An open hearing was held at Taiwan’s IP Office (TIPO) on February 25, 2020 to gather public views on a bill proposed by TIPO earlier in the aim of overhauling Taiwan’s Copyright Law. From re-defining a great part of the exclusive rights in the copyright bundle, through relaxing the default rules on work made for hire, to fine-tuning the rules concerning fair use and enforcement remedies, the bill is expected to help better adapt Taiwan’s copyright law regime to the digital age.
However, as Copyright Law is noted for being heavily lobbied, the ripe time might not have come for a full-length introduction on the bill which seems unlikely to enter the Congress for debate by this May. For this reason, this article will cover only the amendments to rules on works made for hire, as they have the highest chance to get passed as proposed. Other amendments will be reported later in a series of articles after the prospect becomes clearer.
The concept “works made for hire” here comprises two types of works: a work prepared by an employee and a commissioned work, subject to different default rules as provided in Articles 11 and 12 (a translation is included at the end of this report).
Despite the differences, the current default rules have a common drawback in that they oftentimes drive the parties negotiating on a copyright ownership clause to a zero-sum game. The parties, whether being the employer/commissioning party or the other side or both, are left with limited room to arrange, by a single agreement, who owns copyrights in a work made for hire: either one side or the other, but never both, nor a third party. If co-ownership or third-party ownership is intended, there must be another agreement signed for that purpose.
The proposed amendments aim to relax the restrictions. Specifically:
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An employee and employer will have more freedom in determining the holder of economic rights in a work prepared by the employee. Co-ownership will be acceptable, as well as ownership by a third party. Still, whether different exclusive rights in a copyright bundle can be owned by different parties is not yet clear, although the answer seems in the affirmative per a textualistic reading of the bill.
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Likewise, the two parties in a commissioned work case will also be allowed to enter into a co-ownership or third party ownership agreement, suppose the commissioned party is the author (per the default rule).
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However, if the author turns out to be the commissioning party (by means of a contract), the current rules will still apply: the economic rights will concomitantly go to the commissioning party. Whether this is an intended silence or simply a slip-over of the TIPO’s bill is not yet clear.
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| Appendix: A Comparison of Articles 11 & 12 and Amendments Proposed by TIPO |
| Differences are underlined. |
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| Current Texts |
Proposed Amendments |
Article 11 [Work by Employee]:
- Where a work is completed by an employee within the scope of employment, such employee is the author of the work; provided, where an agreement stipulates that the employer is the author, such agreement shall govern. (Article 11.1)
- Where the employee is the author of a work pursuant to the provisions of the preceding paragraph, the economic rights to such work shall be enjoyed by the employer; provided, where an agreement stipulates that the economic rights shall be enjoyed by the employee, such agreement shall govern. (Article 11.2)
- The term “employee” in the preceding two paragraphs includes civil servants. (Article 11.3)
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Article 11 [Work by Employee]:
- Where a work is completed by an employee within the scope of employment, such employee is the author of the work; provided, where an agreement stipulates that the employer is the author, such agreement shall govern. (Article 11.1)
- Where the employee is the author of a work pursuant to the provisions of the preceding paragraph, the economic rights to such work shall be enjoyed by the employer; provided, where an agreement stipulates otherwise, such agreement shall govern. (Article 11.2)
- The term “employee” in the preceding two paragraphs includes civil servants. (Article 11.3)
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Article 12 [Commissioned Work]:
- Where a work is completed by a person under commission, except in the circumstances set out in the preceding article, such commissioned person is the author of the work; provided, where an agreement stipulates that the commissioning party is the author, such agreement shall govern. (Article 12.1)
- Where the commissioned person is the author pursuant to the provisions of the preceding paragraph, enjoyment of the economic rights to such work shall be assigned through contractual stipulation to either the commissioning party or the commissioned person. Where no stipulation regarding the enjoyment of economic rights has been made, the economic rights shall be enjoyed by the commissioned person. (Article 12.2)
- Where the economic rights are enjoyed by the commissioned person pursuant to the provisions of the preceding paragraph, the commissioning party may exploit the work. (Article 12.3)
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Article 12 [Commissioned Work]:
- Where a work is completed by a person under commission, such commissioned person is the author of the work; provided, where an agreement stipulates that the commissioning party is the author, such agreement shall govern. (Article 12.1)
- Where the commissioned person is the author pursuant to the provisions of the preceding paragraph, enjoyment of the economic rights to such work shall be determined by contractual stipulation. Where no stipulation regarding the enjoyment of economic rights has been made, the economic rights shall be enjoyed by the commissioned person. (Article 12.2)
- Where the economic rights are enjoyed by the commissioned person pursuant to the provisions of the preceding paragraph, the commissioning party may exploit the work. (Article 12.3)
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