Re: Assignment of Copyright II

On 9.04.98, Juliann Krute <juliann[_at_]people-are.strange.com> wrote:
>
> OK, let's make matters a bit more confusing. Assuming that Author A has
> given a license to make a derivative work to Author B, who has assumed
> the responsibility and writing for the web pages.
>
> 2 years pass. Author B has updated the site almost daily, and the
> content has changed almost entirely. The theme, name and format remain
> the same, but every other detail has been altered throughout the years.
>
> Author A comes to Author B and demands that B stop work on the pages,
> because Author A wants them back.
>
> Can Author B continue to do B's version of the web pages or must B cease
> all work? Is there an argument that Author B can redo the pages with the
> same content but under a different format? B's pages are a derivative,
> yes, but is there a point at which the work resembles only tangentially
> the original that a license is no longer necessary?
>
> This question is asked with respect to all jurisidictions, not just the
> US or Canada. Also, we may not assume that Authors A and B are in the
> same country.

This comment does address the issues from a German perspective.

My first reaction would be to recommend a pragmatist solution an to suggest that all content of the pages that was created by A is replaced by new content.

My second reaction would be to ask, whether B has a claim 1) to have B stop working on the pages and 2) "get the pages back.

1. This depends on

(a) the *factual* question whether the site has been changed so much that it may no longer be considered as a derivative work, and/or

(b) (b.i.) the term of the site-maintenance agreement between A and the "owner" of the web-site and/or (b.ii) the agreement between A and B.

(a) A and B are no joint authors, because they did not create the original work together, hence, when the hypo started, B's work was clearly a derivative work and depending on A's consent. According to a decision of the German Federal Court ("Alcolix" BGHZ 122, 53ss.) regarding S. 23 and 24 (1) UrhG the work of an other author may be freely used if (Translation) "in view of the originality of the new Work the borrowed individual features of the protected <first> work fade out." When examining whether the web-pages at present may freely used A's work it may be of importance to ascertain to which extent the remaining bits of A's work are to be considered as individual creations that meet the standard for copy-right protection under German law. Depending on this evaluation of the facts it may turn out that at present A's consent is no longer needed.

However, I would like to underscore that web-sites are not only web-pages, a web-site design may also include the creation data bases and programmed instructions for computers. This may make the task to determine the parties' rights more complex.

(b)

(b.i) can not be addressed here for lack of information. The agreement with the owner of the web-site is crucial because it could help to avoid the examination of the difficult factual questions referred to under 1.a.

(b.ii) Under German law copy-right as such may not be assigned because the author may not transfer the so called "moral rights" (S. 29 UrhG; cases of inheritance (a succession by operation of law) excepted). However, exploitation rights, including exclusive rights, may be granted to third persons. In this respect there is no requirement to reduce the agreement into writing except for cases where future works are concerned. Moreover, a grant of rights to exploit a work in an unknown way of exploitation or obligations to grant such rights in the future may not be validly agreed (S. 31 (4) UrhG). If a contract does not expressly state the scope of the rights that are granted by the author the restrictive principle that only such rights will be granted which are necessary for the implementation (purpose) of the underlying contract, is to be applied; i.e. the transferee only gets a required minimum (S. 31 (5) UrhG). As a result of the moral rights of the author, the latter must consent to any changes made to his work (S. 39 (1), with "good faith exception" in S. 39 (2) UrhG).

If we look at the hypothetical case it seems that A had given B his consent for modifications of A's work (S. 39 UrhG) and a non-exclusive license (S. 31 (2), 33, 35 UrhG). On the basis of the facts, is unclear whether this is a free license. I would be inclined to opt for "Yes". However, if B unexpectedly starts to earn huge amounts of money from the exploitation of the derivative work, A might use S. 36 UrhG to obtain an adequate share in the proceeds.

Can A terminate the license? Again, the facts are not sufficiently clear. However, I would be tempted to say NO.

(b.ii) It is not clear what is meant by "Author A wants the pages back". Provided there are no terms in the agreement between A and the "site-owner" that provide otherwise, and under the assumption that A has granted non-exclusive rights, he could continue to work on and to exploit the pages as they where when he temporarily abandoned the project. However, he has no right to claim the entitlement to use B's derivative work.

Regards,

E. Schaefer
ES[_at_]cohausz-florack.de

P.S. Please note that the above is intended to stimulate discussion and is not to be considered as legal advice or constituting a client-attorney relationship. If you have a similar problem involving German copy-right you should take formal advice. Received on Fri Apr 10 1998 - 12:00:48 GMT