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2013/05 > The Cour de Cassation and the application of the Berne Convention to the author of a work created abroad

The Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886, is a Treaty that establishes the basis of international protection of such works. In particular, it allows a foreign author to protect his rights abroad, in the absence of any filing with an Industrial Property Office, and to rely on the law applicable in the country where he wishes to act to enforce his rights.

Article 5 of the Convention provides in its paragraphs 1) and 2):

“(1) Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.

(2) 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.”

In order to enforce copyright in Court it is necessary to act as “author” of the work, as the original owner of the work, or as holder of rights acquired by way of a transfer. Up to now French Courts, for their majority, have considered that the Berne Convention – and notably its Article 5 – does not include a definition of the rights owner, whether initial owner or transferee.

Because of this silence, the Courts mainly used to hold that, in order to determine whether the owner of copyright can take advantage of this quality, it was necessary to refer to the law of the country of origin of the work. This position was adopted notably by the Court of Appeal of Paris in litigation relating to the intellectual property rights of the company Marie-Claire in regard to the use of part of its magazine cover in Poland (CA Paris October 1st, 2008 No. 06/06988), Swarovski France with regard to the infringement of its creations (CA Paris February 16, 2007 No. 05/14890) or by the Cour de Cassation (French Supreme Court) in a case between the movie production company Universal City and an author regarding infringement of his novel (Court of Cassation, January 30, 2007).

That same French Supreme Court has now reversed its position in two judgments dated April 10, 2013 (Appeal No. 11-12508 and 11-12509). Indeed, it has decided that the quality of initial owner of the Copyright is to be determined by applying the law of the country where the protection is claimed and not by applying the law of the country of origin of the work. In both cases, journalists working for an American television channel had been dismissed. Claims were therefore filed before the courts to challenge the merits of these dismissals, as well as claims based on the violation of the rights of those alleged authors, for use of their reports and documentaries without permission. To reject these claims, the Court of Appeal had held, in two decisions of December 15, 2010, No. 08/11516 and 08/11517, that U.S. law, which was the law of the country of origin of the works and of the alleged damage, was the applicable law in this case and that, according to American law, the employer was the sole original holder of the Copyright.

The Cour de Cassation reiterated first, in these two judgments of April 10, 2013, that, according to the text of the Berne Convention, the enjoyment and exercise of copyright is independent of the existence of Copyright protection under the law of the country of origin of the work. It concluded that, apart from the provisions of the Convention, the scope of protection of Copyright and the ways in which the author can assert his rights, are set by applying the law of the country where protection is claimed.

The Cour de Cassation then overturned the two contested decisions of the Court of Appeal, on the grounds that the determination of the original owner of the Copyright is also subject to Article 5.2 of the Berne Convention and, thus, subject to the law of the country where the protection is claimed. It stated, therefore, that the Court of Appeal was wrong to hold that the economic rights in Copyright (which, in contrast to moral rights, are transmissible) could arise in the hands of a third party without offending the French legal system.

Foreign companies, employing French authors, need to pay close attention to these decisions. They demonstrate, once again, the very protective position that French Courts adopt towards authors. In fact, such a position is in line with the now old decision of the same Cour de Cassation, this time relating to the moral rights of the author, in the judgment of May 28, 1991, relating to the film by John Huston, Asphalt Jungle, whose colorization was opposed by John Huston’s heirs. The Court, in that decision, discounted U.S. law, otherwise applicable, to the benefit of French law, on the grounds that the rules relating to moral rights are rules of public order and therefore it is imperative that they should apply.


In Brief:

Accession of the Comoros to OAPI

On 25 May 2013, the Comoros joined the African Intellectual Property Organization (OAPI) adhering to the Bangui Agreement, and thus became the seventeenth member of the organization. Through this membership, intellectual property rights are now extended to the island nation by filing a single application at the Office of OAPI, headquartered in Yaoundé, Cameroon.

Accession of India to the Madrid Protocol

On April 8, 2013, the Indian Government deposited its instrument of accession to the Madrid Protocol with the Director General of WIPO. The Madrid Protocol will enter into force in respect of India, on July 8, 2013. The accession of India to the Madrid Protocol brings to 89 the number of Contracting Parties to the Madrid Protocol and to 90 the total number of Contracting Parties to the Madrid system.

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