Yuki Chiang[1]
I. Introduction
Exchanges of cultural creations and knowledge are some of the current irresistible trends of globalization. In order to make their works available to a wider audience and expand their competitiveness and the influence of their works in international markets, copyright owners often license their works to be translated into other languages. In such case, whether the translated works are protected by the Copyright Act? According to the nature of the Copyright Act, it protects the “expression” of creations including graphic, linguistic, or visual effects, and since “translation” is essentially an “expression” that converts one language into another, the resulting translated work is also an independent work, protected by the Copyright Act.
Disputes often arise in the translation license relationship between the original copyright owner (i.e., the commissioning party) and the translator (i.e., the commissioned person), including issues concerning the governing law, the ownership of the translated work, translation defects, and the right of paternity. This article aims to briefly introduce the nature of a translation license contract and common disputes and raise relevant precautions from the perspective of the original copyright owner for reference.
II. Nature of translation license contracts and common disputes in practice.
A. Nature of translation license contracts
There are various views regarding the nature of translation license contracts. Some believe they are contracts for work, while others believe they are mandate contracts. The specific nature of such contract should depend on the “contents of the contract and the true intent of the parties.” For example, if both parties agree that the remuneration will not be paid until the work is done, it is mostly considered a “contract for work”[2]; but if the mutual agreement focuses on the work to be done by such specific person and stipulates that the “remuneration will be paid on a monthly basis”, the agreement is believed by some to be a “mandate contract.”[3]
According to the above discussion, a contract which stipulates “a fixed translation compensation each month to be paid to the translator” is highly likely to be regarded as a “mandate contract”; and if it is agreed that “payment will be made by installment and no payment will be made without passing the acceptance inspection,” such contract is highly likely to be perceived as a “contract for work.” Therefore, an original copyright owner may formulate a translation license contract based on actual needs.
B. Common disputes in practice
1. Can the Taiwan law be stipulated as the governing law of the contract?
If both parties to the translation assignment are locals, it is certainly permitted to stipulate that the governing law of the translation license contract is the Taiwan law without any issue under the principle of freedom of contract. However, since one of the parties to a translation contract may be a foreign national, should the Taiwan law still be stipulated as the governing law of the contract at this time? In this regard, since the nature of a translation contract may involve elements relating to a foreign party and thus the Act Governing the Choice of Law in Civil Matters Involving Foreign Elements[4] is applicable, the parties may determine the governing law based according to their will in accordance with Article 20, Paragraph 1 of such Act.[5] Therefore, even if one of the parties is a foreign national, both parties to the translation license contract may still agree that the “Taiwan” law shall be the governing law.
2. To what extent should a translated work be considered original?
In reference to thecourt decisions in Taiwan, the criterion for the originality of a translated work mainly lies in “the additions, subtractions, or embellishments that show distinguishable changes as compared with the original work,” which makes the work original. For instance, the no. 91-Shang-Keng-(1)-Zi-284 Decision of the Taiwan High Court stated that: “The court held that in case of additions, subtractions or embellishments of an existing work, if their contents reflect distinguishable changes from the original work to the extent of demonstrating originality, it should be an independent copyright work.” 」
From this perspective, if that the translated work is simply converted from “Simplified Chinese” into “Traditional Chinese” without any additions, subtractions or embellishments that show distinguishable changes in content from the original work, then it is very likely that the court will consider the translated work lacks originality and is not a work under the Copyright Act.
3. If a translated work is defective, can a reduction in remuneration be requested?
The most common issue encountered in translation license contracts is that the wording and expression of the translated work does not meet the expectations of the original copyright owner. In such situation, the primary concern of the original copyright owner is whether he/she can request corrections or reduction of remuneration.
This issue requires a revisit to the legal nature of a translation license contract. In view of the current operation of the translation market, “payment made by installment and preconditioned by passing the acceptance inspection” is the most common type, which causing the a translation license contract mostly be considered as a “contract for work.” Under the legal relationship of a contract for work, if a translated work is defective or does not meet the expectation, the original copyright owner may request the translator to repair the defects within a stated period, and when the translator refuses to repair or fails to or repair the defects within the period, can a demand be lodged to reduce the remuneration for the translation.[6]
4. Does the original copyright owner enjoy the copyright and all related derivative rights to the translated work?
A translated work is a “derivative work,” which is an independent work[7] under Article 6 of the Copyright Act. Whether the original copyright owner still holds the copyright and the related derivative rights to the translated work is determined by the contract between the parties regarding the “ownership of the copyright to the translated work” pursuant to Article 12 of the Copyright Act. There may be the following three scenarios:
a. The parties do not set agreement on the copyright attribution of the translated work: The translator is the author of the translated work and holds the moral right and economic right of the translated work, while the original copyright owner only has the right to use the translated work.
b. The parties set agreement that the economic right of the work shall be assigned to the commissioning party: The translator is the author of the translated work and enjoys the moral right of the translated work, while and the original copyright owner enjoys the economic right of the work.
c. The parties set agreement that the commissioning party shall be the author: The “original copyright owner” is the author of the translated work and enjoys the moral right and economic right of the translated work.
Therefore, it is possible for the original copyright owner to define him as the author of the translated work and thus enjoys the full moral right and economic right to the translated work in the “translation license contract”, i.e. the above (iii) scenario.[8] Even if the contract does not provide for the copyright attribution of the translated work, i.e. the above (i) scenario, unless the parties have agreed in the translation license contract in advance that subsequent exploitation of the translated work does not require a license from the original copyright owner, when the translator subsequently seeks to exploit the “translated work,” the copyright owner of the “original work” still enjoys the right of consent.[9]
5. Can a translator request the right of paternity?
Whether the translator can request the right of paternity should depend on the copyright attribution of the translated work as agreed upon by both parties, as explained below:
a. If the parties have not set agreement on the copyright attribution of the translated work: Since the “translator” is the author of the translated work and enjoys the copyright to the translated work, the original copyright owner is required to specify the name of the translator when exploiting the translated work in order to protect the “right of paternity” of the translator.[10]
b. If the parties have set agreement that the copyright to the work shall be assigned to the commissioning party: When both parties set agreement that the copyright is assigned to the commissioning party, the “translator” is still the author of the translated work and enjoys the moral right to the translated work. Therefore, when exploiting the translated work, the original copyright owner should specify the name of the translator when exploiting the translated work to protect the “right of paternity” of the translator.
c. If the parties have set agreement that the commissioning party shall be the author: Since the “original copyright owner” is the author of the translated work and enjoys the copyright to the translated work, it is not necessary for the original copyright owner to specify the name of the translator when publicly releasing the translated work.
III. Suggestions for entering a translation license contract:
A. The attribution of the rights to the translated work should be defined upon: In the process of formulating a translation license contract, regardless of whether the commissioning party is the author or only enjoys the economic right to the work, since the attribution of rights involves the subsequent exploitation of the translated work, it is still necessary to make an explicit agreement.
B. The right of the original copyright owner to prohibit improper revision of the original work should be defined upon and protected: In order to prevent a translated work from being so different from the original work that the essence of the original work is lost, it is recommended that both parties should define in the translation license contract that the translator should be true to the original work and is prohibited from improperly revising the original work.
C. The remuneration payment and manner of acceptance of the translated work should be specifically stipulated: The parties should set agreement that the translator should not improperly revise the original work, and the quality of translation can be ensured by means of regular review. For example, the conditions of advance payment in installments and the procedure of regular acceptance of the translated work may be agreed upon.
D. The indemnification liability after rescission or termination of the contract shall be specifically stipulated: In the translation license contract, it shall be agreed that if the translator fails to complete the translation within the agreed period, or if the quality of the translation fails to meet the quality, the commissioning party shall be entitled to claim damages in order to protect he/she own interests.
[1] The author is a lawyer at Lee, Tsai & Partners. However, the contents of this article merely reflect personal opinions and do not represent the position of the law firm.
[2] Refer to the no. 100-Jian-Shang-zi-328 Decision of the Taipei District Court of Taiwan, the no. 108-Chung-Shang-zi-261 Civil Decision of the Taiwan High Court, the no. 102-Chu-Xiao-zi-203 Civil Decision of the Hsinchu District Court of Taiwan and the no. 98-Jian-Shang-zi-699 Decision of the Taipei District Court of Taiwan.
[3] Refer to the no. 108-Lao-Su-zi-130 Civil Decision of the Taipei District Court of Taiwan.
[4] Refer to the no. 98-Tai-Shang-zi-2259 Civil Decision of the Supreme Court.
[5] Refer to Article 20, Paragraph 1 of the -Act Governing the Choice of Law in Civil Matters Involving Foreign Elements provides: “The applicable law regarding the formation and effect of a juridical act which results in a relationship of obligation is determined by the intention of the parties.”
[6] Refer to the no. 98-Jian-Shang-zi-699 Decision of the Taipei District Court of Taiwan and the no. 102-Chu-Xiao-zi-203 of the Hsinchu District of Taiwan.
[7] Refer to the no. 106-Tai-Shang-290 Civil Decision of the Supreme Court and the no. 107-Xing-Zhi-Shang-Su-zi-34 Decision of the Intellectual Property Court.
[8] Refer to Articles 6 and 12 of the Copyright Act.
[9] Refer to Article 6 of the Copyright Act.
[10] Refer to Article 16, Paragraph 1 of the Copyright Act.