Regional Meeting for Heads of Copyright Offices in Arab

Countries on the Beijing and Marrakesh Treaties

organized by
the World Intellectual Property Organization (WIPO)
in cooperation with
the Ministry of Commerce and Industry of the Sultanate of Oman

Muscat, April 1, 2015

TRANSFER OF RIGHTS AND RIGHTS OF REMUNERATION

Dr. Mihály Ficsor
Chairman, Central and Eastern European Copyright Alliance (CEECA),
former Assistant Director General of WIPO
I. TRANSFER OF RIGHTS UNDER THE ROME
CONVENTION AND THE TRIPS AGREEMENT

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The Rome Convention,
when it was adopted in
1961, it was a „pioneer”
treaty…

… but it has become

out-of-date (and it was
not nice to audiovisual
performers).

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Rome Convention: rights flying away (1)

Article 7
1. The protection provided for performers by this Convention shall include
the possibility of preventing:
(a) the broadcasting and the communication to the public, without their
consent, of their performances, except where the peformance used… is itself
aready a broadcast performance or is made from a fixation;
(b) the fixation, without their consent, of their unfixed performance;
(c) the reproduction, without their consent, of a fixation of their
performance:
(i) if the original fixation itself was made without their consent;
(ii) if the reproduction is made for purposes different from those for
which the performers gave their consent;
(iii) if the original fixation was made in accordance with the provisions of
Article 15 , and the reproduction is made for purposes different from
those referred to in those provisions.

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Rome Convention: rights flying away (2)

Article 19
Notwithstanding anything in this Convention, once a performer has
consented to the incorporation of his performance in a visual or audio-
visual fixation, Article 7 shall have no further application.
• Proposed by the United States.
• Amendments proposed by Austria and Czechoslovakia to reduce the
scope of application of Article 7 to performances incorporated into films
(and not to extend it to audiovisual fixations intended for television), but
the majority supported the U.S. proposal.
• However, it was made clear during the debate that Article 19 has no
effect upon performers’ freedom of contract in connection with the
making of visual and audiovisual fixations, nor does it affect their right to
benefit by national treatment, even in connection with such fixations.

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Rome Convention: rights flying away (3)

The Rome Convention has applied the „know how” of the „smart girl” of the
folk tale who solved the conundrum task of giving a present and still not
giving a present to the king.

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The TRIPS Agreement has
been even harsher to
audiovisual performers;…

... it has simply neglected

their very existence.

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TRIPS Agreement: the right of fixation does not
extend to audiovisual performances (1)
Article 14.1

In respect of a fixation of their performance on a phonogram,

performers shall have the possibility of preventing the following acts
when undertaken without their authorization: the fixation of their
unfixed performance and the reproduction of such fixation. Performers
shall also have the possibility of preventing the following acts when
undertaken without their authorization: the broadcasting by wireless
means and the communication to the public of their live performance.

 The right of fixation and the reproduction of fixed performances only

extend to fixations on phonograms and the reproduction of such
fixations .

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TRIPS Agreement: audiovisual performances
not covered (2)

• The July 23, 1990, draft of the TRIPS Agreement still included an alternative
on inclusion of the substantive provisions of the Rome Convention to
comply with as it is provided in Article 9.1 concerning the substantive
provisions of the Berne Convention (Article 1 to 21 and the Appendix):
 „PARTIES shall, as minimum substantive standards for the protection of
performers, producers of phonograms and broadcasting organizations,
provide protection consistent with the substantive provisions of the Rome
Convention.” [Articles 1 to 20 of the Rome Convention…]

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II. THE 19 ARTICLES ADOPTED IN 2000
(BUT NOT THE TWENTIETH) IN
COMPARISON WITH THE WPPT

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The 1996 and 2000 WIPO
Diplomatic Conferences
ended with failure from the
viewpoint of the issue of
transfer of rights…

… but the WPPT offered a

model to apply for
audiovisual performances
and the 19 articles
provisionally adopted in 2000
served as a basis in Beijing.

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The 19 articles on exclusive economic rights in
comparison with the WPPT (1)
WPPT Article 6 - BTAP Article 6. Rights in unfixed performances

Performers shall enjoy the exclusive right of authorizing, as regards their performances:
(i) the broadcasting and communication to the public of their unfixed performances
except where the performance is already a broadcast performance; and
(ii) the fixation of their unfixed performances.

 Verbatim the same.

 Conflicting interpretations on whether or not WPPT Article 6 also covers audiovisual
fixations. Those who argue that it does not, refer to the definition of „fixation” in
Article 2(c): „’fixation’ means the embodiment of sounds, or of the representations
thereof,..;”. Counter-argument: in Article 2(c), „fixation” is subject matter of rights
while in Article 6(ii), it is an act covered by an exclusive right. BTAP Article 6 does not
leave any doubt in this regard.

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The 19 articles on exclusive economic rights in
comparison with the WPPT (2)

WPPT Article 7 – BTAP Article 7. Right of Reproduction

Performers shall enjoy the exclusive right of authorizing the direct or indirect
reproduction of their performances fixed [in phonograms][in audiovisual
fixations], in any manner or form.

 Mutatis mutandis the same.

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The 19 articles on exclusive economic rights in
comparison with the WPPT (3)

WPPT Article 8 – BTAP Article 8. Right of Distribution

(1) Performers shall enjoy the exclusive right of authorizing the making
available to the public of the original and copies of their performances fixed
[in phonograms][in audiovisual fixations] through sale or other transfer of
ownership.
(2) Nothing in this Treaty shall affect the freedom of Contracting Parties to
determine the conditions, if any, under which the exhaustion of the right in
paragraph (1) applies after the first sale or other transfer of ownership of
the original or a copy of the fixed performance with the authorization of the
performer.

 Mutatis mutandis the same.

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The 19 articles on exclusive economic rights in
comparison with the WPPT (4)
WPPT Article 9 – BTAP Article 9. Right of Rental
(1) Performers shall enjoy the exclusive right of authorizing the commercial rental to
the public of the original and copies of their performances fixed [in phonograms][in
audiovisual fixations] as determined in the national law of Contracting Parties, even
after distribution of them by, or pursuant to, authorization by the performer.
[(2) Notwithstanding the provisions of paragraph (1), a Contracting Party that, on April
15, 1994, had and continues to have in force a system of equitable remuneration of
performers for the rental of copies of their performances fixed in phonograms, may
maintain that system provided that the commercial rental of phonograms is not giving
rise to the material impairment of the exclusive right of reproduction of performers.]
[(2) Contracting Parties are exempt from the obligation of paragraph (1) unless the
commercial rental has led to widespread copying of such fixations materially
impairing the exclusive right of reproduction of performers.]

 Paragraph (1) is mutatis mutandis the same. WPPT paragraph (2) corresponds to
TRIPS Article 14.4, while BTAP paragraph (2) is the adaptation of TRIPS Article 11
concerning cinematographic works to audiovisual performances.

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The 19 articles on exclusive economic rights in
comparison with the WPPT (5)

WPPT Article 10 – BTAP Article 10. Right of Making Available of Fixed

Performances

Performers shall enjoy the exclusive right of authorizing the making available
to the public of their performances fixed [in phonograms][in audiovisual
fixation], by wire or wireless means, in such a way that members of the
public may access them from a place and at a time individually chosen by
them.

 Mutatis mutandis the same.

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The 19 articles on the right of broadcasting and
communication to the public
in comparison with the WPPT (1)
WPPT Article 15. Right to Remuneration for Broadcasting
and Communication to the Public
(1) Performers and producers of phonograms shall enjoy the right to a single
equitable remuneration for the direct or indirect use of phonograms
published for commercial purposes for broadcasting or for any
communication to the public.
(2) Contracting Parties may establish in their national legislation that the
single equitable remuneration shall be claimed from the user by the
performer or by the producer of a phonogram or by both. Contracting
Parties may enact national legislation that, in the absence of an agreement
between the performer and the producer of a phonogram, sets the terms
according to which performers and producers of phonograms shall share the
single equitable remuneration.
(3) Any Contracting Party may, in a notification deposited with the Director
General of WIPO, declare that it will apply the provisions of paragraph (1)
only in respect of certain uses, or that it will limit their application in some
other way, or that it will not apply these provisions at all…
(

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The 19 articles on the right of broadcasting and
communication to the public
in comparison with the WPPT (2)
BTAP Article 11. Right of Broadcasting and Communication to the Public
(1) Performers shall enjoy the exclusive right of authorizing the broadcasting
and communication to the public of their performances fixed in audiovisual
fixations.
(2) Contracting Parties may in a notification deposited with the Director
General of WIPO declare that, instead of the right of authorization provided
for in paragraph (1), they will establish a right to equitable remuneration for
the direct or indirect use of performances fixed in audiovisual fixations for
broadcasting or for communication to the public. Contracting Parties may
also declare that they will set conditions in their legislation for the exercise of
the right to equitable remuneration.
(3) Any Contracting Party may declare that it will apply the provisions of
paragraphs (1) or (2) only in respect of certain uses, or that it will limit their
application in some other way, or that it will not apply the provisions of
paragraphs (1) and (2) at all.

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The 19 articles on the right of broadcasting and
communication to the public
in comparison with the WPPT (3)
Main differences between WPPT Article 15 and BTAP Article 11
 WPPT Article 15 provides for a single equitable remuneration jointly to
two categories of owners of related rights: performers an producers of
phonograms, while BTAP Article 11 provides for a stand-alone right to
performers (since audiovisual producers enjoy exclusive rights under the
Berne Convention).
 BTAP Article 11 first provides for an exclusive right and then for the
possibility of rather granting a mere right to equitable remuneration.
WPPT Article 15 does not provide for an exclusive right.

Main similarity between WPPT Article 15 and BTAP Article 11

 Both Treaties allow different kinds of reservations which may also go so
far as declaring that the Contracting Party does not provide for such a
right

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Right to remuneration, reservations and
national treatment (1)
WPPT Article 4. National Treatment
(1) Each Contracting Party shall accord to nationals of other Contracting
Parties, as defined in Articlde 3(2), the treatment it accords to its own
nationals with regard to the exclusive rights specifically granted in this
Treaty, and to the right to equitable remuneration provided for in Article
15 of this Treaty.
(2) The obligation provided for in paragraph (1) does not apply to the
extent that another Contracting Party makes use of the reservations
permitted by Articel 15(3) of this Treaty.

 The right of reproduction is specicifically provided in the Treaty.

When it is limited to a right to remuneration (e.g. for private copying)
under Articel 16 on the three-step test it, the obligation to grant
national treatment is not eliminated.

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Right to remuneration, reservations and
national treatment (2)
BTAP Article 4. National Treatment
(1) Each Contracting Party shall accord to nationals of other Contracting Parties the
treatment it accords to its own nationals with regard to the exclusive rights
specifically granted in this Treaty and the right to equitable remuneration provided
for in Article 11 of this Treaty.
(2) A Contracting Party shall be entitled to limit the extent and term of the protection
accorded to nationals of another Contracting Party under paragraph (1), with respect
to the rights granted in Article 11(1) and 11(2) of this Treaty, to those rights that its
own nationals enjoy in that other Contracting Party.
(3) The obligation provided for in paragraph (1) does not apply to a Contracting Party
to the extent that another Contracting Party makes use of the reservations permitted
by Article 11(3) of this Treaty, nor does it apply to a Contracting Party, to the extent
that it has made such reservation.

 For the limitation of the right of reproduction to a right to remuneration, the

same applies as in the case of WPPT Article 4.
 The reciprocity provisions are similar to those included in Rome Article 16.

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III. BEIJING – AUDIOVISUAL
PERFORMERS ARE NOT
IP-OUTCASTS ANYMORE

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In the beneficial
atmosphere created by
the „Beijing spirit”…

… audiovisual performers, at
last, were let in the world of
IP rights.

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AND NOW, LADIES AND GENTELEMEN,

WIPO PRESENTS
THE LONG-EXPECTED FINAL PART OF ITS POPULAR SERIES

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THE
TWENTIETH
ARTICLE
From Failure to Success

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The 20th article – Article 12 of the BTAP (1)

Article 12 on Transfer of Rights

(1) A Contracting Party may provide in its national law that once a performer has
consented to fixation of his or her performance in an audiovisual fixation, the exclusive
rights of authorization provided for in Articles 7 to 11 of this Treaty shall be [1] owned or
[2] exercised by or [3] transferred to the producer of such audiovisual fixation subject to
any contract to the contrary between the performer and the producer of the audiovisual
fixation as determined by the national law.

(2) A Contracting Party may require with respect to audiovisual fixations produced under its
national law that such consent or contract be in writing and signed by both parties to the
contract or by their duly authorized representatives.

(3) Independent of the transfer of exclusive rights described above, [1] national laws or [2]
individual, [3] collective or [4] other agreements may provide the performer with the right
to receive royalties or equitable remuneration for any use of the performance, as provided
for under this Treaty including as regards Articles 10 and 11.
(Inner numbering inserted.)

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The 20th article – Article 12 of the BTAP (2)

• Under paragraph (1) of Article 12, in those cases where the performers
consent to the fixation of their performances in audiovisual fixations, the
freedom of Contracting Parties extends to the possibility of providing, in the
absence of any contract to the contrary, for (i) the producers’ original
ownership of the exclusive rights under Articles 7 to 11 of the Treaty; (ii) the
producers’ right to exercise those rights (“eligibility to exercise”); or (iii) the
transfer of those rights to the producers.
• Paragraph (2) allows subjecting the validity of the “consent or contract” to
written form.
• Pragraph (3) is about the possibility (but not an obligation) of national laws or
individual, collective or other agreements to provide performers with a right
to receive “royalties or equitable remuneration,” independently of the
transfer of their rights.

• These provisions, as regards the possibility and effect of the transfer of rights,
differ both from Article 19 of the Rome Convention and from the
alternatives considered in 2000 – although they use certain elements of some
of those alternatives.

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The 20th article – Article 12 of the BTAP (3)

• The provisions of Article 12 of the new Treaty differ from the provision of Article
19 of the Rome Convention since, contrary to the latter, the rights provided in the
new Treaty do have “further application” for their full term of protection
irrespective of whether they are (i) owned and fully maintained by a performer
(which, in the case of audiovisual works, hardly probable); (ii) exercisable by the
producer; (iii) transferred to the producer; or (iv) (as soon as the performer
consented to the fixation of his or her performance) owned by the producer.

• The Basic Proposal submitted to the 2000 Diplomatic Conference contained four
alternatives concerning the transfer of rights. Article 12 of the new Treaty covers
two of those alternatives: Alternative E on “Transfer” about a rebuttable
presumption of transfer of rights; and Alternative F on “Entitlement to Exercise
Rights” the essence of which is indicated by the title.

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The 20th article – Article 12 of the BTAP (4)

• Under Alternative G in the 2000 Basic Proposal on “Law Applicable for

Transfers,” “in the absence of any contractual clauses to the contrary,” the
transfer would have been governed “by the law of the country most closely
connected with the particular audiovisual fixation” (and, the alternative
included a detailed definition of such a country). Article 12 of the new Treaty
is not based on such a private international law solution.
• In 2000, Alternative H seemed to be the most simple; it consisted in not
including any provision in the Treaty on the issue of transfer of rights and,
thus, leaving it completely to national laws. Certain opinions: Article 12
corresponds to Alternative H since it also offers flexibility for national laws. It
is submitted that, although Article 12 is truly flexible to a certain extent, this
is not the case.
 Under Article 12, the options are limited.
 No possibility of not recognizing transfer of rights on a „public order”
basis.

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Comparison with Article 14bis of
the Berne Convention (1)
Article 14bis of the Berne Convention
(1) Without prejudice to the copyright in any work which may have been adapted
or reproduced, a cinematographic work shall be protected as an original work.
The owner of copyright in a cinematographic work shall enjoy the same rights as
the author of an original work, including the rights referred to in the preceding
Article.
(2)(a) Ownership of copyright in a cinematographic work shall be a matter for
legislation in the country where protection is claimed.
(b) However, in the countries of the Union which, by legislation, include among
the owners of copyright in a cinematographic work authors who have brought
contributions to the making of the work, such authors, if they have undertaken to
bring such contributions, may not, in the absence of any contrary or special
stipulation, object to the reproduction, distribution, public performance,
communication to the public by wire, broadcasting or any other communication
to the public, or to the subtitling or dubbing of texts, of the work… (continues)

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Comparison with Article 14bis of
the Berne Convention (2)

Article 14bis of the Berne Convention (continued)

(3)Unless the national legislation provides to the contrary, the provisions of

paragraph (2)(b) above shall not be applicable to authors of scenarios,
dialogues and musical works created for the making of the cinematographic
work, or to the principal director thereof. However, those countries of the
Union whose legislation does not contain rules providing for the application
of the said paragraph (2)(b) to such director shall notify the Director General
by means of a written declaration, which will be immediately communicated
by him to all the other countries of the Union.

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Peaceful coexistence or mutual protection? (1)

Study on transfer of the rights of performers to producers of audiovisual fixations

(Jane Ginsburg – André Lucas; WIPO document AVP/IM/03/4 )
„Audiovisual performers’ rights… divide roughly into two categories: (1) countries
having a developed system of neighboring rights that constitute exclusive rights and/or
remuneration rights independent of contract; (2) countries in which audiovisual
performers’ protections (to the extent they exist) are essentially creatures of contract.
„In the first group, neighboring rights protections may supplement or override
contractual arrangements. In the second group, the principal right which may be
asserted “against the world” (opposable à tous) is the right to authorize the fixation
and incorporation of the performance in an audiovisual work; any rights the
performer enjoys thereafter must be negotiated by contract with the producer… To the
extent a United States of America audiovisual performer might be considered a
co-author of the work (the characterization of U.S. performers’ rights is in fact unclear),
she will not in practice enjoy a property right, because her contribution to the work will
almost inevitably be deemed “for hire”, in which case all rights will vest in the
producer.”

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Peaceful coexistence or mutual protection? (2)

• Statutory rights (also „unvaivable” rights) v. contract-based rights

(including residuals”)

• Collective management organizations v. guilds. How they may

cooperate?

• Membership as a condition?

• „Unclaimed” remuneration – „undistributable” remuneration.

• „No collection without distribution!”

• National treatment and reciprocity implications.

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THANK YOU
‫ﺷﻛﺭﺍ‬
e-mail: ceeca@t-online
website: [email protected]

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