Newsletter
The Main Points of Draft Amendment to the Copyright Act
The Intellectual Property Office of the Ministry of Economic Affairs (hereinafter the "IPO") published the first Draft of the Amendment to the Copyright Act on 3 April 2014. The Copyright Act of Taiwan has undergone several amendments since its revision in 1998, including the latest amendment made on 22 January 2014. As some provisions of the current Copyright Act still cannot reflect current status, amendments have been made to the current Copyright Act on a large scale after considering the copyright issues arising from local practice and the copyright laws or regulations of different countries.
The current Copyright Act consists of 117 articles, while the Amendment to the Copyright Act consists of 147 articles. The main points of the Amendment to the Copyright Act are as follows:
I. Consolidating and revising intangible rights embodied in the economic rights in a work so as to adapt to the development of science and technology
To react to the technological aspect of science and technology development, adjustments and revisions are made to the Copyright Act to reflect practical needs, including form of exploitation stemming from the emergence of digital convergence and vague definition of the scope of right, and also the definitions of public broadcast and public transmission are revised. In view of the development of networks and broadcasting equipment, the right of public communication is added. In respect of the fact that public performance and public recitation are hard to be told their difference, the two terms are consolidated and the definition of public performance is revised. Besides, the definition of public presentation is simplified for easy understanding.
(Item 6 through Item 10 of Article 3 of the Amendment to the Copyright Act)
II. Reviewing the rationality of the ownership of works for hire and audiovisual works
The current Copyright Act stipulates that if no agreement, an author's moral rights and the economic rights in a work belong to the employee and the employer, respectively. Such provision may protect the rights and interests of employers, but labor disputes are easy to occur in practice. Therefore, the Amendment makes two proposals, under which employees and employers are the authors under different circumstances. As audiovisual works are mostly completed by persons under commission, additional provisions are added to govern the ownership of the copyrights in audiovisual works.
(Articles 13, 14, 15 and 38 of the Amendment to the Copyright Act)
III. Revising the provisions regarding moral rights for promoting the circulation and exploitation of works
According to the current Copyright Act, no remedy is available for infringement of the moral rights of a juristic person who has been extinguished. By referring to international conventions and foreign legislations, protection of the moral rights of a juristic person who is extinguished is deleted. To improve protection over the moral rights of an author, the Amendment expressly addresses that exploitation of a work in a manner that would infringe upon the author's reputation is deemed infringement of the moral rights thereof. To promote the circulation and exploitation of a work, the provision of "being presumed to have consented to the public release of a Masters theses or doctoral dissertation" specified under the current Copyright Act is amended to read as "being deemed to have consented to the public release of a Masters theses or doctoral dissertation." In addition, the Amendment adds a provision that the work of a deceased author that was not published when the author was living is allowed to be released if certain requirements are met.
(Articles 17, 19 and 20 of the Amendment to the Copyright Act)
IV. Carifying the right of distribution
No express provisions regarding distribution, importation and doctrine of exhaustion provided by the current Copyright Act, for example, the issue of whether distribution is confined to actual delivery and the relationship between the doctrine of exhaustion and prohibition of parallel import. The Amendment clarifies the definition of distribution under the Copyright Act; that is, distribution may refer to an act of actual delivery, but an act of public display and possession is still subject to the Copyright Act. The Amendment also clarifies the international definition of exhaustion, which means that after the economic rights in a work are distributed through transfer of the ownership of such work, no distribution right thereof may be claimed, including the right to distribute the work through transfer or rental of the ownership. Meanwhile, the Amendment consolidates and revises the provisions regarding exhaustion of the distribution right and the rental right, as well as reserves the provision of parallel import of genuine products, thus granting the copyright holder with the right to be different in the market.
(Article 33, Article 34, Article 74 and Item 4 of Article 99-1 of the Amendment to the Copyright Act)
V. Revising the protection of performers and sound recordings
Different countries adopt different legislations governing the issue of whether a sound recording should be protected as a copyright or a neighboring right. Where a sound recording is protected as a copyright, the standards of protection therefor are higher. In Taiwan, a sound recording has been protected as a copyright pursuant to the Copyright Act since 1944. In this amendment, it still protects a sound recorded work pursuant to the standards for protection of copyright. However, considering that the current Copyright Act provides for protection of performers and sound recordings in scattering articles, the Amendment specifically formulates provisions governing the rights of performers and the rights of sound recordings in separate articles for easy reference. According to the current Copyright Act, a performer enjoys the exclusive rights in his/her unfixed performances or in the performances fixed in "sound recordings." To respond to the Beijing Treaty on Audiovisual Performances passed by the WIPO in June 2012, the Amendment adds that performers enjoy the exclusive rights in unfixed live performances and in the performances recorded in audiovisual recordings, and also expressly adds that performers and sound recordings enjoy the right to claim remuneration in respect of the public performances and the manner of exercising such right.
(Articles 35, 36 and 37 of the Amendment to the Copyright Act)
VI. Making appropriate revisions to the limitations and exceptions to the economic rights in a work
"Items applicable to fair use" specified under the current Copyright Act no longer satisfy the demands of today's network and digital time. Therefore, this Amendment not only makes revisions specifically to legislative or administrative purposes, judicial and administrative procedures, educational purposes, works, citations and nonprofit purposes of public juristic persons, share antenna systems, computer program backups and reprint of current events, etc., but also adds fair use in respect of distance learning, digitalized collections of national libraries, humorous parodies and frame-in by referring to foreign legislations. According to Article 44 through Article 63 of the current Copyright Act regarding limitations and exceptions to economic rights, the application thereof, in addition to in compliance with the respective requirements of the articles, must examine if the use also complies with the "reasonable scope" pursuant to the four factors of Article 65. To more clearly define the limitations and exceptions to economic rights, the Amendment particularly addresses the requirements for the application of Article 44 through Article 63 of the current Trademark Act and deletes the term "with the reasonable scope" (except for Article 61 of the Amendment to the Copyright Act about private reproduction). According to the Amendment, examination of fair use pursuant to Article 65 of the Copyright Act is no longer required.
(Articles 53, 54, 55, 56, 57, 58, 60, 62, 63, 64, 66, 67, 68, 70, 73, 75 and 78 of the Amendment to the Copyright Act)
VII. Adding the provision of compulsory licensing if the identity of the economic rights holder is unknown
The Act for the Development of the Cultural and Creative Industries of Taiwan provides for a compulsory licensing system for a work, in which the identity of the economic rights holder is unknown; however, the compulsory licensing is applicable only to the cultural and creative industries. To promote the circulation and exploitation of works, there must be channels for exploiters to exploit orphan works, whether for profit or non-profit purposes. Therefore, the Amendment adds compulsory licensing for a work whose economic rights holder's identity is unknown. With a view to the term of exploitation of a work whose owner's identity is unknown and to improving the efficiency of examination by competent copyright authorities, the Amendment allows exploiters to exploit the relevant works by providing a deposit during examination by the competent copyright authorities.
(Article 81 of the Amendment to the Copyright Act)
VIII. Revising border control measures
According to the current Copyright Act, the customs authorities may seize goods upon an application, which lays emphasis on copyright owners or plate right owners who have immediate concerns to exercise their rights to claim prevention of the infringement; however, whether the goods to be seized are infringing goods are unknown. By referring to the Code of Civil Procedure that allows a debtor to cancel provisional seizure or provisional injunction after furnishing a security, the Amendment adds a provision that the party whose goods are seized may apply to the competent customs authorities for withdrawal of the seizure by providing two times the deposit or a security equivalent thereto. In view of the need to investigate the infringement or to initiate litigation, the Amendment, by referring to Article 76-2 and Article 76-3 of the Trademark Act, adds a provision that allows the competent customs authority to provide, upon an application, the right holder with the information about the infringing goods and restricts the use of the relevant information in the hope of thoroughly protecting the rights and interests of the copyright holder or the plate right holder.
(Article 106 of the Amendment to the Copyright Act)
IX. To review inappropriate criminal liabilities
The criminal liabilities under the current Copyright Act mainly deal with the pirated copies of physical objects and the rampant sale of pirated CDs in night markets or by free-standing inserts in the past. Nevertheless, due to rapid changes in science and technology environments over these years and influence of global economic recession, CD manufacturers in Taiwan decrease gradually. Moreover, the government imposes strict control over local CD manufacturers to ensure that they engage in production or manufacture of original CDs. Therefore, no major illegal case has been found recently. As for the issue of selling pirated CDs in night markets and by free-standing inserts, the country has launched the "project of implementing IPR protection" (one project every three years) since 2002, whereby a coordinating structure for IPR law enforcement has been organized, including National Police Agency (IPR protection squads), customs authorities, Taiwan High Prosecutors Office, Judicial Yuan, Board of Foreign Trade, CD Inspection Taskforce, the Ministry of Education and the Intellectual Property Office, and educational propaganda and crackdown actions have been taken. According to the statistics of the National Police Agency of the Ministry of Interiors, the number of seized CDs over these years sharply deceased. Therefore, some criminal liabilities under the current Copyright Act, such as sales of pirated CDs as a public crime, the minimum of six-month imprisonment for copyright infringement, cannot adequately reflect the offense committed and the principle of criminal code. Accordingly, the provisions relating thereto are revised. As for distribution of the original of a work and any reproduction thereof through transfer of the ownership without authorization, the current Copyright Act has different penalties for distribution of original works and pirated copies. Considering that the requirements and criminal liabilities therefor are of no much difference, they are combined altogether and then simplified. Also, additional penalties are provided for infringement "in the form of public display or possession of works with an intention of distribution." In addition, considering that an offense violating parallel import of genuine products is subject only to civil liabilities under the current Copyright Act, the subsequent distribution of woks that violate parallel import is decriminalized.
(Articles 118, 119, 121, 122 and 130 of the Amendment to the Copyright Act)
X. Discussing whether the term of protection of the economic rights in a work is extended
According to the current Copyright Act, the economic rights in a work endure for the life of the author and fifty years after the author's death, or for fifty years after the first public release of the work. Although such provision complies with the requirements of the WTO/TRIPS, some countries extend the term of protection of the economic rights in a work to seventy years, such as the USA, EU Directives, the UK, France and Germany. Besides, Japan extends the term for protecting cinematographic works to seventy years but maintains the term for the other works as fifty years, while Korea still remains the term of protection as fifty years. As the issue of whether the term of protection of the economic rights in a work is extended involves if such extension increases incentives for creations, has any influence on different industries, and increases national educational and cultural costs, it still needs a consensus from all circles.
XI. Discussing the possibility of recovering the copyright registration system
At present, except for the pledge registration system specified in Article 23 of the Act for the Development of the Cultural and Creative Industries of Taiwan, no copyright registration system is available in Taiwan. To promote the circulation and exploitation of works and to protect transaction safety, the Amendment adds the public notice system for assignment, exclusive licensing and pledge recordation of the economic rights in works. Nevertheless, calls for recovery of copyright registration system frequently arise. According to Article 5 of the Berne Convention and the provisions of the TRIPS, the registration of copyright in a work cannot serve as a precondition for acquisition of the copyright. Therefore, countries that adopt copyright registration system mostly adopt the registration system on a voluntary basis. According to a WIPO's survey on its member countries about copyright registration system, advanced countries that adopt no registration system and adopt voluntary registration system represent a high percentage. The countries that have no copyright registration system include Israel, Netherlands, Switzerland, Sweden, the UK, Germany, Denmark, Russia, South Africa and Australia, while the countries that adopt voluntary registration system include the USA, Canada, France, India, Japan and Spain. Regarding this issue, there are both supporters and opponents. The supporters think that voluntary registration system is convenient for searching the information of right holders, reducing costs arising from exploitation of works, and promoting the circulation and exploitation of works. On the other hand, the opponents think that the recovery of copyright registration system may readily result in a misinterpretation, i.e. "right being granted upon registration and no right being obtained without registration." Moreover, because copyright registration is not compulsory, if a copyright holder fails to make recordation of changes after his/her contact information, assignment or licensing changes or is incorrectly recorded, exploiters may obtain erroneous information and spend substantial administrative and juridical costs to clarify the same in case of any disputes, such that additional burden would create to the right holder. Under the circumstances, right holders may not be interested in making the registration of copyright since there is no incentive to encourage them to do so. The recovery of copyright registration is a controversy issue and will be further discussed.