“A place called silence” (hereafter “Movie”) is a suspense thriller by the reputable director Ms. Ko, Wen-Li, who previously directed the blockbuster “Sheep without a Shepherd” in 2019. The Movie was first released in 2023 during Taipei Music Festival, and then on cinema across China in 2024. The movie has achieved significant commercial success by grossing over RMB 1.332 billion at the box office. Despite its commercial success, a recently surfaced judgement by the Intellectual Property and Commercial Court (“IPC Court”) shed lights on another aspect of the successful story of the Movie (See 113-Ming-Chu-Su No.20).
The dispute arose out of copyright dispute between co-authors over the use of the film score of the Movie for promotional events between 2023 and 2024. The plaintiff, Ms. Shi, filed lawsuit against defendant, Ms. Wu, alleging, among the others, that the plaintiff has contributed to the creation of film score (“Score”) for the Movie, that plaintiff should be recognized as a joint author of the Score, and that defendant violated plaintiff’s copyright by, without plaintiff’s consent, authorizing the use of the Score during the promotional period of for the Movie.
The defendant argued that no violation occurred because the Score is a commissioned work, and, under Article 12 of Copyright Act, the defendant, as the party who funded the creation of the work, should be entitled to use the copyrighted work. Further, plaintiff was aware of the Movie and the intended use of the Score right from the start, implying at least the existence of implicit consent for defendant’s use of the Score.
On August 6, 2024, The IPC Court entered a decision in the favor of the defendant, determining that:
- According to Article 8 of Copyright Act, “A joint work is a work that has been completed by two or more persons where the creation of each person cannot be separately exploited”. Further, Article 40 of the same provides that “In the case of a joint work, each author's share of the ownership of such a work shall be as stipulated by the joint authors; where no stipulation has been made, ownership shares shall be determined according to the degree of each author's creative contribution. Where the degree of each author's creative contribution is not clear, it shall be presumed that each author owns an equal share”.
- In this case, according to the contract submitted by the defendant, plaintiff, as the arranger, was responsible for composing, recording, and coordinating the performance of the vocalist, cellist, violinist, backing vocal, and the synthesizer. The defendant, as the general director, was entrusted by the movie company to produce the Score. Based on the records of correspondences between the parties, the defendant and plaintiff co-worked with each other closely throughout the creation of the Score, including the use of instrument, synthesizer, the style and theme of the music. The IPC Court therefore opined that both the plaintiff’s and defendant’s contributions to the Score are inseparable part of the musical work and recognized both parties as joint authors of the Score.
- As to plaintiff’s allegation that the defendant unlawfully authorized the use of the Score for promotion during the period of Taipei Music Festival, although the contract between the plaintiff and defendant is silent about the use of the Score for the Movie, the IPC Court found that there is sufficient circumstantial evidence suggesting that defendant’s use falls within the contractual scope. For example, when approached by the defendant, the plaintiff was clearly advised that the purpose of the contract was to create the Score for the Movie. The plaintiff also knew the defendant was the general director entrusted by the movie company to produce the required Score, and understood that the Score would be used for the marketing campaign of the Movie. Additionally, the correspondences between the parties also indicate that the plaintiff knew the resulting work would be the Score for the Movie, and the Score was intended to be used by the Movie for its promotion during the music festival. Added to that, throughout the period of Taipei Music Festival, the plaintiff never brought up any objection to the use of the Score. In view of the above, the IPC Court considered that defendant’s use should be aligned with the contract, and not constitute infringement of plaintiff’s copyright.
- Since defendant’s use of the Score is aligned with the contract, and the plaintiff failed to provide evidence proving that the defendant has breached the contract, or violated any other moral rights under the Copyright Act, the IPC Court found the plaintiff’s lawsuit to be without merit, and dismissed it accordingly.
Regarding the exercise of copyright between joint authors, Article 40-1 of Copyright Act provides that: “Joint economic rights in a work shall not be exercised except with the consent of all the joint economic rights holders”. What intriguing in this case is the IPC Court did not delve into whether there was implied license or consent between the joint authors, i.e., plaintiff and defendant. Instead, the IPC Court simply construed the contract between the plaintiff and the defendant, and ruled that defendant’s use is aligned with the contract. This suggests an alternative approach for those who wish to argue the existence of implied consent or license for specific use. After all, under Article 37 of Copyright Act, there is a rebuttable presumption of no license when explicit terms and conditions are absent. Another takeaway is that the parties shall not only clearly define the nature of the work (e.g., works for hire, work by independent contractor, joint work, etc.), but also determine who owns the copyright, and specify the permitted use of the copyrighted work. From the perspective of the movie company, this case also highlights the importance of clear contractual arrangement among the relevant content creators, to ensure that the subsequent marketing and promotion of the film will not be disrupted by unexpected copyright disputes.