Applying the Berne convention to works

In particular, Article 5 of the convention, paragraphs 1 and 2, allows a foreign author to protect his rights abroad in the absence of any filing with an industrial property once, and to rely on the law applicable in the country where he wishes to act to enforce his rights.

However, to enforce copyright in court it is necessary to be the ‘author’ of the work, as the original owner of the work, or as the holder of rights acquired by way of a transfer. Up to now the majority of French court rulings 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 French courts mainly used to hold that, in order to determine whether the owner of foreign copyright can take advantage of it, 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 IP rights of the publisher of Marie Claire magazine in regard to the use of part of its magazine cover in Poland, Swarovski France with regard to the  infringement of  its creations and 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.

The Cour de Cassation 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 initial owner of a 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 from their jobs.

Claims were therefore ƒled 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 US 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 enjoyment and exercise of copyright is independent of existence of copyright protection under the law of the country of origin of the work.”

The Cour de Cassation reiterated 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, the colourisation of which was opposed by John Huston’s heirs.

The court, in that decision, discounted US 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.