of authors and composers of Universal Music Publishing who are members of other European collecting societies remain subject to the agreements entered into between YouTube and the relevant collecting societies.

SACEM explains that the agreement was entered into as part of DEAL (Direct European Administration and Licensing), a joint initiative of SACEM and UMPI for the creation of an entity to deliver multi-territorial licenses for all types of online media.

SACEM has already entered into over 200 agreements for the collection of fees for the broadcasting of music on the internet. These agreements cover a wide range of internet business models, such as downloading, subscriptions for unlimited streaming and free online streaming. The following Internet players have entered into such agreements: Deezer, Spotify, iTunes, Qobuz, Wat, Beezik, Omnifone, Idol, Believe, Nokia, Orange, Yahoo, SFR, etc.

Brad Spitz, YS Avocats

Brad Spitz interviewed in an article of Les Echos on the Data Protection Officers

Brad Spitz interviewed in an article of Les Echos on the Data Protection Officers: 

Le CIL: un nouvel acteur au service de la concurrence

Brad Spitz, YS Avocats

France: Presumption of ownership extended to neighbouring rights

The French Intellectual Property Code deals with copyright and neighbouring rights separately. As regards copyright, the French case law has long established a presumption of ownership to facilitate infringement proceedings initiated by natural or legal persons who exploit copyrighted works against alleged infringers.

On the grounds of article L.113-5 of the Intellectual Property Code, which provides that “A collective work shall be the property, unless proved otherwise, of the natural or legal person under whose name it has been disclosed”, the French Supreme Court has ruled that in the absence of any adverse claim by the author of the work, the exploitation of the work by a natural or legal person under its name creates a presumption that the said person is the owner of the work, with respect to third parties against whom an infringement case is brought (Cour de cassation, 24 March 1993, 91-16543 and 22 February 2000, 97-21098). Case law has also based this presumption on the grounds of article L.113-1 of the Intellectual Property Code which provides that “Authorship shall belong, unless proved otherwise, to the person or persons under whose name the work has been disclosed” (Court of Appeal of Paris 6 February 2004, JCP G 2005, I, 101, note Ch. Caron). On 28 November 2012, the Supreme Court ruled that the claims made by an author over his work before a foreign court do not prevent the application of the presumption for the benefit of a legal person before the French courts.

In a ruling of 14 November 2012, the Supreme Court extends this presumption for the first time to the field of neighbouring rights.

In this case, the Court of Appeal of Paris dismissed three companies exploiting jazz and pop music recordings that had brought an infringement case against a company that had reproduced and sold these recordings without any authorisation. The plaintiffs, who proved that they had been exploiting the recordings for some time, declared that they were the producers of the recording in the meaning ofarticle L.213-1 of the Intellectual Property Code, which provides that “The natural or legal person who takes the initiative and responsibility for the initial fixation of a sequence of sounds shall be deemed the phonogram producer” (this means that the producer has to prove that he invested in the creation of the recording, in order to be granted rights in the recording). Moreover, the plaintiffs were unable to produce evidence that the performing artists had assigned their rights to them.

In its judgement of 14 November 2012, the Supreme Court annuls the ruling of the Court of Appeal and implements the presumption in the field of neighbouring rights: in the absence of any claim from the phonogram producer, or its assigns, the natural or legal person who publicly, peacefully and unambiguously exploits recordings, is deemed to be the holder of the rights in the recordings as regards third parties against whom an infringement case is brought.

This presumption will benefit not only to the phonogram producers, but also to the other beneficiaries of neighbouring rights in their infringement cases: performing artists, videogram producers,audiovisual communication companies and broadcasters.

Brad Spitz, YS Avocats

Originality of a computer program under French law

Cour de Cassation, 17 October 2012, 11-21641, Codix

There is nothing more subjective, and often arbitrary and unfair, than the notion on which copyright protection is based: originality.

Under French law, the Intellectual Property Code protects “the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose” (article L.112-1), without giving a definition of originality.

French case law has defined originality as the expression of the personality of the author. European case law validated the French conception of originality, in particular in Infopaq and in Painer (para. 88: "As stated in recital 17 in the preamble to Directive 93/98, an intellectual creation is an author’s own if it reflects the author’s personality").

Where computer programs are concerned, it is however more difficult to focus on the personality of the author, and the French Supreme Court (‘Cour de Cassation’) ruled that originality results from the “author's intellectual contribution” (Pachot) or from the “author's individual contribution” (Isermatic France). This reference to the “intellectual contribution”, instead of the “author’s personality”, reflects a certain shift towards the criterion of novelty, which is used in industrial property law.

In a judgement rendered on 17 October 2012, the French Supreme Court reaffirms this definition and notes that the usefulness of a computer program is not sufficient to characterise the originality of the program.

The computer program concerned in the case was developed to assist French bailiffs in managing their offices. In France, bailiffs ("huissiers") are public officials who, in particular, provide an auxiliary service to the judicial system. The software publisher brought a copyright infringement case against former clients who had continued to use the computer program after the termination of the license agreement. The Court of Appeal of Aix-en-Provence condemned the publisher's clients for copyright infringement. In order to rule that the computer program is original, it merely stated that the program “provides a specific solution to the management of bailiffs' offices”.

The French Supreme Court annulled the judgment. Indeed, the Supreme Court considered that the Aix-en-Provence Court of Appeal breached the law by ruling that the computer program is original, “without explaining why the choices made provided evidence of a specific intellectual contribution and an individual effort by the person who developed the program under litigation, these elements being the only criteria that characterise an original work protected, as such, by copyright”.

This ruling therefore asserts that the usefulness of a computer program cannot be used as a criterion to determine whether a program is original. The French Supreme Court is in line with the European legislation, which provides in article 1 of the directive on computer programs that “A computer program shall be protected if it is original in the sense that it is the author's own intellectual creation. No other criteria shall be applied to determine its eligibility for protection”.

But of course, this does not mean that a useful computer program will not be protected by copyright… This case will now be rejudged by the Court of Appeal of Montpellier, which will have to decide whether the program is original or not, using the classic criteria set out by the Supreme Court: the personal intellectual contribution and the individual effort of the author.

By Brad Spitz, YS Avocats