Nora Shih
The Intellectual Property Court rendered the 108-Xing-Zhi-Shang-Yi-32 Decision of August 29, 2019 (hereinafter, the “Decision”), holding that although the Copyright Law protects the right of the commissioning party to exploit the works, nevertheless such exploitation right is not without restriction and still needs to meet legal or contractual requirements.
According to the facts underlying this Decision, the Defendant, which engaged in eyebrow tattoo and eyebrow embroidery, entered into an online marketing contract (hereinafter, the “Contract at Issue”) with the Complainant, Company A, to entrust Company A to conduct online marketing. Both parties also agreed that the photographic works relating to eyebrow tattoo and eyebrow embroidery (hereinafter, the “Works at Issue”) as created by Company A’s personnel for the Defendant and the literary works such as online copywriting shall be owned by Company A from the very beginning. The Defendant was clearly aware that since his contract with Company A had been terminated on August 31, 2017, the Defendant shall not reproduce the above works without Company A’s consent or license. However, the Defendant infringed Company A’s copyrights by continuously reproducing the above photographic and literal works whose copyright rights belong to Company A in December 2017 without Company A’s consent or license and uploading them to his Facebook and Blog pages for public transmission and for online browsing by unspecified individuals.
According to the Decision, Article 12 of the Copyright Law stipulates “Where a work is completed by a person under commission, except in the circumstances set out in the preceding article, such commissioned person is the author of the work; provided that if an agreement stipulates that the commissioning party is the author, such agreement shall govern. Where the commissioned person is the author pursuant to the provisions of the preceding paragraph, the enjoyment of the copyright to such work shall be assigned through contractual stipulation to either the commissioning party or the commissioned person. Where no stipulation regarding the enjoyment of copyright has been made, the copyright shall be enjoyed by the commissioned person. Where the copyright is enjoyed by the commissioned person pursuant to the provisions of the preceding paragraph, the commissioning party may exploit the work.” The requirement that “the commissioning party may exploit the work completed by the commissioned party” in Paragraph 3 of the article means that pursuant to the law, the scope of such exploitation should be defined by the commissioning or contractual objectives of the commissioning party, and all reproductions or adaptations within such scope are certainly permitted by law. As to the scope of the commissioning objectives, the true intent of the parties should be explored, and contractual agreement is not limited to words. Therefore, although the Defendant is the commissioning party of the Works at Issue with the right to exploit the works by the commissioning party protected under the Copyright Law, still the exploitation right does not go without restriction and is still subject to legal or contractual requirements.
It was further pointed out in this Decision that the Defendant contended that since he had entrusted Company A to complete the works and thus was the commissioning party, he had the right to exploit the Works at Issue. However, Article 5, Paragraph 1 of the Contract at Issue provides that the Defendant can only exploit the works during the term of the Contract, that during the exploitation, Company A’s ownership shall be indicated, and that the status of exploitation or citation shall be communicated to Company A in writing or via email. Therefore, the term, manners and scope of the Defendant’s exploitation of the Works at Issue should be constrained by the Contract at Issue. Therefore, the Defendant, as a party to the Contract at Issue, deliberately exploited the Works at Issue beyond the scope of the Contract at Issue by reproducing and publicly transmitting the Works at Issue, and the offense of infringing the copyright of others by reproductive means without authorization under Article 91-1 of the Copyright Law and the offense of infringing the copyright of others by means of public transmission without authorization under Article 92 of the Copyright Law were established.