Re: Predating - Can I get caught?

This question also raises a very important issue regarding the applicable law to copyright ownership.

Although, you may have those work made for hire agreements executed by those programmers with a retroactive effect of two years under US copyright law, you may bump into the obstacle of proving that you are the right owner outside the United States based on other legislation.

For example, in France you are not the initial title owner in the works other than software and collective works, e.g. in graphical or design works although you have a work made for hire agreement valid under US copyright law. Under French copyright law, the only way to obtain copyright in the work is to have an assignment of rights provision consistent with French copyright contract rules.

Therefore, if a court applies French law to the copyright ownership issue you will not be able to ascertain copyright in the works at stake because you do not comply with French mandatory copyright contract rules regarding the transfer of right (see Art. L. 131-3 of the French Intellectual Property Code).

This comment is based on the Itar Tass case which follows one of the two pssoible approaches as regards the applicable law to copyright infringement (for a critic of this case see P. Geller, International Copyright Law and Practice, Introduction). This ap proach is followed by some courts in France where the same uncertainty exists (the other approach is based on the application of one copyright choice of law rule only, i.e. the law for which the protection is claimed - Art. 5.2 of the Berne Convention).

Interstingly, the American Law Institute Project (Preliminary Draft Number 1, January 17, 2003) seems to follow the Itar Tass approach by setting forth two separate copyright choice of law rules, one for copyright ownership on the one hand and another one  for copyright infringement on the other hand. However, it refines the analysis by relying on the lex contractus to decide on the applicable law to copyright ownership where an agreement exists between the creator and the exploiter or distributor.

>From a practical standpoint, this means two things. First, one shall consider more than one legal system when adressing the timely issue of copyright ownership. This is even more important that copyrighted materials such as software are used on a global
scale. Second, the best way to undermine international copyright ownership issue is to include a choice of law provision in the agreement with the creator designating the law which is used to draft your agreement (in your situation US law).

Regards,

Alan Ragueneau
Researcher-Assistant
Business Law Center, Lausanne Law School

> From: CNI-COPYRIGHT -- Copyright & Intellectual Property=20
> [mailto:CNI-COPYRIGHT[_at_]cni.org]On Behalf Of John Victor
> Sent: Thursday, December 18, 2003 11:10 AM
> To: CNI-COPYRIGHT -- Copyright & Intellectual Property
> Subject: [CNI-(C)] Predating - Can I get caught?
>=20
>=20
> Hello,
>=20
> I am planning on having programmers, designers, and
> such sign a "Work Made For Hire" agreement, which
> includes text for transfer of all rights to me.
> Unfortunately, the work was started 2 years ago.
>=20
> I am planning on simply putting a date of 2 years
> ago on the agreement. Can I get caught? Carbon
> dating?
>=20
> Regards,
> Victor
>=20
> __________________________________
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http://photos.yahoo.com/ Received on Mon Dec 22 2003 - 21:05:24 GMT