Transfer of an author's rights – Dangers in the absence of written agreement

Published onNovember 2014

The French Intellectual Property Code provides that performance, publishing and audiovisual production contracts must be in writing (Article L.131-2). In addition, “transfer of authors’ rights shall be subject to each of the assigned rights being separately mentioned in the instrument of assignment and the field of exploitation of the assigned rights being defined as to its scope and purpose, as to place and as to duration” (Article L.131-3 §1).

One would believe that such legal provisions offer sufficient protection to authors assigning their rights. It seems however that French courts sometimes have a different interpretation.

A recent case (1) opposed a French illustrator to a publishing company. The latter had commissioned the former to illustrate several books over the years. There was no written agreement between the parties except that each work was commissioned thanks to a specific purchase order and the publisher was afterward billed for the work by the illustrator. As often, the dispute began a few years later when the illustrator realized that the books were being published online and a second time in hard copies (2).

According to French Highest civil court, the relations between the parties should qualify as contracts for hire coupled with assignments of the author’s rights, not as publishing contracts.

This preliminary interpretation is questionable. One would assume that the contract according to which an illustrator transfers his/her rights to another person so that his/her works may be published would naturally and logically qualify as a publishing contract. As a matter of fact, the illustrator’s works were indeed published, even if they were published in close association with prior existing written pieces of work.

However this would not the most preoccupying issue for authors. The courts interpreted the relations between the parties as covering an assignment of the author’s rights although in some cases there was no written material to confirm such intention from the illustrator (3). For the courts, since the illustrator knew what books the illustrations were commissioned for, the assignment of rights was necessarily comprised in the amount the publisher was charged for.

On the principle, such a decision may be acceptable. Since the agreements were not interpreted as forming publishing contracts (for which a written agreement would have been mandatory) the courts had the liberty to interpret the relations between the parties to try and understand if the author had willingly transferred his/her rights to the publisher.

But what is highly debatable is the interpretation by the courts of the extent and scope of the assignment of rights in the absence of written agreement. With no consideration at all for Article L.131-3 §1 and the obligation that the transfer of the author’s rights must be clearly detailed especially as regards its material extent and geographical or temporal scope, the courts decided that the illustrator had once and for all abandoned all his/her rights in connection with the exploitation of the illustrations coupled with the books (4).

It would seem that French Highest civil court considers that Article L.131-3 §1 does not apply except when such contracts as performance, publishing and audiovisual production contracts are concerned (although they are already regulated by law) (5).

Such a decision is clearly the sign of a great danger threatening the authors.

Does French IP Code still protect them? Yes, there is no doubt about that. But do the courts still protect the authors? It is not so sure anymore…

© INSCRIPTA

(1) French Cour de cassation, civil first chamber, 02 July 2014, case number 13-24359, upholding the appeal against the decision of the Court of Appeals of Paris, hub 5 chamber 1, 17 October 2012, case number 10-20895.

(2) At this stage, it is important to remind the reader that there is no such thing as the work-for-hire rule according to French law. This means that the authors remain the natural and sole owners of the copyright over their work even though they were commissioned to execute them (See Article L.111-1 of the French IP Code).

(3) Some of the illustrator’s bills contained such terms as “inclusive of copyright” but many of them were much vaguer and only mentioned “for the illustration of” followed by the title of a book.

(4) The publishing company was nevertheless sentenced to one euro of damages on account of moral damages, the Court of Appeals of Paris considering some images were cropped or trimmed and some colors were altered.

(5) Governmental Order No.2014-1348 of 12 November 2014 has just reformed the legal regime of publishing contracts. You can read a few comments here.