Draft amendment to Copyright Act affects work made for hire

In response to ongoing complaints about the existing Copyright Act, in 2008 the Taiwan Intellectual Property Office (TIPO) of the Ministry of Economic Affairs established a special taskforce of experts from the high-technology and legal communities. After several years of discussion by the group, TIPO announced a draft amendment of the Copyright Act on April 3 2014 and held a public hearing on April 23. The draft amendment covers almost every chapter of the act and has 147 articles. Feedback from different groups after the draft became public indicated that the changes were notable for both copyright owners and those wishing to use their work. Evens the TIPO draft itself reaches no conclusions on certain crucial issues. For example, regarding the copyright ownership of work made for hire, the draft provides two options for public comment, which is unusual. Some of the key changes in the draft amendment are examined below.

Definition of 'public performance' and 'related rights'
According to the existing Copyright Act, 'public recitation' means the communication of the content of a work to the public by spoken word or other means; while 'public performance' involves acting, dancing, singing, playing a musical instrument or using other means to communicate the content of a work to a public that is present at the scene, including any communication to the public of an original broadcast of sounds or images through loudspeakers or other equipment.

In light of the difficulty of distinguishing the two types of use, the draft amendment revises the definition of 'public performance' to include the 'public recitation' definition in the existing act. In addition, to keep up with developments in modern transmission technology, the draft amendment revises the definition of 'public transmission' in the existing act. According to the draft amendment, 'public transmission' means to make available or communicate to the public the content of a work by wire or wireless network, or through other means of communication, including enabling the public to receive the content by any of these means at a time and place chosen by them.

Criminal liabilities amended
The draft amendment also revises the criminal liabilities in the existing Copyright Act. According to Article 91(3) of the act, anyone that commits the offence of reproducing onto an optical disk is liable to imprisonment for between six months and  five years, and may also be fined between NT$500,000 and NT$5 million. Considering the sharp decrease in criminal cases involving pirated CDs in Taiwan in recent years and the ongoing criticism of inappropriate criminal liabilities, the draft amendment removes this provision.

Work made for hire
In the existing Copyright Act, where a work is completed by an employee within the scope of his or her employment, such employee is the author of the work as follows:

• Where an agreement stipulates that the employer is the author, such agreement shall govern (ARticle 11(1)); and
• where the employee is the author of a work pursuant to the preceding paragraph, the economic rights to such work shall be enjoyed by the employer; however, where an agreement stipulates that the economic rights shall be enjoyed by the employee, such agreement shall govern (Article 11(2)). 

By referring to foreign legislation such as that of the United States and Japan, and considering the practical application of these provisions, the draft amendment makes two proposals:

• The employee and the employer can conclude an agreement stipulating that the moral rights and economic rights in the work shall be enjoyed by the employer; or
• Where a work is completed by an employee within the scope of employment, the employer is the author of the work; however, if an agreement stipulates that the employee is the author, such agreement shall govern.

If TIPO retains the second proposed amendment to Article 11 in the final amendment and the Legislative Yuan passes it, an employer will enjoy copyright in works completed by an employee within the scope of his or her employment without an agreement stipulating otherwise. Thus, if the employee and his or her employer disagree regarding  ownership of copyright in a work completed by the employee within the scope of employment, the burden of proof will rest heavily on the employee rather than the employer.