A COMPARATIVE LOOK AT

PERFORMERS' RIGHTS PROTECTION

IN CANADA, THE UNITED STATES OF AMERICA,

THE UNITED KINGDOM, AND THE REPUBCIC OF CHINA (TAIWAN)

Tm-Lane Lin

A thesis subrnitted to the Faculty of Graduate Studies in partial fulfilment of the requirernents for the degrce of

;Master of Laws

Graduate Programme in Law Osgoode Hall Law School York University Toronto, Ontario, Canada National Library Bibliothéque nationale of Canada du Canada Acquisitions and Acquisitions et Bibliographie Sewices senrices bibliographiques 395 Wellingron Street 395, nie Wellington Ottawa ON K 1A ON4 Ottawa ON K 1A ON4 Canada Canada

The author has granted a non- L'auteur a accordé une licence non exclusive licence allowing the exclusive permettant à la National Library of Canada to Bibliothèque nationale du Canada de reproduce, loan, distribute or sel1 reproduire, prêter, distribuer ou copies of this thesis in microform, vendre des copies de cette thèse sous paper or electronic formats. la forme de rnicrofiche/film, de reproduction sur papier ou sur format électronique.

The author retains ownership of the L'auteur conserve la propriété du copyright in this thesis. Neither the droit d'auteur qui protège cette thèse. thesis nor substantial extracts kom it Ni la thèse ni des extraits substantiels may be printed or otherwise de celle-ci ne doivent être imprimés reproduced without the author's ou autrement reproduits sans son permission. autorisation. A Comparative Look at Performers' Righis Protection in Canada. The United States of America, The United Kingdom and the Republic of China (Taiwan)

Tm-Lane Lin

a thesis submitted to the Faculty of Graduate Studies of York University in partial fulfillment of the requirements for the degree of

h4astt.r of Laws

O 1998 Permission has been granted to the LBRARY OF YORK UNIVERSITY to lend or seIl copies of this thesis, to the NATIONAL LIBRARY OF CANADA to microfilm this thesis and to lend or seIl copies of the film, and to UNIVERSITY MICROFILMS to publish an abstract of this thesis. The author reserves other publication rights, and neither the thesis nor extensive extracts from it may be printed or otherwise reproduced without the author's written permrssion. Abstract

Performers' protection has become acute since the technoIogica1 advancements during the turn of this century. However, the legislation in this am, compared with the other regime of inteliectual propeny, is novel to many counuies. Several questions rernain controversial: (1) whether performers should be granted some rights in their performances; and (2) what scope of such protection would be adequate. In addressing these questions, this thesis examines the two main underlying theories of inteiiectual property: economic incentive theory and natural Iaw theory. A!so, it compares the different legislation modeis adopted by two major copyright systerns: "copyright" and

"droit d'auteur". The thesis concludes that a two-sided approach might be a more persuasive way to justfi performers' rights.

Currently, the international harrnonization of inteiiectual property laws has ken triggered by the TRIPS Agreement of World Trade Organhtion. For sorne countries where intellectual property has been historically disregardeci, for exarnple, Taiwan, the reform of UiteUrctual property laws is only one of many areas that require transformation.

In order to secure the enforcement of law, efforts are required to rehabilitate the legal concepts and notions of inteliectud property.

The recent copyight refom in Canada, the United Kingdom, the United States and the Republic of China (Taiwan) show a tendency to strengthen the protection for performers. The question remains whether some categories of performers' rights, such as

iv the Article 12 rights of the Rome Convention and the rights to receive bhnk tapes levy, should be administered by performers' collective societies. The weii-developed collective administration of musical performing rights in some countries, such as Canada, provides a good example for the establishment and operation of a performers' collective society. In contrast, where the collective system for musical performance rights has not ken successhiiiy created (as in Taiwan), the issue of performers' nghts administration sho uld be considered before the making of legislation. Acknowledgments

1 would iike to thank my thesis supervisor. Professor Toni Williams, for her helpful

çomments and suggestions. 1 am also grateful for the vaiuablr advice provided by

Pro fessor Joyce Co hnstaed t and Professor Paul Tackaberry. Without their assistance. t his thesis would not have been reaiized.

A special debt of gratitude to Professor David Vaver. who provided immeasurable guidance during the early stages of the project, to Albert Wailrap. who provided editorial assistance, and to Lea Dooley, who provided administrative assistance throughout the graduate experience.

1 dedicate this thesis to my parents. They support and encourage me always. TABLE OF CONTENTS

Abstract i v

Chapter 1: Introduction 1

Chapter 2: Justification of Performers' Rights 14

1. The Underlying Theories of Intellectual Property A. Economic Incentive Theories B. Natural Law Theories C. The Third Approach

II. Justifjing Perfomrrs' Rights 30

III. Performen' Riçhts - Grneral Concepts of Copyright A. Originality B. Fixation C. Moral Rights D. Perfomers' Rights and Authors' Rights

Chapter 3: International Protection of Performen' Rights 48

1. The International Convention of Performen, Producers of Phonograms 48 and Broadcasting Organizations - The Rome Convention 196 1 A. Historical Background 48 B. The Basic Principles of the Rome Convention 53

II. The Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) 60 A. Introduction 60 B. Performers' Rights Provisions 62

m.The WIPO Performances and Phonograms Treaty A. Introduction B. Performers' Rights Provisions Chapter 4: Perforrners' Kights Protection in Canada, 7 1 the United States of Arnerica, and the United Kingdom

1. Performers' Rights in Canada A. Performers Rights Protection Before 1994 E. Copyright Act Amendment in 1994 C. The Copyright Act Amendment in 1997

II. Pertormers' Rights in the United States of America A. Performers' Rights Protection Before 1976 B. Performers' Rights Protection Under Copyright Act 1976 ( 1 7 U.S.C.) C. The Copyright Act Amendment in 1994 D. The Digital Performing Rights in the Sound Recording Act 1995

III. Performers' Rights in the United Kingdom A. Performers' Rights Protection Before 1988 B. Performers' Rights Protection Under the Copyright, Designs and Patents Act 1988

Chapter 5: Performers' Right3 Protection in the Republic of China (Taiwan)

1. Background to the Copyright Protection in the R.O.C.

II. Performers' Rights Protection A. Copyright Law 1985 B. The Copyright Amendment in 1992 C. The Copyright Amendment in 1998

Chapter 6: The Contractual Status of Performers

1. htroduction A. Music Publishing 1 Recording Agreements B. Copyright / Performers' Rights Assignments

II. Employment 1 Work-For-Hire Doctrine A. Canada, United Kingdom, and United States B. The Employment Relationship Under the R0.C. Law Ill. Inequality of Barçaining Power - Unconscionability

Chrpter 7: Administration of Performers' Rights

1. Introduction: Collective Administration of Creative Rights

II. Collective Administration of Performers' Rights A. Collective Administration of Public Performance Rights in Sound Recordings - Article 13 Rights of the Rome Convention B. Blank Tape Levy for Private Home Copying C. Performers as Cornposers / Lyricists D. Performers' Societies

III. Specialized Collective Administration Organizations for Performers' Rights A. Mandatory Collectivization in Relation to Performers' Rights B. The Potential for Sprcialized Prrfomers' Rights Collectives

Chapter 8: Conclusion Chapter 1

Introduction

This thesis addresses two fundamental issues in relation to the legal protection of performers' rights under an intellectual property scheme. The first issue centres on whether a need exists for legislative protection of performers in respect to their performances, and, if so, what should be the fom of legislation. The second issue involves the question of emciency in the administration of performers' rights while srcuring performance interests.

Intellrctual property is said to comprise a set of laws which balance the interests of the rights owners and the public.' It deals with questions such as: which activities do we as societies want to reward? And what degree of reward is necessary? Should we also consider the conflict between the protection of individual rights owners and the protection of the public interests? This thesis explores the latter questions against the backdrop of the legal arrangements for perfomers' rights protection in the above mentioned countries. The main focus of the thesis is a comparison of different legal regimes of performers' rights. The thesis also considers theories that purport to explain or to justify the use of intellectual property for the protection of performen.

The introduction of the printing press in Europe during the latter half of the

' David Vavw, Inteliechrai Properîy Law (Concord, Ontario: Irwin Law, 1997) at 5.

1 tifteenth crntury opened the way for the recopition of copyright. This tschnological advance tinally separated the identification of a work from its matenality.' At that tirne, the printing press was the only technoloby that involved bringing literary works to the public. When the first copyripht law, the Sraiute ofAnne, emerged in England in 17 10, the main concem of copyright protection was to prevent unauthorized reproduction of printed material by granting copyright owners exclusive "reproduction rights". As to the case of dramatic or musical works, the main way to exploit these works and to display them to the public was to present them by performers' live performances.' While pzrfomzrs have made a substantial contribution to the presentations of musical works or dramatic works, most legislatures have focused on protecting the rights of authord

During the early, formative period of copyright developrnent, the law regarded performers as "vagrants". Adam Smith, in his work, ;The Weulth of hiarions, characterized

"players, buffoons, musicians. opera-singers, opera-dancers as classical examples of

'unproductive labour"', because "the works of al1 of them perishes in the instant of its

' David Sinawre-Guinn, C~offr~tiveAhinistration 01 Copyrights and Nrighbwing Rights: Irîtertiatiotlal Pracrices, Praceûi~res,and Organizations (Toronto: Little Brown & Company, 1993) at 6 1 .

S. M. Stewart, InfemtiomfCopyr~ght ortd Neighhrig Righis. 2d ed. (London:Butterworths, 1989) at 185. Copyright, as the word suggests, originally meant the exclusive right of "copying", in another word, "reproduction".

' The author's right of performance was first estabtished by a French decree of 179 1. Subsequently, the legislation of the Drmatic Copyright Act 1833 and the Literary Copyright Act 1842 in the United Kingdom emerged with a focus on performing rights. See CaWi McFariane, Copyright: the Developtnent und fiercise ofthe Peflonning iiigh~~(Eastbourne, East Sussex: John Offorcl, 1980) at 30,34. produ~tion."~Performrrs' social status had not improved until the invention and widespread distribution of records, films, radio and television.

Until the end of the nineteenth century, "perfomers did not fecl any need for protection along the lines of copyright. Their performances could not be fked on any recording nor reproduced, broadcasted or transmitted to a wider public.'" While use of the printing press became pervasive and comrnon, communication technology even advanced further. First, the invention and use of piano roll and music boxes, and photography, occurred in the second half of the nineteen century. The cinernatographic and phonographic industnes then developed at the tum of the century. Most importantly, commercial radio came into people's lives in the 1920s and the television emerged in

1940s.' These technological revolutions made it possible for performances to be fixed, transrnitted and reproduced. Thus, advancements in technologies brought a huge impact to perfomers' works. Records and films could readily replace live performances in public. Many live performers lost work opportunities since they faced increasing cornpetition frorn records and films. To regain income, performers looked for ways of capturing some of the revenues fiom the reproduction, broadcasting, or other

Stewart, supra note 3 at 194, quoting Adam Srnith, The Weaffhof Nations, Book II, c. III.

Anthony D' Amato & Dons Estelle Long, eds., htemationai hiellechiai Property Law (iondon: Kluwer Law International, 1997) at 98.

' Sinacore-Guinn, supra note 2 at 72. communication of their performances to the public."

Concern over the broad use of sound recordinç and radio eventually led to dernands for legislativr protection for performers, sound recording rnakers and broadcasten. This situation raisrd a question for the intellectual propeny regime: should such protection be irnplemented by way of copyright or some other forrn of intellectual propeny? Since sound recordings, broadcasting and performances rely on pre-existing copyrighted works, the debates over the above questions mainly focused on traditional copyright concepts, narnely "originality" and "authorship".' Two major legal systerns of copyright, common law and civil Iaw, take different approaches to these issues. Even within each system, there are variations between different countries.

Under the prevailing system of "copyright" protection in common law countries, copyright jurisdictions generally hold that only a "minimal ~riginality"'~is necessary to warrant protection. One may accept that the process of sound recording or broadcasting involves not only technical skiil but also a certain kind of artistic creativity. Sirnilarly, performances may be treated as more than rnere interpretation of existing copyrighted works. Therefore, the term "copyright" in common iaw countries might include not only the nghts in authors' works but also the protection of certain creative works, such as

' See D'Arnato & Long, supra note 6.

'Ibid. at 73.

'O M. Nirnmer & D.Nimmer, Nimmer on Copyrigh~,vol. I (New York: Matthew Bender. 1996) at 5 2.01p31. performances and the works in sound recordings and broadcasts. "

In contrast, the concept of droir d'auteur in civil law countries provides that protection for literary, musical and artistic works be described in titles of "authors' rights". Performances, as well as sound recording and broadcasting, do not easily fit the traditional concept of authorship since they are derived from pre-existing works." The problem of protecting these "works" wider the droir d 'auieur doctrine and legislation was addressed by some European countries. They turned to the concept of "neighbouring rights". Such rights are comected with or similar to, but not identical with, authors' right '"

"The confusion between the ternis of copyright and neighbounng rights anses because the same rights are protected as 'copyright' in some territories and as

' neighbouri nç rights' in others"; different approaches may occur in different national systems.'" In this thesis. the phrase "copyright" is not restricted to represent the rights for

" "The notion of 'copyright' is used in a wider meaning in countnes with comrnon law Iegal traditions than the one in which this word is used in the Berne Convention. In the Berne Convention 'copyright' oniy means the rights in literary and artistic works. while in common law countries. this word - in addition to the rights in literary and artistic works - also covers the protection of certain rights of beneficiaries of what in other countries is covered by the so-called neighbouring rights " J.A.L. Sterling I~treifectualPropergl Rzghzs rrr Sourd Recordrtgs, Fdm d! jT~deo(London: Swcet and Maxwell, 1992) at 159.

'' Sinacore-Guinn, mpra note 2 at 1 17-1 19.

" Stewart, mpra note 3 at 189. The term "neighbouring rights" was initidy used in 1948 at the Brussels Diplornatic Conference for the Revision of the Berne Convention. In a broader sense, "neighbouring rights" covers not only the protection of performers, record producers and broadcasters, but also other rights sirnilar to copyright.

'' Julian Tunon & Cees van Rij, eds., Neighbouring Righrs- Artists, Producers and Colimrve Socteries - reparts pesenred at the meeting of the International Associatio~tof Enrertainment Lawyers, Midern IY90. Carutes (Apeldoorn. Netherlands: MAKLU Publishers. 1990) at 13. authors in their works. The term "neighbouring rights" will be usrd throughour this thesis in reference to the rights for the three "classical" neighbouring rights of pzrformrrs, producers of phonogams and broadcasting oqanizations.

By the end of the 1940s, several national laws had created rights in the fields of sound recordings and broadcasting." As to the granting of rights for perfoners, the

"fictional arranger's right" was the first to be given to the performer under the Gerrnan

LUG 1902. Subsequently, the Mexican law of 1928 provided for perfomers' rights.

Later, the Argentine law of 1933 afforded performers a right of remuneration for broadcasting or recording, as well as a form of moral rights. The first structurrd system of perfoners' civil rights was originated under Austnan law in 1936. In 194 1, Italian law provided a similar system.lb However, a system for the protection of performers' rights in rnost countnes had not been created until the establishment of the Rome

Convention in 196 1.

The formal recognition of performen' rights under international treaties had a sîgni ficant meaning for the development of such rights. The fint international convent ion to address the-e issues was the International Convention of Performers, Producers of

Phonograms and Broadcasting Organizations established in Rome, Italy on 0c:ober 26,

1961 (hereinafter the Rome Convention). As of June 1998, this convention had been

l5 For exampIe, the German Copyright Law of 19 10, the Nonvegian Copyright Law of 19 10, the United Kingdom Copyright Act of 19 1 1, the Austrian Copyright Law of 1920, the Danish Copyright Law of 1933, the Itdian Copyright Law of 194 1, and the Swiss Copyright Law of 194 1. Stewart, supra note 3 at 222.

l6 Sterling, supra note 1 1 at 330. ratified by fifty seven countries." Although the Rome Convention has not yet esisted as a worldwide convention, it has considerably influenced the legislation of countries that have not joined the Convention. This burgeoning éffect on national legislation is said to be the true aehievement of the Rome Convention. '"

However, the Rome Convention has also been criticized. The convention might be too outdated to be valuable in present times.'" It was intended that the treaty provide a modest means for reconciling the opposition of authors' and broadcasters' groups to perf'ormers' rights." As well, the pioneering treaty, the Rome Convention, provided several compromises in order to obtain wide acceptance. Since many national laws now provide protections for the works of the beneficiarîes of neiçhbouring rights, thex compromises may be unnecessary." Moreover, while sociological and technical advances are ongoinp. the Rome Convention has not yet gone through any revision and appears outdated when applied to several problems arising from recent advances in technology. For exarnple, such problems rnay arise From the absence of provisions

" Online: World InteUectual Property Organization Homepage (date assessed: 16 October 1998).

II Wil helm Nordemann et al., Inrernariortul Copyighr adNeighbourirg Righzs Lm: Comrncrnrary Wirh Special Ernphasis on the European Commtcnity (New York, N.Y. : VCH Publishers, 1990) at 345.

l9 Bonnie Tek, "Toward Better Protection of Performers in the United States: Comparative Look at Performers' Rights in the United States, under the Rome Convention and in France" (1990) 28 Columbia J. Transnational Law 775 at 789.

'OIbid Seealso Stewart, supra note 3 at 225.

" Teiier, ibid. regarding cable television, videocassette, satellite broadcasting and ~nternrt." Two international treaties/conventions have anempted to update, but not ovrrturn, the Rome

Convention: the Agreement on Tradc-Related Aspects of lntel lectual Propsrty (TRIPS) in

1994 as part of the WTO Agreement; and the WIPO Performances and Phonoçrams

Treaty in 1 996.

More legislators now seern to be sympathetic to the idra of legal protection for performers. The recent amendment of laws in Canada, the United States and the

Republic of China (Taiwan) indicate this trend. The impetus of thrss copyright reforms may have arisen from the TRIPS Agreement of WTO. However, somr national laivs are flawed in that they return performers back to a position prior to the ganting of pzrformers rights - where performers were protected only by contract.

The following chapter begns with an analysis of the two conflicting philosophical theories underiying the intellcctual property protection debate: rconomic incentive theoq and natural law theory. These theories have different de~geesof impact on the two main legal systems: the copyright and clroit d'mteur systems. Performers rights tend to be protected as "copyright" in the former, whereas "neighbourinç rights" are protected in countries of droit d'auteur system. However, a system that combines these two rationales could be rnanaged to apply a more adequate explanation for the adoption of perfomrrs' rights. In addition, the fundamental issues of copyright, such as

" Ibid. "originality", "fixation", and moral rights will also be discussed from the performers'

perspective.

The third chapter examines the approaches adopted by international treaties to the

extent they relate to the protection of performers' rights. The provisions of perfomen'

rights under three international treaties protection are examined. These ~eatiesare: (i)

the Rome Convention in 1961; (ii) the TRIPS Agreements of WTO in 1994; (iii) the

WlPO Performances and Phonogams Treaty in 1996.

In sum, the Rome Convention provides a basic scheme for the protection of

performers' rights. The TRlPS Agreement retains the protection under the Rome and

included several new provisions for the rights. Funhermore, a member's failure to

adhere to the TRIPS Agreement will subject them to the enforcement provisions of the

World Trade Organization." As a result, the TRIPS agreement motivates countnes to

reconcile their domestic iaws. The WlPO treaty primarily focus on the problems due to advancements in technology, for example, the transmission of performances through the

~ntemet.~~The Treaty also extends the scope of perfomers7 rights to protect the

performances of folklore and the moral nghts for perfor~ners.~~

The founh c hapter explores the development of performen7 rights protection

Marshall A. Leaffer, Ittrrrttatio~talirreaars on irrrelkecfzrut Properry, 2d ed ( Washington, D C. The Bureau of National Affairs, 1997) at 585

'' The W IPO Performances and Phonopms Treaty 1996, art. 10.

--'5 See rhrti. an. 2 and art. 5 among Canada, the United States of Arnenca, and the United Kingdom. In the past, many inconsistencies have arisen between the level of rights provided to perfonners in these temtories. The absence of legislation in these countries, even afier recent copyright refoms, has to some extent been overcome. Moreover, some have proposed further statutory safeguards.

The fifth chapter discusses performen' rights in the Republic of China (Taiwan).

The chapter introduces the development and background of copyright protection in the

R.O.C. It might be said that the overall standard of the legislative protection in Taiwan has met the international level. However, the major problem of intellectual property in

Taiwan is the weak enforcement of the laws. While the reason for this lack of law enforcement can be found in both the economic and cultural backgrounds of the country, an appropriate solution may depend upon restoration of legal concepts fundamental to intellectual property rights protection.

The sixth chapter provides an analysis of performers' contractual status. Firstly, the relationship of "work for hire" (employment relationship) between performers and their employers affects the ownership of perforrners' rights in situations where perfonners are granted authorship over their performances. Secondly, once perfonners' rights were recoçnized by national law, conflict arose among prformers and other created rights ownrrs. In many cases, performers' incomos will depend on the tems of thrir work contracts. In thrse cases, a performer's contractual status could be more important than legislative rights. The seventh chapter introduces the collective administration of performer-related

rights in the countries mentioned above. In countries where perfonnen' rights are

recognized, although perfonners may be granted several categories of rights, the most

important rights that should be administered collectively are the rights to receive

compensation for the public performance uses of ph~nogram.'~Moreover, if a performer

is also the author of the musical work embodied in a sound recording, then she or he

should be entitled to the author right of herihis work. The collective administration of

music has been described as the rnost successful collective administration in the field of

copyright." The final section analyzes the necessis of establishing a perforrners' rights

administration separate from author's rights or producer's rights collectives.

In analyzing legislative protection of performen' rights, some definitions are first

necessaty :

"Performers": the definition of performers is controversial among national laws and

international treaties. Countries Vary over whether "performers" should indicate artists who rendu literary, musical, drarnatic or artistic works (such as singers, musicians or actor~).'~or persons whose performance are not based on Iiterary, musical, drarnatic or artistic works (e.g.athletes or circus performers). In this thesis, "performers" is meant to

-. . - -- - -

'6 Sinacore-Guinn, supra note 2 at 778, 780.

" Ihrd at 747

'"The Rome Convention 196 1, an. 2 (a) represent the former definition unless otherwise stated.

b4Perforrnances"- the broad meaning of this word might include "any acoustic or visual representation of a work".19 In this thesis, "performances" generally refers to the performance made by perfomers. It does not include the means of representation made by any mechanical instrument, radio receiving set or television receiving set, unless otherwise stated.

"Broadcnsting" - in this thesis, broadcasting means "the transmission by wireless means for public reception of sounds or of images and so~nds."'~For example, "broadcasting" doss not include cable transmission, or transmission through the Intemet.

"Phonogram" and "Sound Recording" - from a perfomers' perspective, the former means "an' exclusively aura1 fixation of sounds of a performance"'l and the latter means a recordinç, fixed in any matenal fom, consisting of sound of a performance."

'' See for example, the C'opyrighr Acr 1997 (Canada), S. 1. t 1 ).

The Rome Convention 196 1, art. 3 (f).

'' Ihrd art. 3 (b)

'' See the C'op);rghr Act 1997 (Canada), s. 1. ( 1 ).

12 "Performers' Rights" and "Authors' Perforrning Rights" - "performen' rights" means the rights granted to performers to prevent unauthorized fixation or the rights to control (or to remunerate fiom) the use of the their fixed performances. "Authon' perfonning rights" means rights granted to authors of literary, ciramatic, musical or artistic works to control their works to be performed in the public or to be communicated to the public by telecommunication." Chapter 2

Justification of Performers' Rights

The system of intellectual property is created to gant protection to a wide range of creative intellectual endeavours. Although a performance may be based on a pre- existing work not created by the perf'ormer, the creative efforts by the perforrner in such performance amounts to her or his own intellectual creation and thus has potential to be proiected under the scheme of intellectual property rights. tt is necessary at this point to examine the justification that exists for recognizing property rights in relation to intellectual products.

1. The Underlying Theories of Intellectual Property

Justificatory arguments for intellectual property rights generally fall into two theoretical categories: consequentialism and deontology.' Consequentialism theory (also known as encouragement or economic incentive theory) justifies property rights according to the beneficial consequences of legal recognition. The main premise is that the granting of exdusive rights will promote investrnent in the creation of original works and ultimately benefit society.' Consequentialism has traditionally been dichotomized

Daie A. Nance. "Foreword: Owning Ideas" ( 1990) 13 Harvard Journal of Law & Public Policy 757 at 763.

' Sap! v. Moore, 102 E.R. 139 (K.B. 1783); Warhitigton Ptrh. v Pearson, 306 U S. 50 (1939). into two major branches: utilitarianism and teleology. These branches differ in that utilitarian theories typically measure "benefit" according to "satisfaction of human preference", without imposing an evaluation about their appropriateness. In contrast, teleological theories rest upon ''judgements about what is good for individuals and comm unities."'

Deontological arguments are well known as natural law theones under droit d'auteur. These arguments cm also be sub-categorized into "labour theory" and

"personality theory". The dominant category, "labour theory", suggests that the creator deserves to own the fmits of his or her labour. Alternatively, under "personality theory", property recognition and intellectual property rights may be justified as the extension or reification of the creator's personality."

The rationale advanced for intellectual property protection in common law countncs is based on the economic incentive theory. On the other hand, theories based on natural law have long been popular in civil law jurisdictions. In the recent two decadrs however, the tendency in common law jurisdictions has been to move beyond the traditional defences to intellectual property Iaws, and to include the notion of faimess - an impulse nomally linked to the natural law notion, "to protect bits of one's labour.'"

' 'lance, .wpra note 1 at 764-765.

Wendy J. Gordon, -'On Owning Information: Intellectual Propeny and the Restitutionary Impulse" ( 19%) 78 Virginia Law Rev. 149 at 153. In the United States, this trend has been marked by several court decisions. In Canada, a government recornmendation for recent copyright reforms has clearly supported the notion that "ownership is ownership is ownership - the copyright owner owns the intellectual works in the sarne sense as a land owner owns land.'" However, some commentaton are suspicious of this latest intellectual property development. A closer look at the combined use of both rationales seems necessary.

A. Econornic Incentive Theories

The Statute of Queen Anne. 17 10. United Kingdom, is generally recognized as the tirst copyright statute - the foundation for modem copyright law in the British

Commonwealth specifically, and English-speaking countries generally.' The original intent of the Stutute was to protect the interests of the booksellers (or publishers). The purpose of copyright recognition under this argument is not only to avoid unjust enrichment. but also to encourage investment in creating new works that brnetit the public.' Copyright law gants the monopoly pnvilege on creators (or investors), with the aim of encouraging a fair retum for creative efforts. The allure of a "fair retum" is said to increase the probability that new creative works will be produced. Moreover, the

David Vaver, "Copyriyht Phase 2: The New Horizon" ( 1990)6 I.P.J. 37 at 40; quoting "Government Response to the Report of the Sub-Comrnittee on the Revision of Copyright" (Febmary 7 1986) at 9 .

S M. Stewan. Imrnurro~~afCop).righr am/ Nejghbouring Righrs. 2d ed. (London: Buttenuonhs. 1989) at 8 granting of copynght to the creator necessarily guarantees a large stock of copyrighted works available to the public. The latter argument focus its attention on the users of intellectual products instead of the producers of such products9

Teleological theories attempt to judge what is "beneficial" for individuals and cornrnuni ties, regardless "consumer" preference. Io For copyright, however, the problem remains how to determine what will specifically benefit individuals and communities in a given situation. Even under the assumptjon that benefits can be wholly expressed in ternis of money, teleological theories wouid still require selection of the copyright regime that provides for the maximization of individual and societal wealth. Moreover, it can be a very di ficult task to obtain the complete economic information necessary for precise calculations. The lack of information leads to a rough estimation or guess as to whether creativity is promoted by the existence of copyright. Thus, recommendations indicating a likely increase in welfare duc to the use of copyright may actually rnatenalize as a decrease to the larger public benefit."

The utditanan school of thought, which tends to measure the benefits of copynght "in ternis of satisfaction of human preferences" and by "allowing aggregate

Edwin C Hettinger. "JuniFjing Intellectuai Property" in Adam D Moore. ed.. htelltcctual Propry .biorai. Legai, u~rd/nrerrrarror~a/ D~iemmas (Lanham, iMqiand: Rowman & Littlefield Publishers, 1997) at 30

'O Nance. supra note 1 at 765

" Alfred C.Yen. "The interdixiplinary Future of Copyright Theory" ( 1992) 1 O Cardozo Arts &: Ent . L.J. 423 at 433434 preferences to be registered by operation of market,"l2 seemingiy faces less problems.

Ho wever, this economics-based philosophy leads to two additional problems in application to copynght. First, there is the question of whether copyright will actually stimulate the creation of new copyrighted works. Second, there is the question of whether the granting of copynght will increase public welfare.

[t has been argued that in absence of an economic retum given to the authors of copyright works, the supply of creative works would diminish and social welfare would likely suffer.I3 This assumes that every author creates works for the purpose of gaining economic rewards. However, some authors create works without an economic purpose in mind. For these authors, the economic incentive is not fundamentally important since they will likely continue to create works in absence of copynght protection. Economic incentive arguments that fail to account for this condition cannot fully reflect the rea ities of authors and creative processes.

Furthemore. "rnost creative and inventive work is not done by individuals; it is done by teams, . . . Moreover, it is directed by the firm that employs the team. Most copyrights and patents belong not to their individuals creators and inventors but to the fims that ernploy them.'"" Since the individual creator may not receive the benefit of

" Nance. .nrprtr note 1 at 764-765

" See William M.Landes & Richard A. Posner, "An Economic haiysis of Copyri&t Law" ( 1989) 18 J. Leyal Stud. 325 at 328. See aiso Yen, mpra note 1 1 at 425.

" David Vaver. "Some Agnostic Observation on Intellectual Property" ( 199 1) 6 I.P.J. 125 at 130. copyright, the granting of copynpht may not generate a strong incentive for creative work.

Even with the presurnption that al1 creators of copyright works will be encouraged by the possibility of economic rewards, it remains questionable whether copyright is the appropriate means of giving such encouragement." As Edwin C.

Hettinger States:

"[Il f the justification for intel lectual property is utilitarian in this sense, then the search for alternative incentives for the production of intellectual products takes on a good deal of importance. It would be better to employ equally powerful ways to stimulate the production and thus use of inteliectual products that did not also restrict their use and a~ailability."'~

As an alternative to copyright, some scholars have suggested the introduction of a system of "copy-privilege."" In such a reçirne, creators are allowed to o\vn riçhts to prrvent illrgal copying of their works which could be protectrd by other Irgal doctrines.

"A desire to discourage trespass, breach of confidence, fraud and the like, might therefore yield piggyback prohibitions against copying, not out of concem with copying itself, but because of a desire to avoid rewarding wrongful behaviour."18 Economic

1s David Vaver, I~ellecttrufProprp Law: Copyright. Parents, Trade-marks (Concord, On tario - Irwi n Law, 1997) at 8.

16 Hettinyer, s71pru note 9 at 3 1

" Wendy J. Gordon, "An lnquiry into the Merits of Copyright. The Chailenges of the Consistency, Consent and Encourasement Theory" ( 1989) 4 1 S tanford L. Rev. 1 343 at 1400- 1405 incentive theory fails to examine these cntical questions and thus srems insufficient as an account.

B. Natural Law Theories

( 1 ) Labour theory

Labour theory is generally associated with John Locke's theory of property.

Under Lockean property theory, the state of nature does not include positive law, and thus does not carve out ownership or provide any specific person the right to command others. The existence of moral duties limits each person's behaviour towards others. ''

"[Tlhese duties are imposed by God: they are discemable only by reason. . . . Sincr al1 humanity is equal in the state of nature, the duties we owe to others are also the duties they owe us, and the riçhts I have açainst others thry have açainst me."2U According to

Lockean theory, we have three "fundamental hurnan entitlements": "our daim right to be free frorn harm. Our daim right to have a share of others' plenty in timrs of our geat need, and Our liberty riçht to use the cornmon.""

In Locke's view, people shouid have the right to own the fruit of their labour.

Labour is referred to as "pain". It is something unplrasant so that people who labour

"' Wendy J. Gordon, "A Properiy Risht in Self-Expression:Equdity and Individualism in the Natural Law of lntellectual Propeny" ( 1993) 102 Yale L.J. 1533 at 154 1.

'' /&id. at 1543. According to Locke, "common" refers to unclairneci goods or raw material held in cornmon through a gram frorn God. deserve to be rewarded." Similarly, when a person produces an intellectual product with

his own intelligence and effort, that product ought to belong to hirn.

The "no-harm" principle is considered as a fundamental rule of Locke's natural

law theory. According to Locke, "there are enough unclaimed goods so that everyone

can appropriate the objects of his labour without inhnging upon goods that have been

appropriated by someone el~e."~' Such principle has been illustrated by Wendy J.

Gordon:

"Labour is mine and when I appropriate objects from the common 1 join my labour to them. If you take the objects 1 have gathered, you have also taken rny labour, since 1 have anached my labour to the objects in question. This harms me, and you should not harm me. You therefore have a duty to leave these objects alone. 1 therefore have property in the objects. . . . Similarly, if l use the public dornain to create a new intangible work of authorship, you should not harm me by copyinç it and interfering with my plans for it. 1 therefore have propeny in the intangible as well."'"

Howrver, Locke placed limits on the conditions under which labour can justie a property right in the thing produced. As Locke suggested, property rights may extend to

"as much as any one cm make use of any advantage of life before it spoils; so much may he by his labour tix a property in. Whaaver is beyond this, is more than his share, and

'' Justin Hughes, "The Philosophy of lntellectual Property" (1988) 77 Georgetown L.J. 287 at 301- 302.

'' Gordon, supra note 19 at 1544- 1545. belong to others."" That is to Say, one should not take more than one can use. There

must br: "rnough and as good Iefi in common to givr rhosr without property the

opportuni ty to gain it."'O

Locke's theory of proprty is not without problerns. It utilizes the hypothetical

state of "enough and as good" nature in which supply is inexhaustible - this ideal state

does not actually exid7 in today's world, where insufficient resources 1s problematic,

"more property for some will almost always brinç about less for others."' The

opportunity For individuals to obtain unclaimed sources of intellectuai property is not

eq ual .

One interpretatîon of Locke's labour theory daims that when "labour produces

something of value to others, then the labourer deserves some benefit for it."" This

argument seems plausible. Yet, there is insufficient evidence to show whether a creator

'' Jeremy Waldron, neRight foPriwtr Properry (New York: Odord University Press, 1988) at 207; quoting John Locke, Two 7kafisc.sof Goverment, 3d ed. (1960) at 308,3 18.

" Hughes,supra note 22 at 298. For example, "the idealexpression dichotomy is fiequently explaineci in terms of balancing the need to reward artists with the need for fie access to ideas"; "[public] consideration defines the 'idea' side of the copyright dichotomy- that which mus be kept as a public preserve. Labour defines the 'expression' side- that which must be rewarded because it is unpIeasant activity." ibid. at 313,3 14.

" James W. Child, "The Moral Foundations of Intangible Property" in Adam D. Moore, ed., Intellectual Pruperty Moral, Legal, md International Dilemmas (Lanham, Maryland: Rowman & Littlefield, 1997) at 57-80.

*'Ibid. at 6 1 ;quoting Virginia Held, Rights and Cosris (Glencoe, Ill. : The Free Press, 1984) at 172.

" Hughes, supra note 22 at 305. should be rrwardrd throuyh the system of property rights."' In fact, property rights in a creatrd object are not the only possible and adequate rewards for the creator. Alternative rewards i ncludè fees. special awards, recoqition. or public financial support. Locke 's argument seems not so persuasive given that it dors not consider the perspective of a labourer's demand.' '

(3)Personality Theory

Personality justification suggrsts: "'to achieve proper self-development - to be a person - an individuai needs some control over resources in the externai environment.' . .

. the ki nd of control nerdrd is best îùlfilled by the set of rights we cal1 property riçhts. ""

Hegel's theory of property justification is the best known example. Hegel suggested that

"an idra belongs to its creator because the idea is a manifestation of the creator's personality or 'sel r . . . . [Tl he individual's will is the core of the individual's existence. .

. . The will holds the 'inferior' elements of the self as if they were a type of property.""

According to Hegel,

'O Lawrence C. Backer, "Deserving to Own Intellenual Property" ( 1993) 68 Chicago-Kent L.Rev. 609 at 620.

'' Hettinger, supra note 9 at 25

'' Hughes, supra note 22 at 330; quoting Margaret J. Radin, "Property and Personhood" (1982) 34 Stanford L. Rev. 957 at 957.

" Hughes, ibid at 330, 33 1. "[bleinç tirst in possession of an object is not sufticirnt to maintain titlr to it; the property relationship continues only so long as the will manifests itself in the object. Because the will to possess something must express itself, a person who fails to reafirm constantly this expression can lose possrssion of property through prescription. . . . The reason I can alienate my propeny is that it is mine only insofar as 1 put my will into it. Hence 1 may abandon . . . anything that 1 have or yield it to the will of another.""

Hegel's argument seerns to rxplain why the property owner can freely abandon

his or her ownenhip. However, it does not explain why the next owner cm obtain ownenhip by way of the pnor abandonment. Presumably, when a property right owner abandons her or his right, the owner's personal interest in the object no longer exists.

Yrt. if the object does not express or manifest part of the individual's personality, then no foundation exists for a property right over the object, for example, the right to determine the object's future. Although the personality justification may provide some property protection, it does not afford a full account for property exchange3'

Applying the paradox of personality and alienation to intellectual property, Hegel had a different view on the matter. He recognized the object not as one capable of abandonment but rather as the continua1 expression of its creator." A Hegelian perspective considers the payments received by creaton from intellectual property users as acts of recognition whereby the creator is recognized as a person. However, property

U Ibid at 344; quoting G. Hegel, Philosophy of Righr.

'' Ibid. at 345.

lbid at 348. cannot fully refîr to idrntity. Although a creator miçht want othrrs to identi@ him with

his intellectual product, this does not j ustify his property daim to it."

The denial of the alienation of intellectual property refrrs to two condition:

"first, the creator of the work must receive public identification; second, the work rnust

receive protection against any changes unapproved by the creator." Thesc two conditions

are known as the concept of "moral rights" in current intellectual property law ~ysterns.~'

Assuming that protection of a creator's identity is important and al1 that "property

granting" regards, then one might ask whether the scope of that property be only

rrstricted to the vesting of moral rights in creators. Personality theory scerns more

suitable for the justification of moral rights than for the justification of copyright, sincr

in many countries the ownership of moral rights is generally considered unassignable,"'

whereas copyright is ful ly exchangeable.

As personality theory suggests, the ownership of a property right exists when a

prrson possesses a "personality stake" in an object. It seems that those intellectual products that appear to reflect little or no personality from their creators should receive no protection at all." In criticizing the latter conclusion, Justin Hughes argued:

'' Ibid. at 349.

Ibid. at 350.

'' In Gennany, however, an author cannot assign copyright at al1 but can gram only Licences for use of work. This nile seems consistent with Hegel's argument.

* Hughes, supra note 22 at 339. '-It is an oversimplitication to think that some genres of intellectual property cannot carry penonality. This oversirnplification avoids the true issue of the constraints of economy, efficiency, and physical environment which limit the range of persona1 expression. Such constraints exist to some degee in every genre. . . . At some point, these constraints on a particular form of intellectual property may be too great to permit mcaningful expressions of personality. . . . As mere consumers we may think a genre of intellectual property too constrained to permit expressions of personality, while the majority of creators in that genre may think that their works do express personality?"

However, an individual's personality demonstrates itself in varying degrees in diflerent kinds of objects. The real question is: should different kinds of intellectual property receive different amounts of protection?'12

C. The Third Approach

The two major arguments in favour of copyright have been adopted by different legal systems. Each system tends to emphasize one over the other. Both theories provide a backdrop for justifying copyright and both have contnbuted to the development of copyright law. Analysing these theories separately, we find deficiencies in each of them.

Thus, some copyright scholan have adopted both theones as a justification for copyright law." As Alfred C. Yen suggested:

See gmdy. Yen, supra note 1 1. See also Stanforth Ricketson, The Law of lntellecrual Property (Sydney: The Law Book Company, 1984) at 6-8. "Proper construction of our copyright law depends on strikins a socially acceptable balance between the interest of authors and the public. From a purely intuitive point of view, two issues certainly seem relevant. First, society would like to ensure the promotion of social welfare through the production of creative works. Secondly, society would also want to strike a just and fair compromise between authors and consumers of creative works. . . . [Olne-sided approach to copyright cultivates an obviously cramped view of an area which is assuming ever increasing importance for our society.'"

A more clrar view of such an alternative approach is provided by Professor

Wendy J. Gordon. Gordon argues that even the most plausible feature of encouragement theory - the principle of wealth maximization - has some conceptual tla~s.~'The most prominent problem of encouragement theory is that it fails to "take into account issues of distributional justice and noneconomic measures of de~ert.''~

"For example, if group A would bear the burdens of a change that bencfits only group B, most observers would demand some showing that group B deserved to receive this boon and that there was some reason why members of group A were the appropriate persons to provide it. However, advocates of the wealth maximization critenon tend to argue that as long as group B's economic gain exceeds group A's economic loss, the change is desirable. Such a focus on aggregate wealth unjustitiably ignores the moral daims that the membea of grou? A have to be recognized as individuais.'"'

u Yen, rbzd. at 424. However, such a crossdisciplinary approach has not been convincingly argued.

" Gordon, supra note 17 at 1435E Morrover, if the only purpose of a copyright systern is to encourage the creation of nrw products, then "copyright protection would not be extended to creators who require no remuneration for their effon~.'~~If we withhold copyright protection for the reason that the creator would have created the work without the incentive of copyright, the encouragement argument would tum into a theory that recommends abandoning the creator's rights rather than acknowledging the same.

In Hurper & Row, pubiish~.rsv. Nation Enterprrses:' the National magazine published a short article without consent by the author, President Ford. The US.

Supreme Court held that the article in question was not subject to the fair use doctrine, although President Ford was in a public position. In reaching the decision, the Coun did not rely on the argument of rconomic encouragement theory. Rather, the court stated,

"the nghts conferred by copyright are designed to assure contributors to the store of knowledge a fair retum for their labours."'" The Coun further held that Ford and his authorized publisher were "poised to release [the workj to the public"." Thus, it seemed irrelevant "whether enforcing or denying the copyright owner's claim would lead to

'value ma~imization'."'~ It appears that the encouragement principle carmot in effect fit

'' Ibid. at 1440.

'9 471 U.S.539 (1985).

Ibid. at 546.

'' Ibid. at 558.

'=Gordon, supra note 17 at 1449 in with the situation where public need is not the major concem. Gordon therefore suggests that the factor of public interests should be integrated into copyright law by other means. 5'

Compared with the economic encouragement conception, the desert notion -

"one deserves a reward for her effort" - which derives fiom "common sense notions of moralitfY seems more persuasive. However, Gordon does not fully agree with the natural law theory since it tends to move quickly from rewarding one's labour to granting him or her property rights. In Gordon's view, an alternative theory of "restitution" could be more appropnate whrre under such nom the reward gwen to a creator is a right to daim compensation rather than a property right. Moreover, an eager acceptance of such natural law notions would likely give the creator too much power that might result in the improper resistance toward measures that protect the public hterest. '' According to

Gordon, "for [a] legal right to be justified, a cost-benefit analysis would have to show that the gantin2 of such a right represents a net positive econornic result for the society. at least to the extent that it does not infnnge any of the public's nonfungible interests."'"

To efficiently satise bath the demands of users and the producers of inteliectual products, several utilitarian factors should also be considered - e.g. minimizing

-- --

" ibrd at 1438

lbd at 1446

'' Gordon, mpm note 5 at 15 1 - 152 and 192

Gordon, supra note 1 9 at 1608 administrative costs and presrniing a market system.57

In doing the above. Gordon introducrs a "Paretian economic"" standard. lnstead of em bracing the encouragement theonsts' method of seeking maximum totals of social wealth, a Paretian approach tends to justify authors' entitlernents by the market value of their works. Gordon suçgested:

"No matter how othenvise desirable it may be to have a copyright, the argument in favour of that system from an economic perspective are empty unless markets corne into being. . . . If market does not evolve for a particular creative work or use - Say for example that bargaining is impeded by problems such as extemalities, high transaction costs, or the impossibility of identihing the copyright proprietor - and no market substitutes are available, then if the copyright laws prohibited copying in that area it would simply be preventing copying without yieiding creators any monetary advantage. That would be undesirable. Not only would copyright then fail to perfiorm its prîmary function, but if usrrs cannot reach market deals with creators, copyright would impose more costs and generate less benefit than would a regme without copyright""

II. JustiQing Performers' Rights

Under the economic incentive theory, copynght rests upon an economic rationale whereby copynght is provided as an "appliance" to encourage the creative efforts of authors and therefore benefit society. Yet, such encouragement approach seems

'' Gordon, supra note 5 at 196

'' Gordon, supra note 17 at 1448.

Wendy I. Gordon, "Asymmetric Market Failure and Pnsoner's Dilemma in Intellectual Property" (1992) 17 U. Dayton L. Rev. 853 at 857-858. arnbiguous in justiQing performers' protection.

It is often argued that the "encouragement" argument can only apply to well- establ ished performers. Even in absence of enforceable legal rights, most performen wi 11 rnake performances to eam a living. Since a large number of pemns are already eager to perform, the absence of protection will not reduce the number of performance in total."'

Moreover, the encouragement clah is only panly mie, as sorne performers do not perform for economic reasons. The lack of performen' nghts protection for them wil1 not result in a decrease of their performances. Even if we assume that the products of perfomers will be increased by the granting of perfonners' nghts, more performances in a society does not guarantee that the public will receive more benefits. Then why should we as a socieîy need to protect performen' rights?

It seems that a natural law notion that a creator deserves what he produces intellectually could have more potential for the justification of performers' rights. Under

Locke's labour theory, the moral argument for intellectual nghts starts from the premise that where value arises as the result of a person's labour, that penon should receive fair compensation. Performers unquestionabiy spend sufficient labour in their performances.

Although a performer's performance is based on a prr-existing work which is not created by the performer, the perfomer's own effort and characteristics in such performance deserves to be treated and protected as the performer's own intellectual product.

60 Comrnonweaith of Australia Cop~~ighrhp Revrew Commme Report on Peflormers ' Rrghts (Canberra. Austrdîan Goverment Publishing Service, 1987) at 4 1 Moreover, perfomers can only claim creative responsibility for their "performance" which does not include the underlying work created by others. The copyrights of the underlying works still belong to the authon who created the works and will not be affected by the granting of performers' rights.

On the other hand, in personality theory, a perfomer who reflrcts his or her own personality, should have a moral claim to property in such a performance. However, "in somr employment areas, such as advertising, performers' are subject to very detailed scripts and direction. There is linle scope for a perfomer to interpret his performances or givc individual expression to what he [performs].'"' Performances are therefore more like the "reproductions" or "distribution" of those pre-existing works than works

"created" by performers on their own "initiative".

This conclusion, however, seems unjustified. As Hughes argued: "copyright protects more than only personality-rich objects. . . . Maps [in modem time] have a tremendous uniformity. . . . This does not rnean maps are absolutely devoid of personality. . . . Even in every day maps, there can be artistic content or social commentary in the choices of colour, identifying syrnbols, and information included.'"'

Similarly, it is an oversimplification to think that some performers under employment cannot embody their personalities in their works. From a performer's perspective, the

'' Copyright Law RwwCommittw Discussro~tPapr: Prrfomers Protectiot~( Aust talia, 198 5) at 13

6' Hushes. mpru note 22 at 341 copyright work she or he performs is only an instrument through whch the perfonner can express her or his own personality6'

Although natural law theories may have weight in justiQing intellectual property rights, the creators' property entitlements should not be overemphasized. It is essential thar a balance between creators and users be properly struck. For example, in deciding whether to give performers enforceable rights in their performances, we need to examine first of all whether performers have already enougb rewards from the market even without the granting of performers' rights. Secondly, we should consider whether a market can be formed in which perfonners really benefit and users obtain the licenses the? need.

It has bern arçued that performers are already adequately compensated through contracts for their services. "They receive a minimum wage as negotiated by their unions for session work. and in addition receive royalties from record sales pursuant to their recording contract."+' Proponents of this argument maintain that it would be absurd to

çive performers more compensation by granting performen' rights.

In practice, a contract system tends to provide insufficient protection to perfonners since their degree of contractual protection may be affected by an imbalance of bargaining power. Performen with "the least industrial strength" generally require the

Ibrd. aat 344-347.

B mce M Green Protecriorr of Mtrsicaf Fer-onners' Rights in Thew Performarices ( 1979) at 39

33 most prote~tion.~'Moreover, recording contracts usually stipulate that royalties be

directed first to the recording costs borne by the record Company, and then to the

perfonner's entitlement. Only a srnaIl percentage of records yield royalties for the

perf~rmer.~Furthenore, performers cannot legally enforce contractual rights against

third parties (not privy to the contract) who use their performances. Similarly,

perfonners can experience dificulties in secunng the reimbunements from their

contracting parties who become insolvent or bankrupt."

It has also been argued that even the granting of a performers' rights rnay not

fully compensate for performers' loss of job opportunities. New technologies allow performers' perfomancrs to be recorded and repeated in public. It seems that performen' live performances could be easily substituted by the products of the new technologies. At the same time, however, the invention of new media has increased the demand for performers' performances, thus creating new employment oppon~nities.~'

Moreover, in the music industry,

"while it is mie that [ive performances have been largely excluded from radio performances, it is incontrovertible that over the years musical performers have benefited from radio exposure. Today, income from

'' Copyright LawpRrwm Cornmrttee Discussion Papr, supra note 6 1 at 10- 1 1

Green, mpra note 64 at 39-40

'' Copyright LmRrview Cornmittee Report on Performers ' Rights, supra note 60 at 42. See also Copyright Law. Revim Cotnmitree Disctlsion P-r. supra note 6 1 at 1 I

a Stewart. supra note 7 at 200 record sales is by far the greatest income for perfonners. Live concert tours are undenaken, sometimes even at a financial Iciss, to promote al b~rns.'*~

Afier all, the problems of perfonnen' unemployment caused by technology

improvement should not be the major concem of intellectual property law. Rather, it seems to be a problrm we should anempt to solve through social legi~lation.'~

In a latrr part of this thesis. I suggest that performers' rights should be collectivrly adrninistered in order to fom a market that benefits both performen' and the users of thrir performances. More details regarding the collective administration of perfomers' rights will be addressed in chapter seven.

III. Performen' Riçhts - General Concepts of Copyright

A. Originalihv

It has bern argued that '-it is through the concept of originality that copynght law assesses whether sufficient creativr effort is involved in order to warrant the gant of a monopolp."" The statutory requirement of "originality"'' becomes a distinctive problem for perfomers' performances because they presupposc a pre-existing work. Here, the

Green, mpra note 64 at 43

'O Stewart, mpra note 7 at 200

'' William J Braithwaite. "Denvative Works in Canadian Copyright Law" ( lune 1982) ?O Osgoode Hal L. J. 191 at 196.

'' 17 LrSCS 5 102 (a), Copyright Act (Canada). R.S C 1985. c. C-42, ss. 2. 5 (1) word "original" does not mean that a performance to be protected rnust be based on the

perfoner's original or inventive thought. Rather, originality is to be valued by looking to the performer's independent creativity added to the existing copyrighted ~ork.'~

The test of originality is often said to be a question of degree:" was there suficient knowledge and skill spent in their production to support the granting of copyright? Although the standard of originality should not include requirements of novelty, a copynght may not exist where the author's independent effons are too trivial to rneet the minimal requirement of creativity. As said in an Amencan case, I;L'i.sr

Publtçurron lnc. v. Rurul Telepltone Serv~ce(ompuny, lnc.," where the U. S. Supreme

Coun denied the copyright in a telephone directory made by a telephone Company:

"Original. as the terrn is used in copyright, means only that the work was independently created bu the author (as apposed to copied from other works), and that it possesses at lease some minimal degree of creativity. . . As mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is equally tnie, however, that the section and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever. The standard of originality is low but it does e~ist."'~

A Canadian Court adopted the above U. S. decision in detemining the standard

73 Braithwaite. supra note 71 at 195

71 See M. Nimer & D.Nimrner. Nmmer on Copyright, vol. 1 (New York: Matthew Bender. 1996) at 2.01[B].

It has been argued that a performer, in order to claim copyright protection, must

"elevate interpretations to the realm of independent works of art?" Yet, as the

American Coun described in Ettore v. Phiico Teelcvis;on Corp.": "We do not think that the quality of the performance can supply the cnterion. . . . If the artistry of the performance is wed as a critenon, every judge perforce must tum himself into a literarv, theatrical or spom critic." After all, originality is a matter of degree. Whether there is a sufficient degree of originality in a performance may not be easily determinable:

"di fferent minds rnay naturally reach di fferent conclusion^."^' The principle of the originalih test providrd by Feisr and Tek-Direct cases which appears to senle the dispute about originality raises another question conceming the artistic and creative nature of performers' contnbution in their performances.

B. Fixation

Another difficult issue of performers' nghts protection is the fixation requirement under copyright systems. For exampie, the Unrted Srutes Constitution S Putrnt und

Copyrrght ~'iuusr~~States that federal copyright can oniy cover works "fixed in tangible

- -

Haflr~gv WD;IS Brdcmt~rlgSfafiori hc.. 307 Pa 433, 194 At1 63 1 ( 1937).

" 351 US 926 (1956)

'1 Tek-Direcr. supra note 77 at 308, quoting Lord Macmillan in Cmpd Sorts.

" Lr.S.Const AI. 1, S. 8, cl. 8.

38 medium of expression."@ To protect perfoners' live performances poses a controversial issue of whether Congres has the constitutional authority to enact such protection." In analysing the development of the fixation requirement and its influence on U.S. C'opyrrghi Act, Paul Edward Geller noted:

"One reason for a fixation requirement may be sought in formalities: the Statute of Anne still imposed registration at the Stationers' Company, and the French Law of 3793 made deposit a procedural requisite. Only something clearly identifiable over time cm be meaningfully registered, and only some tangible thing, like a writing, engraving, or recording, can be archived in a deposit system. U.S. copyright law long continued this tradition, while in France a court in the mid-19th century already protected a live sermon. . . . Anglo-American laws, as well as some laws from the Spanish tradition, still tend to require fixation, while most other laws rnerel y view fixation as satisfyinç evidentiary requirements or do not demand it all."R"

In Canada, while the C'opyrtghr Act does not explicitly mention whether fixation is required for copyright protection. the fixation requirement has been proposed by coun decisions. Cunently, Pan II of the Copyrrght Act explicitly provides that perfomers are entitled "copyright" protection over their live performances. Such provision seems to imply that the fixation consideration is somewhat flexible under current Canadian

" See Lionel S Sobel. "Bootleggers Beware Copyright Law Now Protects Live Musical Performances. but New Law Leaves Many Question Unanswered" (1995) 17 No. 2 Entenainment Law Report 6 at 1 1- 12.

nt, Melville B Nimmer & Paul Edward Geller, eds.. Intentarronai Copyight Lm. andPracricr. vol. 1 (Xew York Maahew Bender. 1996) at 3 2 [2] [cl [footnotes ornirted]. copyright law."

The failure to grant perfomers copyright protection seems to be more related to

perfomers' relatively weak political power than other reasons.18 Authors and other

groups of neighbouring rights owners tend to argue that to gant perfomers a copyright

in their performances is offenng them too powerful a protection and one which is

inappropriate for their specific needs." Afier all, "even the legal and moral pnnciples

for copyright and neighbouring rights are far from self-evident, they must be negotiated

within the political arena where a variety of social and economic interests struggle for

power and ir~fluence."~~'

C. Moral Rights

Currently, perfomers are not granted moral rights in most copyright systems,

whereas moral nghts are conferred on performers in most "drorr diiureur" traditions."

This can be traced back to the fundamental difference between the underlying theones of

these two systerns. A prominent character of the copyright system is its difficulty to

17 See Vaver, supra note 15 at 45-46

" David Vaver, "Copyright Phase 2: The New Horizon" (1990) 6 1.P.I 37 at 50

'9 Green, supra note 64 at 46

10 Simon Fnth. Music md Copyrighr (Edinburgh. Edinburgh University Press. 1993) a 4 1-43

" In France. performers are granted moral rights protection under article L.212-2 of the 1985 fnrellecrrral Properp W. However, the scope of mord rights for perfomers is narrower than for authon. In Gennany. the only moral right for perfomers is the right to prevent dinonion or altemation (The 1965 Copy-~ghfAct, S. 83). Nimmer 8: Geller, supra note 86 at FIW- 1 3 6. GER-1 22. adopt moral rights doctrines. Under the ''drorr d'auteur" concept, authors are offered moral rights protection in addition to economic rights. Moral rights grant the author continuing control over the work despite its exploitation. The latter are designed to protect the personality interests of the creative person. In general, moral doctrines include: (i) the right of patemity (which protects a creator's right to attach, or not attach, her or his name to her or his work); (ii) the right of integnty (which precludes the distonion or modification of an artist's work, in absence of permission to do so); (iii) the right of disclosure (which provides only the author with ri@& to an uncompleted work):

(iv)the right to or not to mak the work public; (v) the right of withdrawal (which allows the author to retrieve her or his work even if it has been previously sold or p~blished).~'

The economic incentive theory suggests that the encouragement of new creations by individuals would benefit society. Such a rationale is not primarily desiped to provide a special private benefit. In such a scheme, authors' moral rights tends to be ignored. "If authors retain inalienable personal rights in their creations, buyers will pay less for the works. This reduced remuneration would . . . have the aggregate effect of reducing incentives for anists to create, thus reducing the availability of creative works to the p~blic."~'More importantly. the introduction of moral rights doctrines would destroy the balance of risk and reward between creators and financial contnbutors to

9' 9' David Vaver. "Authors' Moral Rights in Canada" (1983) 14 1.1.C. 329 at 330-340. See also

Anthony D'hato & Doris Estelle Long. ed.,Infentarronui Infelkcnral Properry hl (London:Khwer Law Internationai, 1997) at 138- 139

93 D'Amato & Long. rbd at 133-134 created works. This will result in the deduction of the financial support of a new creation. It would in tum discourage the distribution of creative works to the public, thus harming the public interest." Some commentators even daim that moral advocates tend to take "a position of cultural conservatism, inhibited expression and u~easonabie deference to creators' intentions.'">' Focussing on the entertainrnent and cultural industries of the United States, Robert A. Gonnan stated:

"[Those industries], in summq, are highly collaborative, contemplate and depend upon a wide variety of denvative forms in their distribution to the public, and are historically regulated by individually and collectively negotiated agreements. The introduction into these industries of a right - exercisable by any one of a host of collaborative contributors - to protest the alleged distonion or modification of a particular literary or artistic contribution is extremely problematic. At best, it introduces an element of instability and uncenainty, as well as the frequent possibility, because of the increase threat of litigation, of delay in public access to and enjoyment of entertainrnent vehicles. At worst, it threatens to prevent altogether the dissemination to the United States and international public of a host of cultural and entenainment materials in forms that are vaned, appealing and affordable."'"

Althou& traditional concepts in cornmon law have had difficulties in recognizing moral rights as an aspect of copyright, authors' interests usually found under such rights could be created by contract or protected by court decisions based on principles such as

* See Robert A Gorman, "Federal Moral Rights Legislation: The Need for Caution" ( 1990) 14 Nova L. Rev. 42 1 at 42 1-422.

9' Lawrence A. Beyer. "Intemationalism, Art and the Suppression of Innovation: Film Colorization and the Philosophy of Moral Rights" ( 1988) 82 No.4 Northwestern University L. Rev. 10 1 1 at 1016.

% Goman supra note 94 at 423-424 the tons of passing off, injurious falsehood and defamation." However, the law of

contract is insuscient for the protection of moral rights, particularly when a claim is

being made against third partie^.^' Most common law countries have, in recent years,

adopted moral rights doctrines in their copyright law regimes, although the scope of such

protections has been reiativeiy limited.

D. Performers' Rights and Authors' Rights

The anentions of creativity and the pre-existent condition of the authors' works

initiate crucial distinctions between authors' rights and performers' right~.~~However,

the relationship betwern performers and the authors of underlying works requires careful

considerat ion.

Several conflicts ma? exist between authors and performers. First, the prevai 1 ing

conflict may be considered a matter of political power. Performers tend to draw more

public attention and enjoy wider popularity through their works than do authon. Authors

believe that their own benefirs will be reduced by an increase in performers' popularity

and in their political power.'" In fact, however, only a small number of perfonners who

97 David Vaver, mpra note 92 at 330-340

9* Cees van Rij, ed .lLforaI Rights - reports presenred ut rhe meetrng of the Inzen~atioriaiAssocrarrorl of Enirrtanrrncr~rrLrnr3.er.s MIDEN 1995. Cannes ( Apeldoorn, Netherlands. MAKLU 1995) at 4 1.

99 David Sinacore-Guinn. Collvcfivr Rhinrsh.ation of Cop)7ights and Nrrghboirr~r~gRighrs: Inzenlatrorral Pracnces. Procedures, and Organrzat~onr(Toronto: Little, Brown & Company, 1 993) at 158 have successful careen can reach such a powemtl position. Most performers are still in a weaker position relative to authon and need to be protected.

The other conflict is a matter of economic interest. Authors often argue that the granting of performers' rights will diminish their own interests in the underlying works.

If performers control the rights to license the uses of their own performances, an author's approval for the srcondary use of the underlying work would be wonhless. This would, in tum, decreasr the value and status of the embodied copyright. In fact, both authors and performers may wish not to constrain such uses since they tend to share incomes from secondary use of the performances. The only exception anses where poor qua1 performances impair their reputations. Io'

In regards to the right of remuneration for the public performance use of sou recordings, it has been argued that such a right would dimlnish authors' revenue. Since the "cake" (revenue) is only so big, the copynght ownefs share must be srnaller if performers are entitle to a slice of the cake - this is the so-called "cake the~ry."'~'The above resuit, however, remains dubious. It does not seem to adequately account for the dynamics of the "cake" size; the author's share may actually increase where performers, through their performances, have added value to the underlying copynght works. 'O3

Even when accepted that a performance can be protected under copynght or

'O1 Ibid. at 795. See dso Stewart, mpra note 7 at 192.

'O' Stewart, rbrd at 226.

Io' Green. supra note 6.1 at 42. neighbouring rights regimes, it remains necessary to determine the legal relationship between the performance and the underlying copynghted work. Under most countries' copynght laws, the exclusive rights of the copyright owner are set out to include the sole right to perform the work. Any performer who wants to perform that work must have the permission of the author (or copynght owner). Whenever the performance is made without the consent of the owner of the underlying copynght, that act is deemed to be an infringement to the copynght of the underlying work.

One critical issue is whether a performer who fails to acquire the necessary consent of the underlyjng author should be provided any right in his performance. It has been argued that a "work must be original but that seems to mean no more than it must not itseif infrinçe the copyright in a copyright w~rk."'~However, this view does not explain the direct relationship between the two concepts of infringement and originality

Moreover. perforrners or other creators of derivative works receive creative rights since there is sufficient ski11 and labour included in producing an original work as separate from the underlying work. As far as a performer or a creator of other derivative works can satis@ the test of originalig, whether or not she or he obtains the requisite consent of the underlying author is a separate question. Since copynght seeks to reward creativity, performances warrant protection as much as the underlying works. 'O5

Braithwaire, supra note 7 1 at f 05;quoting J. B Richardson, nie bofCopyrighr (London:lordon & Sons. 19 13) at 182 An English case, Redwood Music Ltd v. Choppeil

1956 to insert the word ' lawful' into the statutory definitions found in the Acts of those years but on neither occasions had it been seized." Moreover, notions of justice and common sense may be undermined if the owner of the underlying copyright was entitled to exploit and thus benefit fiom the original work of the derivative creator.lo7 In contrast, the Canadian court, Cornpu ('o. v. Blue (Tesr Music /nc.,'O"ad a different opinion regarding to the above issue. However, the decision was made without much analysis of the problcm.

It has been argued that it is inappropriate "to give legal sanction to what is in effect a thefi of the results of the brain of the original composer or author."'" Also, granting creative rights to an infringing derivative work "encourages intrusion into the exclusive rights of the underlying copyright owner.""" Yet, the above argument fails to address why copyists who illegally take advantage of a derivative work should be allowed to use it freely just because the derivative creator is unable to obtain a licence frorn the underlying copyright author. Moreover, it is unclear whether or not the granting

'" [1982f R.P C. 109 (O B Div )

[1980] 1 S.CR 357, ( 1979). 105 D L.R.(3d) 219,45 C.P.R.(2d) 1

'O9 Braithwaite. supra note 7 1 at n. 64. The commons was made by W Joynson-Hicks in 7he Report of the Comrnrtteti on rhr Law of Cap-wght (Cd.4976. 1 909). at 3 1

''O Braithwaite, Ibid. at 207 of creative nghts to an infnngmg derivative creator would prejudice the interrst of the underlying author. The latter may daim relief for inhngement against the derivative creator. Thus, an incentive exists for the derivative author to obtain the consent of the underlying author. even in absence of a formal sanction in the denial of tights in the work.' ' ' Chapter 3

International Protection of Performers' Rights

I. The In ternational Convention of Perfonners, Producers of Phonograms and

Broadcasting Organizations - The Rome Convention 196 1

A. Historical Background

Rapid advancements in technologies at the beginning of the 20thcentury led to debate over the issue of neighbourinç rights protection. At the Berlin Conference for the

Revision of the Berne Convention in 1908, the British government. in response to its perceived needs for international protection for neighbouring rights, advocated a specitic form of protection for record producen. ' However, the British proposal was not adopted since the Conference members believed it was more fitting to protect perfomers' performances as indusmal property rather than copyright. Subsequently, at the 1928

Rome Conference for the Revision of the Berne Convention,' the ltalian govemment proposed to provide performing artists with an "equitable remuneration" whenever their performances involved a public broadcasting or public performance. The latter proposal, however, was perceived to be new and untested. The Conference members rejected it, suggesting that additional studies were required. At the 1948 Bnissels Conference for the

' S. M. Stewart, Inzemational Copyright and Neighbouring Righrs, 2d ed. (London: Butterworth, 1989) at 222. Revision of the Beme Convention, the British and Belgian governments joincd in their argument for protection of recorded performances. but strictly on the condition of national legislation. Here, the Ianguage, "neighbouring rights", was introduced for the tint time, indicating the new rights proposed for performrrs, record producers and broadcasters.' However, the proposal for neighbouring nghts protection was again rejected by the Members of the Beme Convention.

In considering the protection of neighbouring rights. one might focus attention on the pre-existent status of the underlying work. One might argue that performers, record producers and broadcasters do not qualify for the protection of "dmrt d'uuteur" since authorship is considcred derivative. This argument, however, is only part of the entire story. Comparatively speaking, the most similar rights are those of the translator of a literary work, or of the arranger of a musical work. The translator and arranger who also use a pre-existing work to generate a new work are gven a complete range of copyright under the Berne Convention. However, the Berne Convention does not mandate the protection of the three neighbouring rights.'

The real dificulty for the Beme Convention to accommodate neighbouring rights is that the broadcaster and record producer tend to be companies or corporations.' The

''drort d'auteur" concept resists the recognition of rights for companies since they do not

Ibid.

' Ibid at 223. ' lbid. qualify as "authon"." As Jehorarn wrote:

"[Tlhr question of 'copyright' or 'neighbouring rights' for producers seems a game of words and a confused game at that. There is, however, an idea in the background. Not only the idea of protecting producers of records and other camers of information at the samc levrl as authors, but of replaciny authors by industry."'

The Beme Convention yet refuses to acknowledge the authorship of performers in their performances. Apparently, the only reason for performers' exclusion from protection under the Beme Convention is because of the relationship between performers and other two neighbouring rights bencficiaries: record producers and the broadcasters.

The relationship between the neiçhbouring nçhts has been delineated:

"There are few records without a performance . . . and few broadcasts without either a performance or records or both. It is the interconnection between the three rights to be protected and the necessity to create an equilibrium between the three that lead to the creation of a separate convention dealing with the rights of the three right-owners in one instrument.""

The approach of cornbining perfomers' rights and the other two gro neighbouring rights has met opposition. Even the official WIPO Guide to the Rome

Unsurprisingiy, the Berne Convention has the same difficulty in conceding the rights of a film maker who is also a derivative creator and a corporation. Ibid.

' Herman Cohen Iehoram, 'The Natural of Neighboring Rights of Performing Anists, Phonogram Producers and Broadcasting Organizations" (1990) 15 Columbia-VAL J. of Law & The Arts 75.

Stewart, supra note 1 at 123. Convention remarked:

"True, the purist may complain that, notwithstanding the ski11 and talent of a recording engineer or a broadcast producer, the making of a record or of a broadcast is, afler all, an essentially industrial act, whereas the performances of artistes are of their nature acts of spiritual creation; and to mix thrm up together in one convention creates a hotch-potch.'"

On the other hand. the copynght system has had less conceptual challenge in accounting for companies or corporations in its setting. Copyright evolved from its

English origins in the rights that protected the commercial benefits of book publishers in the late 1 71h century. 'O Under the concept of copyright system, "copynght is essentially a vrhicle to hrlp propel works into the market: it is more an instrument of commerce than of culture. It is geared more to the media entrepreneur than the author. It is ready to grant copyrights not only to authors but to secondary users who add value to the work."'l

White it is true that common law countries already use the terni copynght in relation to the protection of sound recordings, not every country with a copyright system grants performen "copyright" in their performances. An example of the latter is the

Anthony D'Amato Bt Dons Estelle Long, eds., Internurional Intellecruai Properry Law (London: iüuwer Law International, 1997) at 99; quoting W7PO Guide to the Rome Converrtion and tu the Phonogram Converttior~12 (Geneva 198 1 ).

'O Julian Tunon & Cees van Rij, eds., Neighbarring fighrs: Arrisis, Producers and 7heir Collective Societies - reportspreseniedat the meeting of the InfermtiomiAssociation of fitertainment Lawyers, Midem IWO, Cames (Apeldoorn, Netherlands: MAKLU Publishers, 1990) at 13, 14.

l1 David Vaver, "Copyright in Foreign Works: Canada's International Obligations" (1987) 66 C.B.R 76 at 77-84. solution taken by the United Kingdom in creating perfonnrrs' rights, scparate from copyright, to protect perfomers. In Canada, the acknowledgment of performers' copyright does not qualify them as authors under the definition of current Cap-vrrghr

*4'Y. l2

The authorship problem of the three beneficiaries of neighbouring rights resulted in the attempt to create a new and independent convention." On October 26, 196 1, the lnternational Convention for the Protection of Performers, Producers of Phonograms and

Broadcasting Organizations, also known as the Rome Convention, was signed by 18 countries. lJ Compared with other international conventions, the preparatory work for the

Rome Convention was much longer. Two reasons for the slow progress wrre suggested and refuted:

(a) "the technology of recording and later of radio and television was novel and no one could fully appreciate the influence this would have on the exploitation of literary and musical works"; (b) "the innate fear of those representing the interests of authors that their hard-won rights would suffer, if anyone else in this field of law also becarne a right owner. Time has proved these fears groundless but the view was strongly held by

'' The 1 997 Copyright Act, Part II.

'' The preparation for this new convention was conducted by three intergovenunental organizations: "BiRPI (now WiPO), WSCOand the International Labour Office (JLO)and by three non-govermental organizations: EIM (the International Federation of Musicians) later joined by FIA (the International Federation of Actors), iFP1 (the Internationa! Federation of producers of phonogram) and EBU (the European Broadcasting Union)." See Stewart, supra note 1 at 224.

" Wilhelm Nordemann et al., ln~ernationdCopyright and Neighbouring Righrsr Commentary with spvcial emphasis on fhe European Communig (VCH Verlagsgeseikchafl, 1990) at 340. authors' societies and vigorously defended by sorne states.""

B. The Basic Principles of the Rome Convention

( 1) The Safeguard Clause for Copyright

According to the Rome Convention, article I, the Contracthg States shoulci not grant neighbouring rights in ways which affect the protection of copyright granted to the authors of artistic or literary works. The arguments on this subject were based on two presumptions: first, it was said that "if performers and phonogram producers were to be given rights to allow or forbid the use of their performances or their phonograms they could use them to forbid the use and thereby deprive the authors of his royalty for that use."'" Second, it was suggested that offering rights to performers and producers of phonograms "would adversely affect the economic rights of authors, as the sarne user would be paying both authors and performen and/or producers of phonograms and as there is only one cake to be divided, the share of the author would be diminished" (so- called "cake theory").17 The concems that authon' economic rights would be adversely aF'cted have not proven me. Ln 1979, the Report of the lntergovernrnental Cornmittee stated:

'' Stewart, supra note 1 at 22 1

l6 Ibzd. at 226.

l7 Ibid "There is no evidence to support the proposition that authors' revenue has decreased as a result of neighbouring rights. It has been argued funher that the revenue of authors and composers would have increased even more than it has done if there had been no secondary used rights in phonograms. This proposition has never bern proved and is. by its nature, impossible to disprove."In

(2) National Treatment

National treatment is another fundamental princi pie of the Rome Convention.

The meaninç of the terrn "national treatment" is set forth in article 2 as: "the treatrnent accorded by the domestic law of the Contracting Statr in which protection is claimed."'"

Generally speaking. any contracting state shall gant the minimum rights provided in the

Convention to the nationals of other Contracting States. However, this rule should be subjected to the limitations set fonh in article 16 under which a country can restrict the

Article 13 rights offered to record producers of another Contractinç States if its own nationals are not provided the equivalent rights in that state?'

With regard to performers' rights, article 4 provides that a Contracting State mut gant protection to a perfonner in any of the following conditions: (i) when his performance takes place in another Contracting State: (ii) when his performance is

IDlbid ; quoting Report ofthe Intergovernmenial Cornmittee of the Rome Corn~en~iort1979

l9 The Rome Convention 196 1, art. 2 para. 1.

The Rome Convention 196 1, art. 2 para. 2 and art. 16.

54 incorporated in a phonogram protsctcd undrr article 5;'' (iii) whrn his performance, being fixed in a phonogram, is carried by a broadcast protected under article 6."

(3) Performers' Rights Provisions

De finition of "~erformers"

The Berne Convention does not explicitly state the definition of "author".

Whereas, the Rome Convention defines pertormers as: "actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in, or otherwise perform literary and anistic works."" The term "artistic and litenry work" which has the same meaning as in the Berne Convention should be considrred to include musical, dramatic and dramatico-musical works. However, it is immaterial whether the work perîormed should be still under copyright protection." "The goup of artists explicitly mentioned in the definition of art. 3, para. 2 are charactrrized by their acting in a manner which may be directly perceived by an observer either acoustically, optically, or optico-acoustically.

The field of interpreters of works to be taken into consideration is by no means

'' (a) the producer of the phonogram is a national of another Contracting State; (b) the first fixation of the sound was made in another Contracting State; (c) the phonogram was first published in another Contracting State. See the Rome Convention 196 1, art. 5, para. 1.

" (a) the headquarters of the broadcasting organiration is situated in another Contracting State; (b) the broadcast was transmitted from a transmitter situated in another Contracting State. See the Rome Convention 196 1, art. 6, para. 1.

The Rome Convention 196 1, art 2 para. 1 (a).

'' Nordemann et ai.. supra note 14 at 355. exhausted by the list."" Accordingly, the conductor of an orchestra who participates in a performance is regarded as a "performer", althouçh he does not present in front of the audiences during an opera performance." Moreover, a perfomer's presentation nerd not bt: made in an "artistic" way. However, under article 9 of the Convention each

Contracting State are allowed to extend protection to performers who do not perfon literary or anistic works. Under any lrgal systern for the protection of perforrners' rights, it may be difticult to discern between artistic contributions that do or do not have protection. For example. a performaacr in a sports game and a musical performance, each seem to involve substantial skills and creativity. One may query then why athletes do not have protection for their pcrforinanccs whereas musical perfomers do have protection."

Minimum Protection for Performers

Paragaph 1 of article 7 States that the protection to be provided for performers s hall include the "possibility" of preventing:

(a) the unauthorized broadcasting and the communication to the public of their

Ibid. See also Record of the Diplornatic Cortference mi the Internarionuf Protection of the Pt@ormers, Prochcers of Phonograms and Brdcastirig 0rgartizarion.s Rome, 10-26 Ocrober, 196 1, by LO, LrNESCO, BiRPI 1968, ar 39-40.

" Copyright Law Review Cornmirtee Discussion Paper: Perjionners Prorecrion (Audralia, 1985) at 1 4. See also Commonwealth of Austraiii Copyright LmRevrtnv Cornmittee Report on Peflonners ' Rights (Canberra: Australian Governent Publishing Service, 1987) at 46. performances cxcrpt whcre the performance used in the broadcasting or the public communication is itself already a broadcast performance or is made from a fixation;

(b)the fixation, without their consent, of their live performances;

(c) the reproduction, without their consent, of a fixation of their performances:

(i) if the tirst fixation itself was made without their consent;

(ii) if the reproduction is made for purposes dirterent 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 subsequent use is made for different purpose mentionrd in those provisions.

Article 7 dors not afford performers an absolute rîght in their performances. lnstead, the Contractinç States are merely required to provide legal means for performers to prevent the unauthorized exploitation of their performance^.'^ This has been claimed as a way for the Convention to offer a compromise and to cowiter resistance from authors and broadcasting organizations.'' On the other hand, Great Britain sided against absolute performers' rights. When the Rome Convention was formally adopted, the

British Statute provided only minimal penal protection against those who made recordings from performen' musical and ciramatic performances. These political reasons

For example, performers' interests may be secured through the law ofemployment, personality. or unfair cornpetition.

Nordernann et al., mpra note 14 at 383-384.

57 eventually resulted in a lower level of protection for performers, as compared to the rights of phonograrn producers and broadcasting organi~ations.'~

Under the Rome Convention, performers have no reproduction right in their fixed performance, other than where the performance is fixed without their consent or the reproduction is made for purposes other than those for which the perfomer gave his consent." Moreover, article 19 provides that "once a performer has consented to the incorporation of his performance in a visual or audio-visual fixation" he has no further reproduction right in that performance. This was said to be a result of the strong

"resistance of the broadcasters who arçued that as most broadcasts are made from a fixation it would be putting too much of a burden on them to have to get permission of the perfomer every time if they had made the fixation thernsel~es."~'

Secondaw uses of ~honomrims

Undrr article 12 of the Convention. the right to receive remuneration is çranted to performers and producers of phonograms for the direct uses of their commercial phonograms for broadcasting or for any communication to the public. This is pnerally known as the charge for "secondary use" of phono gram^.'^ Several features of the

/bld

" The Rome Convention 196 1. art. 7 ( 1) (c)and art. 19.

JZ Stewart, mpru note 1 at 233.

" Ibtd at 238. Article 12 rights require further explication:

(a) the operation of article 12 is lirnited in two important ways. First, the payment is restricted to the use of phonograms published for commercial purposes, except films. A duty to pay remuneration aises where a broadcasting organization subsequently records and ultimately broadcasts a phonogram, which had been previously published for commercial purposes:" Secondly, article 16 provides that a Contracting State may declare that it will not apply the provisions of article 12 in respect of phonograrns produced by a producer who is not a national of a Contracting State.

(b) The rights covrr the use of a phonogram "for broadcasting or for any communication to the public."" This would include any fom of public performance using phonograrns in places where the public is present. It would also include broadcasting uses by television or radio broadcasters. But it does not include the situations of cablecasting or rebroadcasting (and public communication of the broadcast) to any public locations.

(c) The Article 17 right is a right to receive "equitable remuneration". In the situation where "secondary use'' of a phonogram occurs, and the rights owner does not receive reimbursement, the ri~htsorner's only legal recourse is to seek payment in full for infringement.16 However, the Article 12 rights should not be considered as a maximum protection by the Convention. Any Contractinç State is allowed to surpass the standard

U Nordemann et al.. supra note 14 at 398.

3' See the Rome Convention 1961. art. 12.

36 Turton & Rïj, supra note 10 at 26. under article 12. In the United Kingdom, for example, phonogram producers are offered an exclusive nght over the uses of their works for public performance or broadcasting."

The details related to the administration of the Article 12 rights will be discussed in chapter seven.

LI. The Agreement on Trade-Related Aspects of Intellectual Property (TRIPS)

A. Introduction

In recent years, the growth of a open world market has made inrellectual property protection into a trade issue, where the riçht owners of intellectual products seek protection for their interests against un fair exploitations intrmationally." The constant drvelopment of international trade urges correspondence between national intellectual property systerns. It may be argued that the nred for efficient international trade wll become a central justification for the harmonization of the intellectual propeq laws across the world.

During the 1980s, intellectual property grew in importance dong with the increasinç incidencle of illegal duplication (or piracy) of phon~grarns.'~Several

37 The C'opyighr, Drsigr~sa~idPatctlr.srlcf1988 (L'K.) [hereinafter the CDPA 19881 . S. 1 (b), S. 19 and S. 20.

'* Bankole Sodi po, Piracy and C'ounrrt$etting - G.4 TT TRIPS and Devrloprng C'ortrrtrres (London: kluwer Law International, 1997) at 63-64.

" "Piracy of phonograrn" means "the unauthorized duplication ofan original phonogram or videogram distnbuted to the public with labels, artwork, trade marks and packaging diKerent fiom, aithough otten similar to, those of the original legitimate phonogram or videogam." Gillian Davies & Michele E. Hung 4Mwicurrd Privale Copying (Agincourt, Ontario: Carswell Company, 1993) at 4. developrd countries were dissatisficd with the state of protection for intrllrctual property as provided by the WIPO-administered'"' conventions. They were also disappointed with

WIPO's inefficiency to en force intellectual property rights. In 1986, the United States and Japan led several other countrirs and initiated multilateral trade talks under the

Uruguay Round of the General Agreement on Tariffs and Trade (GATT).'" Their intention was to "deal wi th the scourge of worldwide piracy and the trade losses suffered by al1 trading nations from the failure to protect intellectual pr~perty.'~'These efforts resulted in an agreement. signed on Apd 15, 1994, entitled Tradt-Related Aspects of

Inteilectual Property (hereinafter the TRlPS ~geement)."

The TRiPS Agreement furthers international protection by focussing on the harmonization of intellectual property laws between the Anglo-Amencan systems and

European countries who share similar moral economic understandings. It also aims at the negotiations between developed countries (the sellers or exporters of the intellectual products) and the world's developing counhies (the consumers of such product~)."~

* WIPO is the abbreviation of the World IntelIectual Property Organization.

'' Daniel Gervais, irhe TRIPS Agreement: DrafiingffisforyandAmfysis(London: Sweet & Maxwell, 19%) at 10.

Eric H. Smith, "WorldwideCopyright Protection under the TRIPS Agreement" (19%) 29 Vanderbilt J of Transnational L. 559 at 560.

'3 Marshall A. Leder, Infernariorrd Treaties on lnrellecrual Property, 2d ed. (Washington,D.C. : The Bureau of National Affâirs, 1997) at 12.

14 See Marc A. Hamilton "The TRIPS Agreement: Imperialistic, Outdated, and Overprotective"( 1996) 29 Vanderbilt J. of Transnational L. 6 13 at 6 15. However, the purpose of TRIPS is not to replace the curent international treaties but to enhance thrrn, and to fil1 the gaps wherr necessary.

B. Pert'orrners' Rights Provisions

With regard to the protection for performers, the TRIPS Agreement provides a minimum standard under article 14 (1). In summary, perfonners are granted the power to prevent the following acts when undertaken without their authorization.:

(i) the fixation of their unfixed performances:

(ii) the reproduction of such fixation; and

(iii) the broadcastinç bv wirelrss means and the communication to the public of their live performance.

The tenn "phonogram" is not explicitly defined in the TNPS Agreement. To be understood çenerally, "phonogram" should mean a fixation of sound. But it is unclear whether "phonogram" under the TRIPS Agreement includes a sound in the form of a fixation incorporated in a cinematographic or other audio-visual work.'"

The TRIPS obligations flow from the Rome Convention article 7. The protection

'' it has been argued that the word "phonogram" under the ïRiPS Agreement should indicate an aural sound recording which does not indude any audio-visual work. See Gregory S. Donat, "Fixing Fixation: A Copyright with Teeth for Improvisationai Performers" (1997) 97 Colum L. Rev. 1363 at 1393. for prformers under the TRIPS Agreement, howvrver, is narrowerJ6 than the parallrl

provisions in the Rome Convention.

First, the agreement does not deal with the secondary uses of an authorizrd

tixation as do the performers' rights provisions of the Rome convention.'" Under the

TRIPS Açreement, perfonners are granted rights to prevent the reproduction of their

fixed prformance in phonogram only where the fixation was made without their consent. It does not include the situations stated in article 7 ( 1) (c) (ii), (iii) of the Rome

Convention. Accordingly, if a performer had permitted the fixation of his performance on a phonogam, the perfonner no longer has the right to prevent any reproduction of that phonogam even if "the reproduction is made for purposes different from those for which the perfomers gave their consent.'"'

Secondly, the Agreement does not provide a provision of "remuneration" payable by users to performers and producers of phonograms for the uses of public performance and broadcasting. Furthemore, the rights granted to performers, producers and broadcasters under TRIPS may provide for "conditions, limitations, exceptions and

However, under the TRIPS Agreement performers' rights mua lm a minimum term of tXy years, which is longer than the minimum twenty-year term of protection under the Rome Convention.

"J. H. Reichman, "Universal Minimum Standards of Intellecnial Property Protection under the TRPS Cornponent of the WTO Agreement" (1995) 29 ht'l Lawyer 345 at 368-370.

'' See art. 7 (1) (c) (ii) of the Rome Convention. The Rome Convention, art. 7 ( 1) (c) (iii) provides that a performer shd be granted the power to prevent the reproduction of his or her performance in phonogram, "if the original fixation was made in accordance with article 15 [ephemeral recordings and certain fair dealings and uses], and the reproduction is made for purposes dEerent fiom those refmed to in those provisions." reser~ations"~'~recognized by the Rome Convention. This allows the member nations to drny a public performance rights to performers and producers of sound recordings.

Countries who employ the system with such nghts tend to adopt reciprocity as opposed to national treatment for foreign perfonners and phonogram producers."'

Practically, few rnultilateral ireaties provide enforcement standards or workablr sanctions for failures to comply with treaty obligations. TRiPS includes requirement of minimum enforcement standards for protecting intellectual property right~.~'Also, Part

V of the Agreement provides that member countnes may resolve enforcement disputes through the dispute settlement contrivanm of wTO."

III. The WIPO Performances and Phonograms Treaty

A. Introduction

The World Intellechial Property Organization (WLPO),created with the 1967

Stockholm Convention, is one of the rnost important organizations that adrninister the international treaties of intellectual property rights. The WIPO's tasks also includes the worldwide promotion of intellectual property rights. For copyright aspects of new

" The TRIPS Agreement, art. 14 (6). See also the Rome Convention, art. 16.

Reichman, supra note 47 at 370.

'' The TRLPS Agreement, art. 42.

'' The TRIPS Agreement. art. 61. Saalso WTO Unakrstamhng on Rules anci Procecfures Goveming the Sertlement of Dispures (1994). art. 2, art. 4, art. 5, art. 6, art. 16 para. 4, art. 1 7 para 1 3. technolog and related issues involving developing countries, the WIPO's Executive

Committre of the Berne Convention has forçed a cooperative relationship with

WESCO'S"Intergovemrnental Copyright Cornmittee. These cornmittees also cooperate with the International Labour Office for the administration of the Rome Convention.

Sincr the late 1980s. WlPO has been preparing a protocol to the Berne Convention to senle the issues of copyright arising from new technologies such as electronic databases.

Finally, on December 20, 1996, WiPO adopted two new treaties related to copyright and rights in performances: the WIPO Copyright Treaty and the WIPO Performances and

Phonograms Treaty ( hereinafirr the WIPO Treaty )."

The current Contracting States of the WIPO Treay are either members of the

WIPO or members of the European Comrnunity. However, once the Treaty enters into force, ot hcr intergovemmental organizations may apply to become party to the Treaty."

As of July 15, 1998, Contracting States of the WlPO Treaty include 50 signatories and two ratification^.'^ According to article 29, the Treaty shall "enter into force three months after 30 instniments of ratification or accession by States have been deposited with the Director General of WIPO."

" UNESCO is the abbreviation for the United Nations Educational Scientific and Cult~ralOrganitation who play an important roIe in administering the Universai Copyright Convention (UCC).

LeaîTer, supra note 43 at 10-12.

" See online: the World Inteiiectual Property Organization Homepage (date assessed: 16 October 1998). B. Perfomers' Rights Provisions

The WIPO Performances and Phonograms Treaty should not be viewed as a treaty for replacement of the 196 1 Rome Convention. According to article 1 ( 1 ), the tenns of this Treaty shall not derogate from existing obligations that Contracting States may have under the Rome Convention.

As its name implies, the Treaty is designed to provide protections for performers and producers of phonograms. Under Article 2 of the WIPO Treaty, "perfomers" are defined as "acton. singers, musicians, dancers, and other penons who act, sing, deliver, declaim, play in, interpret, or othewise perform literary or artistic works or expressions of folklore." The word "phonograms" means "the fixation of the sounds of a performance or of other sounds, or of a representation of sounds other tban in the form of a fixation incorporated in a cinematographic or other audiovisual work."

It should be mentioned that the Treaty expands the protection for performers to include their folklore performances which are not in the mandate of the Rome

Convention. Such expansion "reflects a more global view in which performances are essential to the cultural fabric of the many natics who will sign the ~reaty.""

The protection provided for performers under the WUTreaty can be divided into two categories of rights: economic rights and moral rights. The term of protection to

" Rebecca F.Martin, "The WIPO Performances and Phonograrns Treaty: Wd1 the U.S. Whistle a New Tune?" ( 1 997) 44 J. Copyright Soc' y U.S.A 157 at 16 1. be granted to performers under this Treaty shall last a minimum period of 50 years which is longer than the minimum 20 years protection provided by the Rome Con~ention.~'

Moral rights

Under article 5, performen are afForded moral rights protection, which are independent of their economic rights, over their live aura1 performances or performances fixed in phonograrns. These rights shall exist for at least until the expiry of the economic rights. However, Contracting States, at the moment they access to the Treaty. may provide that some of these rights will, after the drath of the performer, cease to br rnaintained. Such moral rights include two aspects:

(a) "the right to claim to be identified as the perfonner of his or her performances, except where omission is dictated by the manner of the use of the performance."

(b) "the right to objrct to any distortion, mutilation, or other modification of his or her performances that would be prejudicial to his or her reputation." (art. 5 ( 1 ))

Economic rights

In respect of economic rights, performers shouid be offered the exclusive rights of authorizing:

" The WIPO Treaty, art 17. (a) the broadcasting and communications'' to the public of their unfixed performances except where the performance is already a broadcast performance. (article 6) Under aniclç 7 of the Rome Convention, prfonners' protection does not covçr the broadcasting of perforrners' untixed performances by wire. The WIPO Treaty seems intent to fil1 this gap by providing a riçht of transmission by both "communication to the public" (wire) and "broadcasting" (~ireless).~

(b) the fixation of their unfixed performances. (article 6)

(c) the direct or indirect reproductionb'of their performances fixed in phonograms, in any manner or forrn. (article 7)

(d) distnbutinç (making available to the public) the original and copies of their performances fixed in phonogams through sale or other transfer of ownership, subject to limitations after the first sale of the phonogram. (article 8)

(e) the commercial rental to the public of the original and copies of their performances fixed in phonograms, rven after distribution of them by, or pursuant to, authorization by the perfonner. (article 9)

-The term "Communication to the public" means the transmission to the public by any medium, other than by broadcasting, of sounds of a performance or the representations of sounds fixed in a phonogram. the WOTreaty, art. 2.

Martin, supra note 57 at 172.

Here, "reproduction" is defined as "the making of a copy or copies of a fixation", which includes a copy made in a digital form. Under the Rome Convention, b'fixation" is not clearly defined. Whether digital fixation, different fiom the recordhg of "reai" sound, is covered under the Rome Convention is not settled. Ibid. at n. 85. (0the "making available to the p~blic'"~of thrir fixed performances by wire or wireless

means, in such a way that the public may access them from a place and at a time

individually chosen by them. (article 10) This right covers, in particular, on-demand,

interactive analog or digital transmissions of fixed performances including the one made available through the Internet.

With regard to the right of remuneration for broadcasting and communication to the public, article 15 sets forth several common provisions that affect both performers and producers of phonograms. When a la~vfullyreproduced commercial sound recording is broadcast or otherwise comm unicated to the public, the performer and the producer are entitled to a single equitable remuneration. Unlike the Rome Convention under which similar rights6' are limited to direct uses of phonograms for broadcasting, the WIPO

Treaty covers both direct and indirect uses?

The geatest setback to performers is that, under the Treaty, the remuneration for public performance is subject to a reservation, similar to that of their counterpart under the Rome Conventi~n.~'Contracting States may still corn pletely reserve the public

The term "making available to the public" is not explained in the treaty. It was defined by the treaty's p redecessor as "making available of fixed performances by transmission". See Diplumatic Conference on cerfahCopyright and Neighbouring Rights Questiorrr, Basic Propusal for the Substantive Provisions of the Treatyfor the Prolection of the R~ghtsof Peqormers andprodirctrrs of Phonograms io be Comidered &ythe diplornatic Conference CWCISn.8.04. See dso Martin, supra note 57 at n. 105.

The Article 12 rights under the Rome Convention.

61 Martin, supra note 57 at 1 80.

The WOTreary, art. 15 (c). performance rights. The United States wi 1 l most likely benefit from such reservation clauses. Under current U.S. law, only digital performances are subject to the public performance right. The reservation enablrs the U.S. to join the Treaty without enacting new law to gant an exclusive analog performance right?

Martin, supra note 57 at 18 1. Chapter 4

Performers' Rights Protection in Canada, The United States of America,

and the United Kingdom

1. Performers' Riçhts in Canada

A. Performers' Rights Before 1994

Canada is in the process of a major refonn of its copyright legislation. In the past trn years, several amendments of the C.'opyrrght Acr have been undertaken. These amendments were largely based on the recomrnendations of the 1985 White Paper, "il

C'hurttrrer O/' Htghrs fir ~'reuturs".' The guiding principle for the (-'hurter's recommendations was descnbed as: '70 giving more emphasis and reward to creative activity." One of the significant revisions was made in 1988 when Parliament passed

Bill C-60. While the 1988 Amendment prirnady enhanced protection for copyright owners against unauthorized duplication of works and phonograms, the issue of neighbouring rights protection remained too contentious for change. For instance, under the 1971 Copyrtghî Aa the copyright in sound recording works was restricted to a reproduction righr. It had been argued that, if most records published in Canada were of foreign origin, and if sound recording rights include the right to charge for public

' Report of lhe Sub-Cornrnirtee on the Rmstorx of Copyright, Standing Commit~eean Cornmunicatiuns cutdCulmre,A Charter of Righfsfor Creamrs (Ottawa: Ministry of Supply and Service, Canada, October 1985). [hereinafler the Charrer] performance uses, then substantial royalties would soon flow out of the countiy.'

Although this issue was reconsiderrd in 1985.' the reinstatemrnt of the public performance right for sound recordings did not occur until the 1997 Amendmtnt.

Canada only recently joined the Rome Convention (1961 ) in lune 1998.

Perfomers were not protected under Cup~vrlghr Acr until the amendment in 1994.

However, "provincial laws provided some protection through doctrines of passing off, pn'vacy, misappropriation of personality and (in Quebec) unfair competition, akin to U.S. state law and doctrines relating to publicity rights and unfair competition.'" Although the 1985 ('lwrrr recommended that performcrs' interest should be protected under

( hpyright Act, performers' rights were never taken seriously until 1994 when Canada passrd the Wurld Dude Organeution Impiemenrufion Act.

B. The Copyright Act Amendment in 1994

In 1993, Canada, the United States and Mexico signed the North Arnerican Free

Trade Agreement (hereinafier NAFTA). The Copyright Act was accordingly amended, effective January 1, 1994, to implement NAFTA whch required Canada to accommodate the standard of the Berne Convention (at the 1971 Park level). NAFTA, however, did

Simon Frith, Music and Copyright (Edinburgh: Edinburgh University Press, 1993) at 44.

' The Charter suggested that sound recordings be a6orded a public performance right. However. such public performance! right should be granted on a reciprocal basis. See the Charter, supra note 1 at 49ff.

David Vaver. "Tnpping Through TRIPS: Canada and Copyright" (1994) 22 The Canadian Law Newsletter 53 at 59 n. 17. not accommodate the protection of perforrners' rights.

After NAFTA, the Agreement on Trade-Rrlated Aspects of Intellectual Property

Rights, including Trade in Counterfeit Goods (TRIPS)' brought another major change to

Canada's copyright statute. To accommodate the provisions of the TRIPS Agreement,

Canada amended its C.'upyr;ghr Acr, effective Januaiy 1, 1996, by enacting the WTO

Agreement lmplernenrution Acf of 1994. In respect of performers protection, the

amendment of the Copyrigh Act (hereafter "the 1994 Act") adopted a regime of

performee rights based on the minimum protection for performers set fonh in article 14

( 1 ) of the TRIPS Agreement.

Under the 1994 Act, 'a performer's performance" was defined as: a live

performance of a pre-existing artistic, musical or literary work whether or not the work's

rem of copyright had expired; or a live improvisation, whether or not the improvisation

work was based on a pre-existing work.'

Section 14.0 1 provided that performers had the rights to prevent the unauthorized

fixation of their live performance, the reproduction of such fixation, and the

unauthorized communication to the public by telecommunication of their live performance. Also, a performer's right in a performance should be deemed to be infnnged by any person who sells or imports for sale any fixation of the performance, or

' The TRIPS Agreement is put of the 1994 Agreement to estabiish a World Trade Organization WO).

The 1994 Act, s. 2. an- reproduction of such a fixation, that to the knowledge of that person infringrs the

performer's ripht.'

It should be noted that, according to section 14.0 1 (1) (b), a performer had the

sole right over any reproduction of the fixation of his performance "where the fixation

was made without the performer's consent." In other words, if the fixation was made

with the performer's permission, the performer would have no nght or interest over the

further reproduction of that fixation.

C. The ( 'opyrighr Act Amendment in 1997

On April 25, 1997, the Ac[ fo Amend the Cup-vrtght Act ("the 1997 Act") was

enacted as S.C. 1997, c. 24 . The Amendment includes the provisions applicable to both

performers and sound recording makers,' effective on September 1, 1997, under which

they are entitled to receive an "equitable remuneration" (royalty payments) from those

who use their sound recordings for public performance or broadcast."

In fact, the right to receive royalty payments for sound recordings had been recornmended in a report, Copyright Law i.7 Canada: Proposuls for a Revkion of the

' The 1994 Act, S. 28.02 (3).

'"Sound recording maker" means the person by whom the arrangements necessary for the first fixation of the sounds are undertaken. See section 1. (2) of the 1997 Act.

A person who perf'orms a "published sound recording in public or communicates it to the public by telecommunication, except for any retransmission, is liable to pay royalties to the performer and maker of the sound recording. Here, the word "published" means making copies available to the public. See The 1997 Act, S. 19. (1). (2). Luw, relcased in 1977 by the Minister of Consumer and Corporate Affairs. l" The latter

recommendation generated Ictngthy debate between different groups of interests. The

Canadian Rrcording Industry Association (CRIA), which represented various recording companies, questioned "what the inherent difference is between a motion picture and a sound recordinç, which should permit the creator of a motion picture to control and seek remuneration for the public performances of his work while the creator of sound recording is singled out by the Act as being debarred from doing so."" The Canadian

Association of Broadcasters held the opposite view. The Association argued that record producers had already brnefited by the increased sales resulting from the rxposure of their records on radio. Even if the perforrning rights had been created, the revenue

"would go largely to the already successful recordings on the bais of the frequcncy of broadcast."" On the other hand, composers, wrîters and publishers resisted against the recognition of the latter nghts. They argued that the "record companies, having obtained copyright assignments through their publishing arms, already share in performing rights for radio, television and al1 other public performances administered by performing rights so~ieties."'~

'O Federal Cultural Poky Review Commiftee,Summmy o/BnefiandHearings (Information Se~ces, Department of Communications, Goverment of Canada, 1982) at 189.

' ' Ibid.

" Ibid.

l3 Ibid. The performers' share in the public performing rights of sound recordings was

also supported by the CRIA. Composers' and witers' goups, not surprisingly, disageed

with the CRIA'S position. They disagreed for two prima- reasons:

First, to gant performance rights to perfonnen who subsequently used authors'

orighal works would unfairly reduce the financial value of authon' performing rights.

Secondly, performers' incornes were chiefly from the recording contracts they had

negotiated with record companies. Upon the recognition of these performing rights,

however, record corn panies would reap the performer ' s royalties through the recording

contract since perfomers were usually in weaker bargaining positions than record

companies. Thus, a public perfoming right for performers can be said to lack effective

meaning in practice.'"

The conflicts arnong authors, record companies, broadcasters and performers

have been dichotomous to such an extent that the legislation of performing rights in

sound recordings has been stalled for almost two decades.

The new legislation of the 1997 Copyright Act has brought Canada's copyright

law in cornpliance with the obligation of the Rome Convention (196 1). "The idea is not only to make Canadian users pay for these activities, but to allow Canadian performers and record companies to have access to similar rights and payments when their records were played in Europe and the other countrirs belonging to the Rome Convention.""

The further effects of these provisions were descnbed by Professor David Vaver:

"The benefits go not only to Canadian performers and Canadian-bascd record companies, but also to those based in Rome member statrs. Records made by Canadian subsidiaries of US companirs and first released simultaneously in both countries should also qualify. US performers and US-based record companies do not brnefi t directly. since the US does not belong to the Rome Convention and does not itself provide comparable benefits. Canada can include the US or any other non- Rome member that grants Canadian companies and performers reciprocal treatrnent; this technicality has not stopped the US from threatening retaliation for this perceived slight to its entertainment ind~stry."'~

Sevrral issues in relation to performers' nghts undor the 1997 Act should br

noted:

(a) one of the significant changes made by the Amendment is to Ieave out film

soundtracks from sound recording works. l7 Accordingly, if the performers i nit iall y

consented to the performance being incorporated in the film, movie studios do not have

to allocate any royalties to performers whose performances occur in film soundtracks.

(b) performers' protection under the 1997 Act is recognized as a "copyright" rather than

l5 David Vaver, "Seeing Through C-32". in "Copyright Refonn: The Package, the Policy and the Politics" insight/GIobe & Mail Conference, May 30-3 1, 1 996.At 1 (a).

l6David Vaver, ''The Copyright Amendment of 1997: An ûve~ew"in Howard P. Knopf. ed.. The Nrw Copyright Act - Managtng the Impacr (Toronto: Insight Press, 1997) at 40 [footnote ornitted].

l7Accordhg to the 1997 Act, S. 1. (2). the meaning of the %und recording" under the 1997 Act is dehed as "a record@, in any material fonn, consisting exclusively of sourd, whether or not of a performance ofa work, but excludes any soundtrack of a cinematographic work bat is an integral part of the cinematographic work." a "neighbouring right". This arrangement seems intrnded to avoid constituiional disputes. "The (un(diun Onsrrrur~onprovidrs that the federal govemmrnt has exclusive jurisdiction over 'copyright'. . . . [There remains] doubts as to whrther the federal junsdiction covers 'neighbouring rights'."" However, the Act distinguishes works created by tradi tional authors and by performers' performances; the Act does not identiQ the latter as "works".

(c) Under the performers' rights provision of the Amendment, even if performers authorize a fixation of their performances, they are still entitled the right to prevent the reproduction of that fixation, if the reproduction bting reproduced was made for a purpose other than that for which the perfoner's authorization was gi~en.'~Where the performer authorizes the ernbodiment of the perforrner's performance in a cinematographic work, however, the performer rnay no longer exercise, in relation to his performance, the reproduction rights mentioned above," unless there exists an agreement governing the remuneration of the performer providing othenvi~e.~'

(d) Under section 14.1 (l), moral right is granted to only the "author" of a copyright work. The rneaning of "author" does not include one who merely performs a pre-existing work. The moral right provisions therefore cannot be' applied to performers.

" Claude Brunet, "Canada Revises Its Copyright Act" (January 1997) 66 Copyright World 43 at 43.

l9 The 1997 Act, S. 1 S. (1) (b).

" The 1997 Act, S. 17. (1).

" The 1997 Act, S. 17. (2). Neverthelrss, pcrformers' interests analogous to suc h rights have practical l y been

protected by mrans of the general concepts of common law or by contract."

(r)The 1997 Act also introducrs a provision of private copying of sound recordings,

which provides a lew on the importation and manufacture of blank audio recording

media to compensate authors, performers and producers of sound recordings for their

revenues lost to private copying. it should be emphasized that the blank tape levy, as

well as the remuneration of the public performance, are not perrnitted to be exercised by

individual beneticiancs. Instead, in the case of public performance of a musical sound

recording, the remuneration is to be collected by collective societies." The blank tape

levy is required to be collectively administered by a collective society designated by the

Copyright ~oard.'" More details of the administration of these rights will be introduced

later in chapter seven.

II. Performen' Rights in the United States of America

A. Performers' Rights Protection before 1976

The United States did not join the Rome Convention of 1961, which mandated the protection of "neighbouring nghts" including performers' rights. Although performers play very important roles in the success of U.S. entertainment industq, the

" David Vaver, "Authors' Moral Rights in Canada" (1 983) 14 1.I.C. 329 at 330-340.

The 1997 Act, S. 19. (2) (a).

The 1997 Act, S. 83. (8). issue of performers' rights has not received much attention over the past few drcades.

Federal protection for performers did not occur until the Amendment of (lopyr~ghtkt

in 1976. However, protection for perfomers was afforded by courts under several

common law doctrines. includi ng common law copyright. invasion of privacy and unfair competition."

The leading case involving the protection for performers was Woring v. WDAS

Rroudctisimng Starron Inc2"n considering the question of whether a musical performance constitutes an property right which can be enforced by the perfonner, the

Pennsylvania Supreme Court held that:

"A musical composition in itself is an incomplete work; the writtrn page rvidences only one of the creative acü which are necessary for its cnjoyment; it is the perfomer who must consummate the work by transforming it into sound. If, in so doing, he contributes by his i nterpretation something of novel intellectual or artistic value, he has undoubtedly participated in the creation of a product in which he is entitled to a right of property, which in no way overlaps or duplicates that of the author in the musical composition."

During last few decades, many States in the U.S. provided palstatutes to protect recorded performances against unauthorized reproduction. The illegal duplication of sound recordings (phonogram "piracy"), however, became a countrywde issue. It appared that performen (as well record producers and music publishen) needed a

------

Waririg v. WDAS Broadcast~ngStation hc. 3 07 Pa 43 3, 194 At1 63 1 ( 1 937).

" Ibtd. stronger federal protection agaiainst phonogram "piracy"." Numerous attrrnpts were thrn made to arnend the U.S. ( 'opyrr,& AGI. although no success arose until the passage of the

Sorrntl Necordrnx Acr of 1 97 1 .

The 197 1 Act made sound recordings fined after February 15, 1972 copyrightable and protected them açainst unauthorized duplication. Under the Act, however, the issue regarding performers' live performances still had not been solved. The difficulty of granting federal protection over performers' live performances seemed related to the constitutional issue of "fixation requircment". According to article 1, section 8 of the

U. S. ( 'onsrirutron, Congess hes the authority to gant authors the excl usive right to their

"writings", which mean works in tangible form. While Congress has defined the word

"witings" broadly to include sound recordings, granting performers the rights to prevent their untïxed live performances still have to face the fundamental constitutional problern.

B. Perfonners' Protection Under Copyrght Acr 1976 ( 17 U.S.C.)

A few years later, in 1976, the fourth pneral revision of the Co~righrAcr was enacted as Title 17 of the United States Code, which came into force on 1 January 1978.

With respect to sound recording rights, the 1976 Act basically maintained the desunder the 197 1 Act. Under section 104 of the 1976 Act, sound recordings were considered as the copyrightable "works of authonhip". The Acî, however, did not specifi who is the

" S. M. Stewart, Inremrional Copyright and Neighbuuring Righrs, 2d ed. (London: Butterwonh, 1989) at 660. author of sound recording works. The U.S. Congress, in its legislative report on the 1976

Act, expressly supported authorship for either or both the performar and record producer.

The matter should be settled t hrovgh negotiation between the parties.''

The main purpose of the copyright revision in 1976 was to provide individual authors geater protection against those who illegally exploit their works. Since performers could be recognized as "authors" of a sound recording under the 1976 Act, the general improvement in protecting authon' rights might as well benefit the performers."

With respect to the scope of rights in sound recordings, section 1 14 of the 1976

Act stated explicitly that the exclusive rights of a copyright orner in a sound recording

''do not include any right of performance under section 106 (4)" Radio broadcasters who use sound recordings for broadcast therefore only have to pay royalties to the public performing right owners of the underlying musical work. The restriction of the rights was said to be attributed to the strong lobbying power of broadcasting ind~stiy.'~

( 1 ) Unfixed Performances

According to section 102 of the 1976 Act, copyright only protected "original

'' Julian Turion & Cees van Rij, eds., Neighbouring Righfs: Artisls, Prochcers and neir Collective Socteries - reportspresented ut the meeting of the Intemational Association of &fer fainment Luwyers, Mi&m 1990, Cannes (Apeldoorn, Netherlands: MAKLU Publishers, 1990) at 1%.

l9 Stewart, supra note 27 at 664. works of authorship tixrd in any tangible medium of expression." Thus, perfomers'

unrecorded livc performances did not faIl under the 1976 Act. However, section 30 1. (b)

of the 1976 Act maintained the rights under common law or state statutes in works "not

fixed in a tangible medium of expression." The Legislatrvr /&port on the 1976 Act

described unfixed perfomances as examples of works which can be protected by state

laws.' '

(2)Sound Rrcordings Fixed Before February 15, 1972

Sound recordings tixed before February 15, 1972 fall undrr cornrnon law or state

statutes. However, section 301 stipulates that the common Iaw protection for sound

recordings will end when the federal pre-emption of rights in these panicular recording cornes into effect on 15 February 2047."

C. The Copyright Act Amendment in 1994

Although the curent U.S. copyright law recognizes performers' performances in sound recordings as the works of "authon", the rights do not extend to the nrotection over performers' live performances because they failed to meet the "fixation"

'' US House Report No 94-1476 September 1976. See dso ibid. at 672.

32 17 U.S.C., S. 301 (c). See Tunon & Rij, supra note 28 at 122-123-

83 requirernent in copyright law." Unlrss the fixation requirement under copyright law is

rrlased, federal protection over unfixed performances will have the problem of fitting

wi thin the cur-rent copyright scheme.

On December 8, 1994, the United States enacted the Umguuy Round Agrerrnenis

Acrs (URA Act) to irnplement the Uruguay Round of GATT, including TRIPS. With

respect to performers' rights, the URA Act adds chapter Il to Copyright Acr (17 U.S.C.).

The new provision, section 1 10 1, prohibits the unauthorized fixation and transmission of

"sounds and sounds and images of a live performance", and the trafficking of the

unauthorized fixation.

Under US.Cori.~titurion arid Copyrighr Act, the "fixation requirement" is applied

to al1 copyright works." Section 1 10 1 of the new copyright Amendment appears to

extend its protection to unfixed materials. However, the constitutional foundation for

section 1 IO1 seems unstable. "Even if the URA Act were deemed to be a treaty

ratification action by the Senate, it would not modib the Constitution. Modification of

the Constitution stili requires compiiance with the amendment process and procedures of

Article V of the ~onsritution."~~

j3 17 U. S. C. , S. 102 (a).

" According to 17 U. S. C., S. 102 (a), copyright protection is available only to works that have bccn "fixed in [a] tangible medium of expression", and not to unfixed works. Such requirement arises fiom article 1, section 8 of the U.S.Constitution - the constitutional source of copyright legislation.

'' Susan M. Deas, "Jazzing up the Copyright Act? Resolving the Uncertainties of the United States Anti-Bootiegging Law" (1998) 20 Hastings CornrnEnt L.J. 567, at 575. To avoid the inconsistency with federal law, this new provision, section 1101, provides protection of a particular nature:

"The protection. however, does not grant the performer a copyrights in his work, but instead merely places a ban on the bootleggmg of live performances. Thus, it is not so much a copyright as a federal injunctive- type right for perfomers, piaced 'for purposes of administrative convenience' in the same section of the United States Code in which the federal copynght laws appear. In fact, the law denves its constitutional authority from the Commerce Clause, rather than from the Patent and Copyright Clause, which is the section fiorn which the rest of the Act derives its authority."'"

The most criticized aspect of section 1 101 is that it protects only a limited class of perfomers, those doing live "musical" performances. Under this new section, othrr kinds of live performances such as speeches. comedy, dance, or purely dramatic performances are excluded from federal copynght protection.

Compared with the words in corresponding provision of the TWS Agreement,

"fixation of a performance in a phonogram," the protection under section 1101 seems relatively narrow. The term "phonogram"is generally referred to "a fixation of sound" which covers al1 ranges of audio recordings but not just "musical" recordings." On the other hand, the protection under section 1101 covea sound recordings ("sound") and

Gregory S. Donat, "Fixing Fixation: A Copyright with Teeth for improvisational Performers" ( 1997) 97 Colum. L. Rev. 1363 at 1392.

'' The question remains unsettied whether the sxaiied 'phonogram" in the WSAgreement includes only audio-recordings, or also includes sound recordings within an audio-visual work. The relevant language of the Agreement remains unclear and requires fùrther interpretation However, under article 3 of the Rome Convention, "phonogram" mmsany exclusiveiy aura1 fixation of sounds of a performance or of other sounds. musical videos ("sound and images"). The term "phonogram" in TRIPS Agreement

presumably indicates only a fixation of "sound". It secms that section 1 10 1 provides broader protection than the TRIPS mandate in this regard." Howcver. the new established WIPO Performances and Phonogams Treaty might bring an irnpetus to the amendment of section 1101." Critics have also noted that the section on perfonners protection leaves some questions unanswered. For example, it does not provide "work for hire" doctrine and regdation related to the assignent of performen' rights."

D. The B~girulPerji~rrnrng Rights in the Sound Recording Act 1995

Sound recordings first received federal copyright protection when the Sound

Recording Act was passed in 197 1. Under the 1971 Act however, the copyright granted to the owners of sound recording works did not include the rîghts of public performance.

The same limitation on nghts for sound recording works existed when the Copyright Act was amended in 1976. (section 114 (b)) However, debate remained over the issue of whether a performance right in sound recording is equitable in a copyright system. The

Congress resonsidered the issue in 1979 and 198 1. Yet, sound recording owners still had

" Donat, supra note 36 at 1393.

l9 Under article 6 of the WOPerformances and Phonograms Treaty, performers are provided the exclusive rights of authorking the broadcasting, communication, and fixation of their unfixed performances. Such "performances" are not restricted to "musical" performances.

See generally, LioneI S. Sobel, ''Bootleggers Beware Copyright Law Now Protects Live Musical Performances. but New Law Leaves Many Questions Unanswered", (1995) 17 No. 2 Ent, L. Rep. 6. no right to control or receive remuneration from the public performance of thsir worlis until the enactment of the Sound Recordmg Acr of 1995.

In 1983, the first major product of digital technology - the compact disc ("CD")

\vas introduced to the sound mcording industries." This new trchnology has deeply impacted the formats of sound recordings and the way in which they are transmitted. By using the new digital technology, sound data can be transformed into an electronic code and precisel y transmitted or reconstructed by digi ta1 devices. Once the digital technolosy is broadly adopted by both recording and broadcasting industries, consumers will be provided a service by which thry can receive a sound recording at any tirne without losing sound quality. Consequently, consumers may largely stop buying phonorecords.

"The market for distributed phonorecords will likely shrink to include only the providers of that service to consurners.'""

In response to this new technology, the United States enacted the Brgiful

Performance Rzghf Nt Sound Recordings Act on November 1, 1995. The 1995 Act provides the owners of sound recording rights a public performance nght. However, the ri&! is substantially limited by several exemptions. First, the performance rights under the Act becorne applicable only when the copyright works are performed by means of 'a

'' See Karnesh Nagarajan, "Public Performance Rights in Sound Recordings and the Threat of Digitalkation" (1 995) 77 1. Pat. & Trademark Off. Soc'y 72 1, at 725. See also Rebecca F. Martin, "The Digital Performance Right in the Sound Recording Act of 1995: Can It Protect U.S. Sound Recording Copyright Owners in a Global Market?" (1996) 14 Cardozo Arts & Ent. L. J. 733 at 74 1.

'2 Sec Martin, ibid. at 74 1-742. digital audio transmission,'"' "a transmission in whole or in pan in a digital or other non-

analog f~rmat.'~Second, certain di gi ta1 transmissions are excl uded from the protection

under section 1 14 (d) ( 1 )?'

As a resuIt of the limitations, the public performance rights under the Act are

applied for two cotegories of transmissions: "interactive'"" and "subscription"." It

should be noted that under section 1 14 (d) (2)of the Act most subscription transmissions are subject to compulsory licensing. As for the interaction transmission, there is a

limitation for the duration of exclusive licenses a riçht owner may authorize."

III. Performers' Rights in the United Kingdom

" 17 U.S.C., S. 106 (6)

17 U.S.C.,S. 101.

Thesc digital transmissions include "(i) nonsubscription broadcasts; (ii) incidental nonsubscription transmissions; (iii) retransmissions of nonsubscription broadcasts within a 150-mile radius; (iv) transmissions by businesses if the transmissions are within the business's immediate vicinity (for exampie store, club, and restaurants); (v) retransmissions authorized by a primary transmitter licensed to perform publicly the sound recording. (For example, a non-digital broadcast may be retransmitted on cable.)" Martin, supra note 4 1 at 745.

a Under 17 U.S.C.,S. 1 14 (j)(4). "an 'interactive service' is one that enables a rnember of the public to receive, on request, a transmission of a particular sound recording chosen by or on behalf of the recipient. The abifity of individuid to request that particular sound recordings be performed for reception by the public at large does not make a service interactive."

47 Under 17 U.S.C., S. t 14 (j) (8), a "subscription transmission" means "a transmission that is controlled and limited to particular recipients, and for which consideration is required to be paid or othenvise given by or on behalf of the recipient to receive the transmission or a package of transmissions including the transmission."

Under 17 U.S.C. 1 14 (6) (3) (A), no interactive seMce shall be exclusive licensed for a period in excess of 12 months by owners of rights to more than 1,000 sound recordings. "A licensor that holds the copyright to 1,000 or fewer sound recordings, the period of such kense shall not exceed 24 months." A. Performers' Rights Protection Before 1988

In the United Kingdom, the first legislative protection for perfonrrs' rights

originated under the 1925 i>rumutrc und Musrcul Pt.rfi,rmers ' 13rotc.ctionAct. This pend

statute provided protection against unauthorized recording of performances, other than

for private use. The statute was further augmented by the Copyright '4c.v 1956

amendrnents. In tum, the Drumut~c und rl.fusrcal Performerî ' Protection A ct 1% 8

replaced the earlier (3p,vright Act Amendments. Upon entenng into the Rome

Convention, the U.K. enacted an Amendment act in 1963, providing eflect to their

obligations under the Convention. This Amendment broadened the reach of the 1958 Act

to include performances based on Iiterary or artistic works.'" More than a decade later,

the Performers ' Protection Act 1972 brought additional amendments.

The Performers ' Protectton Acts 1958- 1 972" established a criminal offence for

knowingly making a recording of a performance of various works, including dramatic

and musical works, in absence of the written consent of the performers, unless the

defendant can prove that the unauthorized recording was made for his private and

dornestic use. Civil rights were not expressly conferred by the Performers' Protection

'9 The Performers ' Protection Acr 1 963, S. 1 ( 1 )

Roberi Merkin, Copyright, Desipu md Pamis: The New Luw, 1st ed. (London: Longrnan Group, 1989) at 26 1.

5' Here, the Drarnatic und Musical Perfonners' Protection Act 1958, the Act of 1963 and the Perfonners Protection Act 1972 are mentioned collectively as "the Perfonners Protection Acis 1958-72." ..lcrs. However, in the case Riçklrss v. Unrred ,-irrr.sr.s Corp." the Court of Appeal held that "the performer had a civil remedy which derived from the offences created by the

Acts and survivirig her or his death. althouçh the court did recognize 'formidable arguments' against conferring private rights of action and thereby giving the performer a nght which was not subject to limitation of term or exceptions which applied to copyright."5J The above civil remedies, in addition to criminal penalties, were available for performers and could be enforced under the common law as a breach of statutory duty. Perfomers could therrfore obtain darnages and injunctions for the exploitation of their performances by othrn without

B. Perfomers' Rights Protection under the Copyrighf, Desip and Patents Act 1988

In the rnid- 1970s' bootleg recordings had become more prevalent because of the technical advances in recording equipments." Although penalties had been raised by the

1972 Act, they did not effectively restrain bootlegging activities. To accommodate the demand of a stronger protection for the creators in sound recordings, the Pefirmers

Protection Acts 1958-72 were repealed by Part II of the Copyright, Designs and Patents

" Rickles v. Unjted Artists Corps, [ 1 9881 QB 40, [ 19871 1 AU ER 79, CA [hereinafter Rickles]

'3 Peter Groves, Copyrighr and Designr Law -A Question of Balance (London:Graham & Trotman, 1991) at 215.

" See Rickfess and the earlier cases referred to therein.

'' Groves, supra note 53 at 2 14 4 1988 (hereinafter -*the CDPA 1988"). The latter now govems prrforrners' rights protection in the U.K.

The CDPA 1988 maintains criminal provisions. as well as rxpressly providing prrfomers with civil rights and rrmedits. It also affords protection to those who have exclusive recording contracts wi th performers. However, undrr the CDPA 1988, performers do not have copyright in their performances. The rights in performances are specifically stated by the Act to be independent of copyright or moral rights.''

The performers' riçhts provisions of the CDPA 1988 came into force on August

1, 1 989 The I'qfimwrs ' I'rorecrron Act will therefore still apply to the acts undertaken

before Au pst 1. 1989.j7

( 1 ) Prrformers' Rights

Under the CDPA 1988, "performance" is defined as "a dramatic performance, a musical performance, a reading or recitation of a literary work, or a performance of a variety act or any similar presentation, which is a live performance given by one or more individuals.""

In sumrnary, the CDPA 1988 provides perfonners the rights to prevent: the making of unauthorized recordings of their live performance, other than for the private

% The CDPA 1988, S. 180 (4).

'' Turton & Rij, mpra note 28 at 1 10-1 1 1.

'%e CDPA 1988, S. 180. and domestic use; unauthorized live broadcast, or live cable transmitting of their

performances; the public showing, play inp, broadcasting, or cablr transmitting of

unaut horized recordings.

There are several points worth noting in relation to the statutory rights under the

CDPA 1988:

(a) The performers' rights under the section 18 1 of the CDPA 1988 are granted to

"qualieing performances". "Those are performances given in the following countnes or

given by citizens or subjects of or individual residents in the following countries: the

United Kingdom and any Member State of the EEC and certain further countries where

reciprocal protection is gi~en."~Vhelist of these countries consists of the members of

the Rome Convention.

(b) Infringement of the rights can be enforced by injunctions and damages. However, damages are not actionable if a defendant shows that at the time of the infnngement he

believed on reasonable grounds that consent had been given. Under the CDPA 1988,

civil remedies for performers include a right to seek a court order for the "delivery up" of

illicit recordings (S. 195) and a right for the performer to seize illicit recordings in certain conditions given by section 196, without first obtaining a court order.

(c) Home taping for private and domestic use wouid not be an infnngement of performen' rights. (S. 182 (1) (a)) In addition, the statutory exceptions in relation to

59 Turton & Rij, supra note 28 at 1 1 1. rights in performances, set fonh in Schrdule 7, are comparable to some of the statutory exceptions to copyright.

(d) Perfomers' nghts under the Act lasts for 50 years "from the end of the calendar year in which the performance takes place." (S. 19 1 )

(e)Where a performance involves several perfonners. every performer has rights of his or her own. Those wishing to deal in recordings have to acquire the authorizations of al1 relevant perf~rmers.~'

(t) Performers have no moral rights in their performances. The moral rights provisions in this Act are providrd only in favour of an "author". (S. 77-89)

(g) In relation to the sound recording works, the only nght for performers in their performances is the nght to consent to a recording of their performances. However, unlike the situation in the U.S. or Canada where copynght in sound recordings does not estend to the control over the public broadcast of the record, British performers can acquirr such coneol through their contracts with the record producers who own the copynght.

(2) Recording Rights

60 This may be dificult for filmed performance involving a large number of performers. For example, if the film was made for TV broadcasting, the consent would be needd to allow the broadcasting of the film by cabIe. To resolve this problem, a clause was inserted into the CDPA 1988, thus alfowing a penon to make a recording from a previous recording of a performance by applying to the Copyright Tribunal for consent on behalf of a performer whose identity or whereabouts cannot be ascertainecl on reasonable enqujl or who unreasonably withholds his or her consent. (The CDPA 1988, s- 190) See Merkin, supra note 50 at 279. Under section 185 of the CDPA 1988. a performer may enter into a recording contract with another person who is exclusively rntitled to a right to make recordings of one or more of the performrr's performances. A person having recording rights is definrd as one "who is a Party to and has the benefit of an exclusive recording contract to which the performance in question is subject, or to whom the benefit of such a contract has been assigned." (S. 185 (2)) A person who has recording rights in a performance also has the right to take action against an unauthorized recording under Part 11 of the Act.

The legislative background of such recording rights provision is described by Tettenborn:

"Giving civil rights to performers, however, is only half the story. In practice, it is recording companies with the exclusive rights to record live performances that stand to lose the most from unauthorized recording, and not the performers themselves; and what was clear from the case law before 1988 was that they were owed no duty under the 1958 Act. The 1988 Act has now remedied this defect in the law by giving a parallel right, equivalent to the performer's right, to anyone holding an exclusive recording conrract to record a live performance. This right is subject to largely the same conditions as the performer's right, except that it is assignable, and that consent given to a recording by the performer binds the recording contract holder as well.'"'

Section 186 (1) of the CDPA 1988 provides: "a person infnnges the rights of a person having recording rights in relation to a performance who, without his consent or that of the performer, makes a recording of the whole or any substantial part of the performance, otherwise than for his private and domestic use." Thus, if the performer

6t~ndrewTettenborn, "Copyright Law Refom - English Style" (1989) 4 I.P.J. 353 at 365-366. [footnotes ornitteci] airrady consrnted to the recording. then it seems ihat an infringernent would not arisc.

whether or not consent by the owner of the recording nçhts occurred. Yet, the title of

"exclusive recording contract" makes it clear that the owner of recording rights should be

the only person has the right to make recordings. Some commentators therrfore argue

that, where an exclusive recording contnct rxists, the perfonner's consent simply "has

the negative effect of relieving the person making the recording from Iiability.'"'

However, the perfonner could be in breach of contract if he gave consent for a third Party

to make a recording.""resumably, the recording rights owner would have a right of

action against the perfortnrr. The owner of recording rights, however, would not have

any rcmcdy against the person making the recording, unless there exists proof of that

person's actual knowledge of the exclusive recording contract?

Merkin, supra note 50 at 270.

a Paul Supnik & Sarah Faulder, eds., En$orcemenf of Copynghr and Refated Righrs Aflectirtg the .bhsrc Irufust~~- reports presented at the meeting of fhr hternational Associafionof firrertairtmertf IAwyers .WDEA4 1993. Cannes at 186. Chapter 5

Performers' Rights Protection in the Republic of China (Taiwan)

1. Background to the Copyright Protection in the R.0.C

Although the concept of copyright protection in China can br: traced back to before 1 O68 A.D.,' the Northem Song Dynasty, it was not until the first decade of 20Ih crntury China had its first statutory copyright law, Da Qrng cop-vright Law, which was adopted by the Qing Dynasty in 19 10. The Da Qing C.'opyrigh LUW was not in force for long, as the Qing Dynasty was vanquished by the 19 11 revolution. However, the Du Qrng

Vopyrlghlir LOW had a very important influence on the first copyright statutr alier the establishment of the Republic of China (R.O.C.).' The first Clopvrrghr Luw of the

R.O.C. was enacted in 1928. The Law contained five chapters: "Gcneral Provisions:

Owntrship and Limitations of Copyright; lnfringernent of Copyright; Punishment; and

Supplementary ~rovisions."~ Between 1929 and 1984, the statute was amended three times.' No version of the Copyright Law, however, included a statutory statement of the purpose of copyright.

' The original idea of copyright in China was to prohibit the unauthorized printing of books edited by the Imperia1 CoIlege. See Melville B. Nimrner & Paul Edward Geler, eds., In~emtionalCopyright Law and Prcictice. vol. 1 (New York: Matthew Bender, 19%) at CHI-5.

' See Ibid. at CHI-5, 7.

Ibid at CHI-7

' They are the Copyright Law amendments on 27 Aprii 1944, 13 January 1949 and 10 July 1964.

96 The major reform of the ( 'opyrtglit 1.u~brgan in the I Y SOS, eventually leading to the amsndment of 1985. The Amendmcnt added a provision, article I , to the < 'op~yqht

1.~10which providrd that <'opyri,qh~/.uw wcre desiyned for the purpose of "protecting authors' riphts and intrrssts, enhancing public benetits. and promoting national culture."?

As the R.O.C. is a civil law jurisdiction. the protection of individual authors' intercsts would be viewed as the major purpose of the ('op-vrrght /.uw. Yet, the Law needs to balance the two cornpeting interests, authors who creatr copyrightrd works and the public who consume the works. The Copyrrghr ldw must assure public access to more creative works in order to enhance public benetits and promote the progress of culture."

However, it is not clear whether this end should be fulfilled by rncouraging and rçwarding creative efforts of authors.

Althouçh the C'opyrighf Luw of the R.O.C. has been in existence since 1928, neither the government nor the rest of the society had paid much attention to the law until the mid- l98Os, when Taiwan was called the "pirate capital of the world.'" The weakness of copynght protection in Taiwan was panly becaw the deficiency of copynght legislation. More importantly, the problem was comected to the inadequate enforcement of the law.

' See Jim Cheng, An Analysis of fhe New Copyr~ghfLaw (1988)at 2-5.

See The Billof the Amendnent Comght Law (Judiciai Yuan, the Republic of China, 1983). See also Ibid. at 5.

' Laura W. Young, "Taiwan and WTO Membership: PRLaws Now Almost Cornpletely Comply with TRIPS Requirements" ( 1996) 18 No. 6 E. Asian Executive Rep. 9 at 18. Due to its political status in the last several decades, the R.O.C. has bern escluded from the world intellectual property systrm. From an econornic point of view, the R.O.C. in Taiwan certainly qualifies as a country. In recent years, Taiwan has becorne the thirternth largcst trading entity in the world. The gross domestic product of the R.O.C. has been always among the top 20 countrics. However, the R.O.C. (Taiwan) is not recognized by the United Nations, and thercfore is not accepted by any agency of the CM, such as the World Intellcctual Property Organization. As a result, the R.O.C. has never been permitted to join any international intellectual property treaty.' This means that the R.O.C. has no obligation in makinç its ('~p~vrightLuw compliant with the standards existing in any international treaty. In the late 1980s Taiwan asserted that it intended to join the GATT as a customs temtory.' Since then the Copyright Law of the

R.O.C. has been revised several tirnedo to remedy deficiencies in protection and meet the requirement on Trade-Related Aspects of lntellectual Property Rights (TRiPS).

It has been argued that the insuficiency of Taiwan's copyright enforcement is related to the difference between Chinese and Western philosophies on property.

Chinese people, influenced by Confucian philosophy, are nc! so enthusiastic in

' Grant G. Erickson, "Inteilectud Property Protection in Taiwan: 'False Face Must Hide What False Hem Doth Know"' (1 99 1) 4 Transnational Lawyer 29 1 at 33 1.

See Susanna Chan, "Taiwan's Application to the GATT: A New Urgency with the Conclusion of the Umguay Round" (I 994) 2 hd. J. of Global Legal Stud. 275 at 275. The R0.C. fomally appiied to join the GATT on Januq 1, 1990.

la The Cop-mght h ofthe R0.C. has ben amended on 24 January 1990,10 June 1992.6 July 1992, 24 Apnl 1993, and 2 1 January 1998. protrcting the creativity of new ideas and technologies as are the people of Western countries." Thus. sven though the ('opyrghi f.uw of the R.O.C. has met the international standard, it sti t l cannot assure that the notorious piracy problem in Taiwan will be solved. In hct, many developing countries. in the process of industrialisation, virw copying and imitating intellectual products as a necessary step of the development of nation's economy." It srems that the most recent moves to revise intellectual property laws in some Far East countries, including Taiwan, are mainly for preventing trade retaliation from industrialised countries." However, the R.O.C. has already made a significant economic achievement. Any economic demand should not be used as a excuse for the disregard of intellectual property protection in Taiwan. It is tirne for the

R.O.C. to consider a fundamental c hangr in the concept of intellectual property protection. Such work cannot be done solely by revising the relating laws. More importantly, govemment and the whole society of Taiwan should understand the underlying philosophy of intellectual property which is, as article 1 of Copyright Luw

l1 Erickson, qranote 8 at 299-300.

l2 The economic arguments by developing countries has been analyzed by Carlos Primo Braga in his discussion on the question of whether developing countries should affim to creation of international standards of intelIectual property within the framework of the GATT trading system. Braga explained: "Thm is no a priori evidence that these [developing] counuies will necessarily benefit or lose fiom a refoim oftheir intellectual property systems. The ambiguity of these results are, however, padeled by suong evidence that the political economy of the debate is such that most less developed countnes (LDCs) would tent to resist enhanced iP rights protection even when a clear case based on econornic self-interest cm be developed." See Robert M. Sherwood, Irrrrllrc~ualProperty and Econornic Development (Boulder, Colorado: Westview Press, 1990) at 79.

" Bankole Sodipo, Plracy and Courtfe~eiting- GA IT TRIPS and Developing Cmuttr~es(iondon: Kiuwer Law International, 1997) at 63. reveals, to protect authors' interrsts and to promote the benefits of the public.

Il. Performers' Riçhts Protection

A. ( '()py-rghrLUW 1985

In the Republic of China, performers' rights were first acknowledged in the

('opyrrghr Low* 1985.''' Article 4 of the Law provides: "Unless othewise provided by this law, the authors of any of the following works shall be entitled to copyright upon completion as intellectual work: 1. Litenry works; 2. Oral works; . . - 13. Lectures, musical performances, stage presentations, choreography; . . . the owner of a copyright of one of the works set forth in the preceding paragraph shall have the exclusive right to reproduce, publicly recite, publicly broadcast, publicly present, publicly perfonn, publicly exhibit, compile. translate, or lease the work based on the nature of the work. in addition, helshe shall also have the exclusive right to adapt the intellectual work."" The tens "lecture, musical performance, stage presentation, choreography" were detined to indicate any "live performance of sound or movement". l6

Under the 1985 Law, perforrners' performances were protected as a category of copyrighted work, and a performer was deemed to be the author of his performance. No

'' Hsiung-Lin Shiau, Thr Rrsearch ofCopyright (1) (1989) at 237

l5 Major Smutes of the Repblic of China. vol. 1: Constirutionai und Administrative Statutes (Judiciai Yuan, the Republic of China, November 1990) at 204.

l6 The 1985 Law, art. 3, para. l(18). one may takr notes or photognphs, or produce sound recordings or video tapes of

lectures, musical performances, stage presentations, or choreography without the prior

consent of the copyright owners thereof, unless the notes, recordings, or photogaphs

were taken for the purpose of news reporting or for the personal use of the recorder."

However, it was unclear whether a performer had funher rights of control or remuneration afier the fixation of her or his performance.

B. The ( ùpvrlgltf I.rw Amendment in 1992

The 1985 ('op-vrighhr Lmwas amended in June 10, 1992. Under the amendment, performers' rights provisions were abolished. Such amendment was said to be anributed to two factors: first, the pressure fiom the United States; second, the opposition of the record industry. "

(a) In the original Bill of the 19% Amendment, there was a separatc section for the protection of neighbouring rights under which performen' performances were protected as one of the three categones of neighbouring righd9 The other two categories of neighbouring rights were the rights for sound recording works and the riats for

"The 1985 Law, art. 18.

" Ming-Yeong Wong, "A Research of Neighbouring Rights" (April 1997) 2:2 Hsin Chu Bar Association L.J. 23 at 28. See also Ming-Cheng Tsai, "A Criticisrn Toward the 1990 Copyight Law Amendment Bili" (December 1989) Chengchi University L. Rev. 203 at 2 1 1-2 t 2.

l9 The 1990 Copyright Law Amendment Bill, art. 82.

101 broadcasting works.'" When the third revision of the Bill was issued in 1990, the United

States strongly opposed the neighbouring rights provisions in the amendment.

Presumabl y, the Arnerican sound recording industry would lose thcir intcrests in Taiwan market if the sound recording works were not protected as copyright works," but protected as works of neighbouring rights and received relatively limited protection."

The United States asserted that Taiwan should adhere to the Bill of Agreement for the

Protection of Copyright between the Coordination Council for North Arnerican Affairs

(CCNAA) and the American lnstitute in Taiwan (AIT)," and recognize the sound recording works as "literary and artistic works" under the R.O.C. ( *op-vr~,qh///.a»? The agreement between CCNAA and AIT provides that the citizens and nationals of the

United States enjoy the same protection as the citizens of the R.O.C. under the Copyright

Law of Taiwan? To avoid any retaliatory action by U.S. govemment, the Congress of

R.O.C. dropped the neighbouring rights provisions from the original Bill when the

" The 1990 Copyright i.uw Amendment Bill, art. 83, 84.

'' According to the article 4 of the 1985 Copyright Law,sound recording works are recognized as one of the 17 categones of copyright works listed in the paragraph 1. The owners of sound recording works are conferred hl1 range copyright protection based on the naturd state of a sound recording.

" According to the original Bill of the Amendment, the owners of sound recording works (protected as one of the categories of neighbouring rights) are entitled to the rights of reproduction, issuing, broadcasting, and lending. The term of protection for sound recording works Iasts for 30 years, which is shorter than the 50 year term for copyright works under the Bill.

The Bill of the Agreement was signed on July 14, 1989. The Agreement was signed and came into force on July 16, 1993.

'' The CCNNA & AIT Agreement, art. 2 .

The CCNNA & AIT Agreement, art. 1 (3), (4). Arncndment of ( 'opyrght Luw was enacted in 1 992.

(b)Additional pressure came from the resistance of the domestic record industry. Record cornpanies who owvned the copyrights in sound recording works were afraid that the neighbouring provisions introduced by the new Amendment will be a vast disadvantage to their benefits On the one hand, switching the protection for sound recording works from copyright to neighbouring right would presumably diminish record companies' control and power over the sound recordings they owned. On the other hand, confemng pcrformers' rights would accordingly increase record companies' costs in producing records.

The provisions in relation to neighbouring rights rnight have been the most controversial part of the 1992 Copyright Law Amendment. The Amendment in this area. however, was considered improper for at least two reasons:

(a) Under the 1976 C-rrght Acr of the United States, sound recording works were wanted limited copyright protection. For example, the rights owners of sound recording CI works were not provided a public performance right. Even though Taiwan was forced to protect sound recording works as copyrigk works, it appeared to be unreasonable not to confine the scope of protection offered to sound recording works." Moreover, the pressure from the U.S.was directed at sound recording rights but not performen' rights.

It thus seemed not necessary for the R.O.C. to abolish the provisions regarding

l6Under the 1992 Copyrighr Law, the only restriction on the copyright of sound recording works seems to be the "doctrines of compulsory license". perfomrrs' rights protection.

(b)The 1992 Amendment recogized sound rrcordings as a catrgory of copyright works,

and confemd civil rights on the rights owners of sound recording works. as well as

providing crirninal sanctions. In contrast, perfomers' performances were not protected

at all. Furthemore, there was no provision in ('opyrrght hw directing that record

producers should share with pe~onners the revenues from licensing the public

performance rights of sound recording works." Consequently, record companies couid

casily exploit perfomers' works without paying any fee or compensation to the

pcrfornlers. From a performer's perspective. the 1992 Amendment not only sacrificrd their interests but also imposed an economic irnbalancr between performers and

producers/record companies.

Since the 1992 Copyrrghr Lüw did not provide perfonnen any protection, it is necassary to examine whether there is any alternative means by which performers can

protect their performances. Cornmon law copyright cannot be applied to perfonners'

rights protection in the R.O.C., unlike common law systems. The tort provision, article

1 84, Civil Code (R. O.C.) provides:

"A person who, intentionally or by his own fault, wrongf'uily injures the rights of another is bound to compensate him for any damage arising therefrom. The sarne nile applies when the injury is done intentionally in a mmer contrary to the niles of good rnorais. A person who idkinges a statutory provision enacted for the protection of others is presurned to

" See e.g. the article 12 of the Rome Convention 196 1

1O4 have committed a fault."

The "rights" mrntioned abovr indicate statutory rights regulatrd by the ( 'rvd

('ode or other statutory laws. Under the R.O.C. law, private "rights" Gan be divided into two categories, namely "property rights" and -'personal rights" Article 757 provides:

"no rights over [tangible] things can be created than those provides for by the prrsent

Code or by other la~s."~~incethe objects protected by performers' rights, as well as any other cateçories of intellectual property rights, are not tangible "things", perfomxrs' performances cannot be protected under the Pan III of the R.O.C. Civil Code (rights over

'-things")."' If performers' rights wre not recopized as falling under existing rights in any statute in the legal system of the R.O.C., r.g. Copyright Luw, then they did not qualiQ as "property rights" under the C'ivd CM. On the other hand, if a perforrner's name was used without his or her consent, application may be made by the perforrner to the COU^ for the removal of such infnngement and for compensation for damages." The act of recording a performance without authorization could yet be deemed to be an infnngement of the right of personaliây or dignity" under the R.O.C. Civif Code. So far, however, no decision has been made by the courts in this regard.

" See Major Staîutes of the Republic of China, vol. II: Civil and Crimrnal Statutes (Judicid Yuan, the RepubIic of China, June 1992) at 135.

Ming-Yang S hieh, The Concept and Legal Sysfem of lntellectuaf Properry ( 1995) at 1 7- 18.

Ciwl Cade (R.O.C.), art. 19

'' Civd Code (R.O.C.), art. 18. Another issue arises over whether the actions of fising performances or reproducing the tixation of performances without a perfomrr's consent are actions against the so-called "nile of çood morals". Until now, no court drcision has suggested that the protection for performers is subject to "the rule of good monls". [t srems difficult for performers to reson to article 184 when their performances are exploited by others without authorization.

C The ( 'opyrrghr Luw Amendment in 1998

On 2 1 January 1998, the (ipvr~ghrLuw \vas amended to protect perforrners. lnterest in this Amendment was provoked by an incident in which Taiwanesc folklore was exploited by Western record companies. A few years ago a Taiwanese aboriginal couple had performed a traditional folklore (dancing and singing) called "Joy of

Drinkinç". The folklore was initially recorded by a European cultural organization under the couple's authorization. Part of the recording, however, was somehow adopted by a

German popular music group, ENIGMA, in their album called "Return to the

~mocence"." In 1996, during the Olyrnpic Garnes held at Atlanta, the Olympic authority also used part of the recording as one of its promotional songs. Both of these exploitations were done without having the consent of the performers. The performers claimed that their rights over the performances were infnnged and asked for

'' Rey-Yuen Wu, "Giving Back the Proud of the Aboriginal People in Taiwan" (2 July 1996) The Chiria Times at 1 1. compensation.

While there Las no performers' rights provision provided by the 1992 ( 'op~vvrr,qirlir

1.w. whrn the performers' rights incident occurred during the 1996 Olyrnpic Gamts the

Ministry of lnterior (R.O.C.) expressed its opinion by making a commentary on the

parabgaph (3) of article 5 of the 1992 C'op~vrtghrLuw under which dramatic works and choreogaphy works were provided with copyright protection. The Ministry of Interior suggested that the definition of so-called "drarnatic works" or "choreography works" included the perfnrmances of those works. Perfomers who rendered these works were thereby entitled to copyright protection." But whether or not the drtinitions of

"dramat ic Works" and "choreograph works" should bc restric ted in represen ti ng the works made by '-authors" (e.g. the scenic arrangement, or the acting form of a drama or a dance), was not clearly expressed under the 1992 C'opyrrght Luw. This issue remained controversial until the recent Copyrrghr Law Amendment in Ianuary 1 998.

The latest reform of the intellectual property right system in Taiwan was to implement the policies addressed in the "Agreement on Trade-related Aspects of

International Property rights" (TRIPS Agreement). It was also described as one of the efforts Taiwan made in its bid to join the Worid Trade Organization (WTO) as well as other relevant international organizations. The new Amendment includes provisions for performers' rights. Under article 7.1 of 1998 Copyrtghf Lm, performers' performances

'' Shu-Mei Chan, "The Introduction of the New Copyright Law" (Febnrary 1998) Taiwan Bar Journa1 iG4 at 104. are considered as a category of copyright works. In sumrnary. prrfomzrs are gantrd the

exclusive rights:

(i) to broadcast or to communicate their performances to the public, except whrre the

performance used in the broadcastinç or the public communication is itseif already a

broadcast performance or is made from a fixation of that performance?

(ii) to reproduce their performances by means of audio recording, video recording, and

photographing.''

The tem of the protection available for perfonners under the 1998 Amendment

lasted until the end of a period of fifty years computed from the day when performance was played to the public or the performance took place.36 The perfonners' rights provision under the new Amendment basically complies with the article 14 of the TRIPS

Agreement. Several things with regard to the provision should be emphasized:

(a) The Amendment explicitly indicates that so-called "performance" means a performance based on a "pre-existing" copyright work. It is not ciear whether a improvisation performance which is not based on a pre-existing work is protected under the performers' rights provision. There is, unfortunately, no Merdefinition to indicate what kind of work is included.

(b) nie TR.iPS language relating to perfonners is clearly intended to be given the same

" The 1998 Copyright Lrnv, art. 24, art. 26 para. 2.

'' The 1998 Copyright Luw, art. 22, para. 2.

The 1998 Copynghr Lm,art. 33, art. 34.

108 meaning as the equivalsnt languagc: in the Rome Convention, article 3, which limits the meaning of pcrformrrs' performances in the interpretation of "literary or artistic works".

Under the 1998 Amendment of the R.O.C. ('opyighr Luw, the definition of

"performers" is not provided. As such, it appears that anyone who "performs" any kind of copyrighted works wi Il be provided protection under the perfomers' rights provisions of the 1 998 C*op_vrghtLaw.

(c) Under article 22, paragaph (2), "performers have the exclusive rights to 'reproduce' the performances by means of audio recording, video recording, or photographing." In this paragaph, "to reproduce a performance" should have the same meaning of "making fixation of a untixed performance" under article 14 of the TRIPS ~çreernent.~'

However, the use of the word "reproduce" will likely mislead people into believing that perforrners' exclusive rights include not only to make the first fixation of their live perfonnances but also to reproduce their fixed performances. By contrast under article

14 of the TRIPS Agreement. performers are granted the rights to prevent the reproduction of their fixed performances only when the fixation was made without their authorization. Presumably, the reproduction right under article 22 (2) of the 1998

Amendrnent indicates the right to make the first fixation of perfomers' unfixed performances. Accordingly, perfomers have no right to prevent the reproduction of an unauthorized fixation. This result, however, does not comply with article 14 of TRIPS

37 LegzsIalive Bcickgrd OtrtIine of the 1998 Copyright Luw Amendment (ibfinistry of Interior. the Republic of China, February 1998) at 14.

;39 Agreement.

(d) According to articles 15-7 1 of the Amendment. an author of a copyright work is grantrd moral riçhts over her or his work. Since performers are regarded as the

"authors" of their performances, they accordinçly enjoy moral nghts including the right of patemity (art. 16), the right of integrity (an. 17), and the right to or not to make the work public (art. 15). Chapter 6

The Contractual Status of Performers

1. Introduction

In considering the protection of perfonners, ont may find that legislative

protection is not the most successful method. For many performers, the pnmary protection arise through membership in a perfonners' union and the collective agreements that union has negotiated.' Nevertheless, in the music industry, the private agreement between a performer and the record company sets fonh the primary conditions for the control of the performer's rights. There are two types of contracts common to a musical artist - recording agreements and publishing agreements. Before considrring the performer's status in these types of contracts, it seems first necessary to understand their main functions and the relationship between a cornposer/performer and the record company.

A. Music Pub1 ishing/Recording Agreements

Music publishing includes "the administration, promotion, exploitation, and protection of musical copyrights whch the music publisher owns and controls by virtue

' David Sinacore-Guinn, Collective Administration of Copyrights and Neighbouring Rïghrs: /nrermtionuf Pructices. Procedures, d ûrganiratiom (Toronto: Litile, Brown and Company, 1993) at 779. of the assiçnmrnt of rights granted pursuant to a publishing ageemrnt."' From a traditional perspective, "publishing" means the "issue of copies of the work to the public."' Today, however, the main function of a musical publisher is to exploit musical copyright by licensing. Under the contract between the composer and publisher, the publisher acquires rights to a musical work. The publisher may then license these rights to users who can further exploit the work. The publishrr usually has the responsibility to market the acquired work and to share with the composer any income frorn the exploitation of that particular musical work4 The two parties typically have a close and mutually coordinated relationship, particularly given that the publisher's endeavours to foster the musical work also enhances the career prospects of the composer. The latter enhancement would profit both parties. On the other hand, the publishrr and writer may experience a hostile relationship, depending upon how and what basis the publisher obtains the nghts in the author's work.'

The unusual relationship between publishers and music creators has affected the format of the collective administration of performing rights of musical works. Generally, authors join musical performing rights societies in partnership with their publishers in order to get a sûonger bargaining position against the user groups than they had as

' Pau1 Sanderson, Musiciam and the Law in Cm&, 2d ed. (Toronto: Carswell, 1992) at 49.

' lbid.

' Sinacore-Guinn, supra note 1 at 766.

' lbid. individuals. Undzr the administration of a performing right socirty, the incomes from perfoming rights are controlled and allocated between authors and publishers according to a fixed rats. Thus, the authors' share cm be protected from overreaching publishers who attempt to cut an "unfair" share of the incorne."

The recording contract between a perfonning artist and a record company is a personal service agreement whereby the perfoming artist is paid by the record company to provide performances for the purpose of making master recordings.' In addition to the production of a master recording, a record company also engages in the manufacturing, distributinç, marketing and promoting sales of records? In countries where perfomers' riçhts are recoçnized, record companies will atternpt to acquire perfomers' rights from the performing artist. In the assignment of created rights, the relationship between recording artist and record company is therefore simi lar to the relationshi p between the author and publisher in a publishing contract.

B. Copyright 1 Performen' Rights Assignment

As mentioned earlier, perfonning artistc are usually asked to assign their rights under a contract with the record company. The assignment of copyright/perfomier7s

' Sanderson, supra note 2 at 2 10. The terni "maser recording" mmthe original recording of a musician' s performance. rights provision has becomr pan of a standard fom contract in the music industry

However, two issues deserve to be emphasized in relation to these assi~mments: first, if the relation betwern a sons ~vriter/perfOrmer and a record company in a publishing/rccording contract is considercd as an smploymrnt relationship, and the works are made in the course of the rmployment, then the record company becomes the first owner of rights unlcss an agreement to the contrary is entered into; second, some publishindrecording contracts "may be worded in ternis of both an assignment and an employment relationship. This presumabiy would protect the music publishcr if the agreement is not found to be an employment relationship.'" Due to relatively weaker negotiating power, performing anists often enter into a contract with unfair transaction of tlieir rights." Although publishing/recording contracts are a special type of contract. general contractual principlcs still apply. The one which is most likely to be used to challenge the terms of assignment is the equi table doctnne of unconscionability.

II. Employment 1 Work-For-Hire Doctrine

As a general principle of copyright, the person who creates a work is the author

Ibid. at 60.

'O There are, however, two exceptions in this area: first, in Canada a court opinion suggested that one cannot 1awfuUy assign a copyright in a fiiture work. However, if an author agree to assign a fùture copyright, he then will be required to fiilfiIl the assignment of the copyright once the work is completed (University of London Press Ltd v. University Tu~oriaIPressLtd, [ i 91 61 2 ch 60 1,61 I -6 13); second, in the United Kingdom, perforrners' rights are not assignable (the CDPA i 988, S. 192 (1 )), although this principle does not affect the ability of the perfomer to enter into an exclusive recording agreement. (the CDPA 1988, S. 192 (4)) and the first owner of the copyright therein. However, there are exceptions to this principle. "Works made in the course of employment" provide one specific exception based upon contractuai considerations. This exception has stimulated rnuch debate and a

Iack of consensus.

Comrnon law systems and civil law systems treat this problem differently.

Genemlly, common law countries consider the employee creator as the copyright owner unless a contract provides the contrary. In civil law systems, the employee who creates the work will be accounted the author and owns the original copynght. The latter seems based upon the rationale that the employee author is the weaker party econornically and thus requires protection against the employer who exploits his work. However, in practice, the presumption seems insignificant since many industries use standard form contracts which stipulate the assignment of copynght. ' '

A. Canada, United Kingdom, and United States

In Canada, the general principle of "works by employees" doctrine is set forth under section 13 (3) of the Copyright Acf. The first part of section 13 (3) provides that:

"Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the

" S. M. Stewart, Ir~tenmttonalCopynght and Neighbounng Rights, 2d ed. (London: Butteworths, 1989) at 76-77. absent of any agreement to the contrary, bc the first owner of the copytight."l2 The identical language can be found in section 5 ( 1 ) (b)of the U.K.Imperid Copyriglil Acz of

191 1." Current UK Copyright. Des@zs und Patents Act 1988 (the CDPA 1988) incorporates the sarne pnnciple in section 1 1 (2)."

In section 10 1 of the 17 U.S.C.,employment relationship is expressed in the term

"works made for hire" which include works prepared by employees within the scope of their employment and several categories of works specially ordered or commissioned. ''

Unlike the copyright laws of the U.K. and Canada. which grant ownership but not authonhip of copyright to the employer in the case of a work made "in the course of his ernpl~yment,"'~the 1 7 U. S.C. provides a de finition of "author" that explicitly includes the employer in the case of a "work made for hire".

In some cases, it would be difficult to determine whether an employment relationship exists, even if the definition of such relationship is provided by the statute.

l2 According to the second part of section 13 (3), authors of contributions to newspapers, magazines or simdar p&odicals shall, in the absence of any agreement to the wntrary, have a right to restrain publication otherwise than as part of a newspaper, magazine or similar periodical.

" Bany Tomo. Ownership of Copyrighr in Cm& (,Consumer and Corporate An&, Canada, 198 1 ) at 40.

'' "Employed", "employee", "employer" and "employment" refer to employment under a contract of service or of apprenticeship. See the CDPA 1988(U.K.),S. 178.

" A specially ordered or commissioned work is accounted a work made for hire if it is 'bsed as a contribution to a coliective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplernentary work, as a compilation, as an instruction text, as a test, as answer material for a test, or as an atlas"; and "thephes expressly agree in a written instrument signed by them that the work shall considered a work made for hire". See 17 U.S.C., S. 10 1.

l6 The CDPA 1988 (ü.K.),S. 1 1 (2);the Copyr~ghrAct 1985 (Canada), s. 13 (3). Similarly, it is not easy to makr such detenination by the writtrn tzrms of a contrüct

where the words used in the contract are not so rxplici t. In ( '('NI,' v. Rd(/9X<)l, " the

U.S. Supreme Coun adopted the non-exhaustive list of factors provided by the Amrrrctrn

1.u~Insfitzrrc '.Y Resr'srorcnwnr ofA,qer~cy( 1958). para. 220 (2) to decide whether a "work

for hire" relationship exists. The tests include:

"(i) the hiring party's right to control the mannrr and means by which the product is accomplished; (ii) the skill required; (iii) the source of the instrumentalities and tools; (iv) the location of the work; (v) the duration of the relationship between the parties; (vi) whether the hiring party has the riçht to assign additional projects to the hired Party; (vii) the estent of the hired party's discretion over when and how long to work; (viii) the method of payment; (ix) the hired pany's role in hiring and payins assistants; (x) whether the work is part of the regular business of the hiring party; (xi) whether the hiring party is in business; (xii) the provision of employee benefits; (xiii) the tax treatment of a hired party. . . . no one of these factors is deterrninati~e."~'

It should be pointed out that even if a work is accomplished under an employment relationship, it does not therefore mean that the work is made "in the course of employment". A employee may sometimes perfonn services outside the ernployment contract. If a copyrighted work done by the employee is "not expected to be done in

" Communityfor Creafive Non-fidence v. Reid (1989) 109 S. Ct. [hereinafler Reid] The decision focused on clause ( 1 ) of section 1 O 1, 17 U.S.C. 1976.

'' See Reid, ibid at 2 1 78-9. A sidar approach can be found in the decision made by an English court in Market hvestigu~ionsLfd v. Min. Of social Securiry [ 19691 2 Q.B. 1 73. , which involved the employrnent contract of part-time market surveyors. The Court stated: "Noexhaustive list has been compiled and perhaps no exhaustive list can be compiled of the considerations that are relevant in detennuling that question, nor can strict rules be laid down as to the relative weight which the various consideration should carry in particular cases." working hours," or is "in addition to ofticial duties," thrn it is not pari of his or her contractrd work and the copyright should vest in the rmployee but not in his or her employer."'

B. Employment Relationship Undrr the R.O.C. Law

Under articles 1 1 and 12 of the curent Copyright Law of the Republic of China

(Taiwan), the çuidinç principle of the first ownership in a work done by an employee can be subdivided into two clauses. First, where a work is done by an employce in the course of his ernploymcnt, the authorship of the work shall be vested in the employee unless there exists an agreement to the contrary. Io the case that the employee is regarded as the author, the first ownership of the copyright (economic nghts) should, in the absence of any agreement to the contrary, be vested in the employer." Second, whrre a completed work had been commissioned, the work's creator should be considered the author of the work unless there exists an agreement to the contrary. In the case where the creator is regarded as the author of the work, the first ownenhip of the copyright shall, in the absence of any agreement to the contrary, be vested in the creator. Where the first ownership of the copyright is vested in the creator, the sponsor shall have the right to exploit the work." On the one hand, the provisions atternpt to protect the rights of

I9 Noah v. Shuba, [ 19913 FSR 14.25-7 (Ch).

?O The Copyright Law 1 998 ( R O .C. ), art. 1 1, para. 1 and 2.

" The Copyighr Law 1998 ( RO.C.), art. 12.

If8 individual creators by establishing a przsumption that the employed creator is the author.

On the other hand, givrn the weight of the tradition favouring "freedom of contract", the

Law includrs the lcgal fiction which deems the smployerlsponsor the "author" if the

parties so agree.

It can be said that the system which givrs the employed author the original

authorship is gathering more support since it is in accordance with the general concept of

most copyright laws throughout the world and, particularly, under the Berne Convention.

Ii should be emphasized that, undcr the Berne Convention, the moral rights remain with

the employed author, even after transfer of the economic riçhts." The principle under anicles I 1 and 12 of the 1998 Law reveals a careful compromise intended to cover cases

in which employers or sponsors could be accounted the "authors" in employed or commissioned situations without any limitation on the moral rights possession. It seerns inadequate that the law leaves employec authors to defend themselves against their em ployers who normal l y have stronger negotiating power than authors.

III. Inequality of Bargaining Power - Unconscionability

Unconscionability has been defined as "undue advantage taken of inequality of bargaining power."" To explain the meaning of "inequality of bargaining power", Lord

"- The Berne Convention, art. 6biç.

" See S. M.Waddams, "Contract Law - Fundamental Breach - Exemption Clauses - Unconscionability - Bemdort Reahirs (1964) /tic. v Bt'fcourt Cotrstrucrion (Oiiawcï) Lfd " (198 1) 15- 1 U.B.C.L. Rev. 189 at 192. See also B. E. Crawford, "Comment" (1966) 44 Can. B. Rev. 142. Denning had this to say in LIoyuk Bank v. Bundy:

"[Bjy virtue of it, the English law gives relief to one who, without independent advice, enten into a contract which is very unfair or transfen property for a consideration which is grossly inadequate, when his bargaining power is grievously impaired by reason of his own needs or by own desires or by his own ignorance or infbnity, coupled with undue influence or pressures brought to bear on him by or for the other~.'"~

In Mucaulay v. Schroeder Publishing Co. ~fd.'' (herei nafter Mucaulay ), an unknown young composer entered into an exclusive five year contract with a music publisher. This contract was a so-called "standard form agreement" in which the composer assigned the copyright to every Song written in that pend to the publisher in exchange for agreed royalties. The publisher could terminate the agreement at any time by providing one month's notice. However, there was no provision allowing the composer to terminate the agreement.

The court considered the circumstances of the contract and the relative bargaining powers of both parties, and then decided not to uphold the contract. The court stated that

'?he lems of this kind of standard form contract had not been the subject of negotiation between the parties to it, . . . They had been dictated by the party whose bargaining power . . . enables him to say: 'If you want these goods or services at dl, these are the

" [1974] 3 W.L.R.501 (C.A.).

[1974] 1 Ail E.R. 171 (C.A.). only terms on which they are obtainable. Take it or ieave it. "'26

In another case with facts similar to those in Macaulay, the court discussed the issue of the criteria for the equitable doctrine of unconscionability. In Elron John v.

Jarne?', Mr. Justice Nicholls suggested:

"(Iln short, and whatever be the precise form of words used, the substances of the two ingredients require More courts will set aside a transaction are fint, a relationship in which one person has a dominating influence over the other and, secondly, a manifestly disadvantageous transaction resulting from the exercise of that influence. In appropriate circumstances presumptions may be employed regarding either of the two ingredients: in appropriate circumstances the existence of a dominating influence may be presumed; the Court may also, again in appropriate circumstances, presurne that where a dominating influence exists, a manifestly disadvantaged transaction was the result of the exercise of undue in fi uence. "*'

However, by quoting the speech of Lord Scarman, Nicholls J. emphasized that he did not mean to suggest a neat and tidy defor the doctrine, but rather a starting point

From which the court rnight determine whether the transaction is the product of undue influence. After all, "definition is a poor instrument when used to determine whether a transaction is or is not unconscionable: this is a question which depends upon the

?6 Ibid. at 13 16

" Ehon Hercules John v. Dick James Music Limite4 (November 29, 1985) Ch. D.[hereinafter Elton John]

" Ibid at 93-94 particular facts of the case. "'"

The slippery dope question again ariscs: will evry standard-form publishing

contract be considered unconscionable, so that it should be void or voidable if

challenged? The drcision in ~tlucciuiu~vhad been cnticized by academics for failing to

dari@ the undrrlying consideration that led the court to tind the transaction

"unconscionable":'O Regarding the issue of standard-fon contracts and its relation with the concentration of market power, Professor Michael J. Trebilcock argurd:"

"The proposition that the use of consumer standard-form contracts is the result of the concentration of market power" is entirely without factual foundation. The reason why such contracts are used is exactly the samr as for their use in the commercial context, which is to 'facilitate the conduct of trade', or in economic terms, to reduce transaction costs. . . . The real measure of market power is not whether a supplier presents his terms on a take-it-or-leave-it basis but whether the consumer, if he decides to 'leave it', has available to him a workably comptitive range of alternative

hici. at 94. The argument was based on the speech of Lord Scarman in the case of Natiurzaf Wr.s~mnt~.stwBank V. Morgarz ( 1985), 2 WLR 588

Michael J. Trebilcock, "An Economic Approach to the Doctrine of Unconscionability" in Bany I. Reiter & John Swan, eds., CdimLegal Smdies Series - Sfudirs iri Contracfh (Toronto: Butterworths, 1980) at 380.

" According to Trebilcock's argument, two subsets of circumstances can be identified with respect to monopoly power. "First, there is the case of what might be calleci 'situational monopolies' where special circumstances have aiigiving one contracting party abnormal market power with respect to the other, albeit perhaps not in relation to other parties in the memarket." (such as, cases of duress, practical duras or compulsion, econornic pressure, or like cases where the Party cornplaining faced no realistic alternative supplies of a dernanded and important service) "The second is what might be called 'market-wide monopolies' where it is claimed that one contracting party is the victim of abnomai market power possessed by the other and obtaining, on a relatively pervasive and durable basis, throughout the whole of the market in question." (for example, the case ofMamlay) Ibid at 392. sources of supply.""

Trebilcock also considered the market of music publishing:

"[Tlhe products (that is the service packages) offered by different suppl iers to composers are presumably widely di fferentiated. Because each package may possess a degree of uniqueness, cach supplier may have a srnail measure of ability to adjust price and output combination in relation to his differentiated product. But, provided that a substantial measure of substitutability is possible between one supplier's product and those of others, the market is as workably competitive as most real-world markets are likely to be.""

According to Professor Trebilcock, the court in Mucau/av may reduce the costs for composers to obtain publishers' services by means of the doctrine of inequality of bargaining power. However, at the same time, the court may increase the costs for publishers to provide these services. This is the sotalled "çûst increase" theory. In the practice of a competitive market, like music publishing, "no excess profits are beiny made (that is, no profits beyond a reasonable return on capital)."35 If there exists an easier way for composers to terminate the contracts in favour of publishers, publishen will correspondingiy cut the price(roya1ty) paid for composers' servicos. Beyond this theory, if the royalties for performers are also fixed at their previous level, then publishers would presumably reduce their demands for unknown composea. In this

" Ibid at 398-399.

Ibid at 399400.

'' Ibid. at 402. srnsc, the judicial intervention in the contract would in hct prejudice the benefits of the corn poser. ''

I-lowevrr, Trrbiicock's sconomic analysis, beinç applied to cases in relation to the music publishing industry, involvcs at lest two problems:

(a) If one takes a closer look at the so-called "cost-increasing" rule, one may tind that there is no reasonable ground for it in a music publishing industry. First of all, this rule is creatçd under the premise that the profits for the final product and intemediate inputs are reasonable. It seems that such a situation can only exist in a perfectly competitive market where al1 the products are consistent, and al1 contracts are the same. The music publishing market is not a "perfectly competitive market" by virtue of the fact that "the product offered by different publishers to composers are widely differentiated."" In the music publishing industry, it is unlikely that an unknown composer can negotiate a royalty rate as does a well-established composer. This unlikelihood occurs due to the low success rate typical in this field. Publishers fear that to increase the royalty rate will cause them a loss of oppominity to recoup their costs. But when the composer is successful, the publisher will make a signifiant profit by takmg advantage of the low royalty rate. This will cause an unfair situation to the composer. However, a reasonable balance between the publisher and the composer can be achieved by setting a provision

a Ibid at 402403.

" See supra note 34. for an improvemrnt in the royalty rate if the artist becomes a major suc ces^.'^ With such

an arrangement, the costs for publishers will not exceed the reasonable range since they

don't have to pay the composers too much before they become famous. It srrms that the

cost-increasing nile can be avoided under such circumstances.

(b) The principles of contract law can always be classified as two opposing values:

"on the one hand are policies supporting the institution of a free market (or economic efficiency); on the other are policies designed to prornote general economic welfare by social control (or distributional equity). Free market policies emphasize self-reliance, rninimizing disruption of plan and losses incurred on the faith of thrre being a bargain, and the presencr of clear rules to quickly and rational bargaining. On the other hand, policies desiped to promote general economic welfare by social controi include relieving hardship where enforcement would be unduly harsh, allocating losses to the party best able to spread or absorb thrm, and providing generalized rules that would prevent certain bargains being made or would encourage market changes in various industries.""

Based on Trebilcock's economic analysis, "distributive considerations per se are

likely to prove an elusive bais for judicial intervention and, more irnportantly, are ofien

likely to yield counter-productive r~ults.'~~Therefore, courts should be cautious of

using the doctrine of unconscionability in cases where the plaintiffs daim to be the

'' See EIIon John, supra note 27 at 10 1.

39 David Vaver, "Unconscionability: Pana- Analgesic or Loose Can(n)on?" (May 1988) 14 No. 1 Canadian Business L.J. 40 at 67-68. Sealso Stewart Macaulay, "Justice Traynor and the Law of Contracts" (1961) 13 Stanford L. Rev. 812 at 814-815.

JO Trebilcock, supra note 30 at 42 1 victims of insquality of bargaining power. It serms ihat the purpose of this suggested

constraint on the scopc of the doctrine of unconscionability is to highlight the concept

supporting the institution of a free market. But even Professor Trebilcock admitted that

the failure to acknowledge the comprehensive wage rate regulation existinç in an

industry like that of music publishing will make the economic analysis look simple.'"

Without an efficient tool for the examination of a market-wide monopoly, such economic

analysis seems irrelevant to the determination of judicial intervention.

Indeed, the use of a standard-form contract does not i tsel f prove the existence of a concentration in market power. However, if we accept that the underlying purpose of the unconscionability doctrine is to control the unfair agreement resulting from unequal bargaining power, then we should focus on unfairness and pay attention to the critena directly relevant to such underlying purp~se.~'

'' Ibid. at 404.

'? See Waddams. supra note 23 at 192. Chapter 7

Administration of Performen' Rights

1. Introduction: Collective Administration of Creative Rights

The first collective rights organization in the world was founded by French author

Beaumarchais in 179 1. In 1 832, Beaumarchais' organization joined wi th another authors' group in establishing SociétG des A uieurs et Composircurs Drumutiques

(SACD). SACD represented the interests of dramatic authors and composen in France.

Later in 1837, another colIective organization, the S'OCI~IL;&.Y Gens de Letlres de hmcr

(SGDL), was created to represent the interests of literary authors.' Both SACD and

SGDL, however, failed to generate much worldwide interest in the colleciive administration of creatsve rights. The lack of interest may have been the result of their focus on literary-related works narrowly limited by lanyage and culture. In contrast, music, which many describe as "the universal language of humankind," is generally considered more popular and accessible between countries than, for example, literary- related works. With the rise in popularity of music, a demand grew for musical performing rights organizations. In 1851, the first musical performing rights organization SACEM ( the Société des Auteurs, Compositeurs et Editeurs de Musique) was formed. It soon became the mode1 for ail musical performing rights societies

' David Sinaare-Guinn, Coiiective Urgunization of Copyrighis und Neighbarrirrg Hights: lnternurional Pracrices, Procedures, andUrgcznisations (Toronto: Little, Brown & Company, 1993) at 82-83.

127 throughout the world.' The purpose of SACEM has been described:

"to creatr a mechanism throuyh which a large number of composcrs, authors, and publishers could pool their resources and share the expenses of an organization that would police and protect their rights, license those rights to the many possible users, and then collect and account for al1 of those uses. It would also benefit users in that it would provide them with a single organization through which they could obtain the rights for al1 of the compositions they might want to perf~rm."~

Today, the market for public performance nghts of musical works is not limited to the category of performing music in public places. The market has geatly expanded due to recent advances in technologies, and now includrs exploitations of musical works in other areas, for example, radio and television broadcasting. This expansion, in turn, has enhanced the importance of the role of collective administration organizations.

Three points seem especially worthy of consideration regarding collective administration organizations. First, the exploitation of copyright and neighbouring rights in any commercial setting demands the operation of special skills that are expensive and difficult to obtain. A collective administration organization can provide their members necessary expertise, which individual nght owners would be unable to afford on their

Secondly, the collective administration of creative tights provides a basis for an

Ibid. at 4-5 and 83-85.

Ibid. at 5

' Ibid. at 20û-201. "international marketplace in crcative works." Today, a work created in one countq rnay soon be transmitted throughout the world. It may be extremsly difficult for a user in one country to locate a crrative rights owner outside the border. Through its rrciprocal representation agreements with foreign societies. a collective administration organization can assist the users to locate the rights owners. Users therefore do not have to waste money in negotiating with each of the individual right owners of works they wish to use?

Lastly, a collective organization can establishes a balance between the interests of creative riçhts owners and the users of creative works. For example, the users of performances have orçanized themselves into lobbying groups to protect their interests.

A collective organization of performers' rights acts as an advocate for their members, leveling the imbalance of power and enhancing perfomers' interests through iobbying efforts and litigation."

However, collective administration may not be suitable for everj category of rights among copyright goups, or neighbouring rights. Collective administration tends to suit the following rights where:

(i) a large nurnber of works in the particular creative area exist, and therefore, usen cannot easily find the creator/owners;

(ii) the possibility of negotiations between the user and owner is limited by time because of the proposed use; or (iii) al1 proposed uses cannot be effectively ovençen by the creative rights owcrs. '

A collective administration generally entai 1s several actions: "( i ) the

representation of the created rights owner; (il) licensing thosc created rights; (iii)

monitoring the uses of licensed works; (iv) collecting for licensed uses and accounting

for that income to the right's owner; (v) enforcing the rights of owners with respect to

unauthorized uses of their works."' However, some collective organizations are mainly intrnded to function as an agency between possible users and creaton. Other administrative activities, such as licensing, monitoring, collecting, and accounting, would be subject to the approval of the individual right owners. On the other hand, there are collective organizations whose collective exercises control over most administration activities (licensing, monitoring and collecting)."

It should be noted that a collective administration "involves the administration of copyrights or neighbouring rights works, not the services of the creators of those works."1° Some creator societies share leatures with administration organizations but do not involve operations as collective activities. There are various types of creators' unions whcse fuoctions primarily focus on negotiating working conditions, salary, and establishing welfare fûnding for their authorkreator memben. Often, their members are

'Ibid at 18- 19.

' Ibid. at 10.

Ibid. at 10-12.

LOIbrd.at 181. individual crrators but not rights owners. A conflict might anse, however, where unions undertake the functions of collective administration organization, contrary to the interests of their members and those of rights owners."

II. Collective Administration of Pcrformers' Rights

Administration of performers' rights may be analyzed from the various categories of statutory protections that might be provided to performers.

(a)Live performances:

For this section. "live performances" is simply defined as those before audiences.

In practice, performers in concert performances often contract with program promoters to manage their live performances. It is often provided in the !ive performance contract that "no recording, broadcasting, photographs, or video are permitted to be made of the performance."" In countries where performers' rights exist, performers are offered the rights of preventing the unauthorized fixation and the unauthorized broadcasting and communication to the public of their live performances. Although collective activities may occur in relation to these rights, they are not considered «, be the main subject for the administration of perfomer's rights.

'' Paui Sanderson. Musicians and the Law in Canacta, 2d ed. (Toronto: Carsweli, t 992) at 176 and 186. (b) Prrfomers' fixed performances:

The most important rights of performers to be administnted collsctively are the rights of public performance (broadcasting or any communication to the public) in sound recordings." Under the article 12 of the Rome Convention, the rights may bt: protected as rights to receive "equitable remuneration" instead of copvrights.

Moreover, where the performer is also the composer of the embodied musical work in the sound recording, the performedcomposer is entitled to rrceive royalties from public performance uses of that musical work, as well as royalties frorn mechanical reproduction of that musical work.

In some countries, performers also benetit from a statutory right to receive a compensation for the uses of private copyinç. The compensation takes the fom of a statutory levy imposed upon audiohide0 recording media or recording devices whereby such copying is made.

A. Collective Administration of Public Performance Rights in Sound Recordings -

Article 12 Rights of the Rome Convention

Under the Rome Convention, article 12 does not provide a right of controt, but a right of remuneration for public performance or broadcasting uses. '' The payrnent under this provision is described as a "single equitable remuneration" which can be paid to

" Sinacore-Guinn, supra note 1 at 780.

l4 tn conttast, an author right allows the owner to ccintrol the pubiic performance uses of that work. performers or phonogram producers, or to both. In some countries, a joint society has been constructed which mutually adrninisters the rights of performers and phonogram producers. In othtr countries. the administration societies separately act on behalf of the performers and phonogram producers. "

Some commentators suggest that the most effective administration of Article 12 rights is to allow the musical authon' rights societies to conduct the actual monitoring, licensing, and collection of the rights.lb This would then reduce the cost of collection generated by the creation and operation of their own collectives. This arrangement, howcver, does not consider the conflict of interest between Anicle 12 right owners in sound recordinçs (record producers and performers) and copyright owners of the underlying musical works. A separate collective society for Article 12 rights would then srem necessary.l7

( 1 ) Canada

In Canada, the Copyright Act, as amended in 1997, now grants performers and makers of sound recording a right nf remuneration when their sound recordings are

'' S. M. Stewari, In~emrionalCupyghi arui Neighbowing Righu, 2d ed. (London: Bunenuonhs, 1989) at 243.

l6 Ibid at 242.

" Sinacore-Guut, supra note t at 284. broadcast or publicly pcrformed (except retransmission).'' The broadcasting industry and commercial establishments such as bars, hotels and airlinrs are liable to pay royalties to performers and the makers of sound recordings for public performances uses of their recordings. Here, the "maker" of a sound recording means "the person by whom the arrangements necessary for the first fixation of the sounds are undertaken.""

The Copyright Board, an independent administration tribunal, will set the collective rate of this royalty. Each collective society that carries on the business of collecting royalties for the performers or the makers of sound recordings shall tile with the Board a proposed tariff of al1 royalties to be collected by the collective s~ciety.'~In examining a proposed tariff, "the Board may consider any factor that it considers appropriate,"" tg. (i) "the tariff applied only in respect of the portion of the total programming OF a user that corresponds to performer's performances and sound recordings;" (ii) "sorne usrrs, while using music to generate revenue, assist the sale of sound recordings through the playing of that music.

The payment of royalties by users pursuant to section 19 of the 1997 Act should

'' The 1997 Act, S. 19. ( 1).

l9 The 1997 Act, S. 1. (2).

3~he1997 ~a,S. 67.1 (1).

'' The 1997 Aa, S. 68.(2) (b).

Bill C-32, S. 68. (2) (b). be made in a single payment." The collective mrthod, pursuant to section 19 (2), is

divided into trvo ways: first, for sound recording of musical work, the royalty is paid to

the collective society; second, for a sound recording of liierary worli or dramatic work,

the royalty is paid to eithrr the producer of the sound recording or the pzrfomer. The

paid royalty should be divided on a 5050 basis between them.'" This division of royalîy,

however, can be adjusted by the agreement between perfomer and producer.

Legislaton have responded to the concems of the broadcasting industry, namely

the financial implications of public performance rights provisions. A special provision

now exists with an intention to reduce the impact on broadcasters. Broadcasters, excrpt

community systems and public transmission systems, will pay a fee of S 100 annually on the first 1.25 million dollars of advertising revenue." On any portion of annual advertising revenue exceeding $1.25 million, the tariff set by the Copyright Board shall be paid as follows: 33 113% of the tariff in the first year, 66 23% in the second year, and the full tarir in the third and subsequent yearsZ6

Record companies will apparently becorne the big winners of the new rights

" The 1997 Act, S. 68. (2) (a) (iii).

" The 1997 Act, S. 19 (3).

?5 On the basis of 1994 data, approxirnately 2/3 of Canada's 468 commercial broadcasters will pay only % 100. See Governent of Canada, News Release, "Copyright Reform Bolsters Canadian Culture - Legislative Highlights Sackgrounder on Bill C-32 " (Apnl25, 1996).

f6 The 1997 Act, S. 68.1 (1) (a). According to ss. 68.1 (1) (b) & (c), community systems shall pay roydties of $100 in respect of each y-, and public transmission systems shall pay 33 1/3% of the roydty set out in the approved tdinthe 6rst year, 66 23%of the approved royalty in the second year, and the fi11tarifT in the third year and subsequent years. under section 19. In cases where record cornpanies are qualified as "makers" of sound recordinçs, they are entitled to receive the royalty share collected from the broadcasting and public performance of their sound recordings. As well, where a sound recordin%IS broadcasted or played to the public, a record company as a music publisher will receive a royalty share for such public performance. It appean that the record company will be entitled to a "double dip" by wearing different hats."

Moreover, some record companies may add terms to recording contracts so as to obtain control of the performers' shares. It should be noted that, according to section

58.1 of the 1997 Act, no agreement written before April 25, 1996 in which perfomcrs assign their rights under section 19 of the 1997 Act will be construed as assiping or granting any right, unless the agreement specifically provides for the assignrnent or gant.

Contracts written on or after April 25. 1996, however, are not protectcd by this transi tional provi~ion.~'

(2) The United Kingdom

Under the CDPA 1938, sound recordings made after August 1, 1989, are protected by copyright. The first copyright owner of a sound recording is the person who

" David Vaver, "Seeing Through C-32". in "Copyright Reform: The Package. the Policy and the Politics" InsightlGlobe & Mail conference, May 30-3 1, 1996.

David Vaver, "The Copflght Arnendments of 1997: An OveMew" in Howard P. Knopt. ed., ne New Copyright Act - M-ging rhe lmpacr (Toronto:Insight Press, 1997) at 40-4 1. undertakes the nrcessary arrangements for the rnakinç of the recording."' Normally, the

first ow-ner of a sound recording is a record Company. In the United Kingdom, record compan ies iisually contract wi th the Phonographic Performance Li mited (hereinafter

PPL) to adrninister their public performance rights. The PPL covers the licenses required

for piayinç sound recordings in public, as well as those required for the broadcasting or cable transmission of sound re~ording.~"

Under the CDPA 1988, the perfomer merely has the right to consent (or not) to a recording of her or his livr performance." Upon consent to the performance being recorded, the perfomer has no further rights in the recording itself. Thus, performen are not legally qualitied to share the incorne of PPL. In practice, however, PPL does pay a portion of the income thry collect to perfomers and to Musicians' nio on.''

As for music video, record companies generally appoint Video Performance

Limited (VPL) as their agent to manage their public performance rights. The operation of VPL, however, lies beyond the irnmediate concems of perfomers since VPL merely

'9 The CDPA 1988, S. 9 (2)(a).

Julian Tunon & Cees van Rij, eds., Neighbuurirrg Righfs: Arfists, Producers adthtw Collective Socierles - report presented al the meeting of the ltrtem~tionalAi~~~~~~alion of Enfertainment Lawyers, Mictem 1990, Cames (Apeldoorn, Netherlands: MAKLU Publishers, 1990) at 1 12. In the United Kingdom, the other two organizations who aiso manage public performance right in sound recordings are the international Federation of the Phonographic Industry (IFPI) and British Phonographic Industry Limited (BPIL).

" The CDPA 1988. S. 182- 184.

" Tunon & Rij, supra note 30 at 1 12. See also Staniey Rothenberg, Copyrrght md Public Performance of Music (Linleton, Colo: F. B. Rothan, 1987) at 1 1 1. distributes the income to its members but not to performers or unions."

(3) The Republic of China (Taiwan)

Sound recording works in Taiwan are protected as copyrighted works. The only collective administration orçanization for the public performance rights of sound recording works are the Association of Recordinç Copyright Owners of R.O.C. (ARCO).

ARCO, founded in 1989, is a registered non-profit society. One major task for ARCO is to administer "public broadcasting rights" and "public presentation riçhts"'" in sound recordings and audio-visual works, and to collect royalties for its rnembers."

Currently, ARCO does not represent any rights of perfoners' share in sound recording works, nor does it allocate its royalty income to performers whose performances are involved in sound recording works. Under the Cop-vrrghr Low of 1998, performers are only granted the rights to prevent the unauthonzed fixation and broadcasting of their live performances. Once the performances are fixed, performers have no fherinterests on it.

B. Blank Tape Levy for Private Home Copying

Once recording equipment for home use has been advanced and become

------

" Tunon & Rij, supra note 30 at 1 17.

The Copyright Law 1998 (RO.C.), art. 24 and art. 25.

'' Online: ARCO Homepage

broadcast or mechanically reproduced. Private home recordings will drcreasr the interest

of the rights owners in sound recordings because those unauthorizrd copies rnight

displace the purchase of lawful phonograms and vediogarns. [t is often arçued that

unauthorized home tapinç of sound recording or audio-visual works for private use

should be considered as an infnngement of copynght.

However, private copying should not be viewed as piracy. In the case of private

copying, "the reproduction is not made for commercial gain or profit, being normally

undertaken in the privacy of home by individuals for their own uses.""' In some

countries, the private copyinç of phonograms and videograms is rven considered to be an

exemption of copyright infnngement. The United States Supremr Court in the famous

S~n-v(~etarnu~)"case held that home video recording, made by viewers for the purpose

of "time shifting" (1.e.. recording programs to be viewed at a later tirne), was a fair use

of copyrighted programs, and that the manufacturer should not be accounted a

contributory infringer. This argument, however, is not supported by the Berne

Convention which holds that such private use exceptions should be limited to only the

reproduction that "does not conflict with a normal exploitation of works concerned and

" Gillian Davies & Michele E. Hung, Muric Md Vidoo Priwte Copying - An Intemu~iomlSurveyof the Problrm and the Luw (London: Sweet & Maxwell, 1993) at 1.

" Sony Corp. of Am. v. Universal Ciry Studios* 464 U.S. 4 17 ( 1984). [hereinafter Sony]

139 does not unreasonably prejudice the legitimate interests of the author.""

Even if private home taping is recognized as copyright infinging, it is difficult for the rights owners to effectively prevent the illegal private taping. The difficulty lies in the fact that the cases of private home copying are countless and not easy to monitor. It is almost impossible to license and collect the right on an individual basis. The right conceming private copying of a phonogram was first recognized in Germany as early as

1955." By 1960, "only 3000 or so people who had purchased tape recorders had also applied . . . for permission to make private copies in retum for an annual royalty fee of

DM 17, while a buying public running into millions had not done so.'"'" In 1965,

Germany adopted the solution of imposing a levy on the manufacturers and importers of audio-recording equipment as a compensation royalty for those created rights o~ners.~'

The so-called privatc copying right, however, is not a control right. Rather. it is considered a statutory right of remuneration. Yet, this right may be problematic in vanous ways." First, one of the underlying principles for copyright and similar rights is that the "user pays." This principle, however, does not fit the private copying right. The

" The Berne Convention, art. 9 (2).

l9 Fed. Sup. Ct., BGH 18, May 1955, BGHZ 15.

40 See Sinacore- gui^, supra note 1 at 67 1 ;quoting ment, 7ne Remurrerationfor Home Taping and the Prirrcfple of National Treahnent ( 1990) 1 86.

'' Sinacore-Guinn, Ibid The requirement was expanded in 1985 to encompass both the rnanufacturers and irnporters of recording media (audio and video) and video recording equipments.

'' Vaver, supra note 28 at 44. paymznt of this right, the so-called blank tape levy, is not collected according to every

particular use of works like royalty payments. Any person who purchases audio or video

tapes is considered a potential user of works and required to pay the leu. However, some people buy the tapes merely for recording their own works for themselves. This does not affect the interests of any creative rights ownen in sound recordings. Yet, they have to pay the levy as well. Moreover, anyone who buys tapes and then records a private performance or any other works exempted from copyright protection must also pay the

Irvy. Since the blank tape levy is charged more like a tax than a copyright royalty, to impose the levy under copyright law in some countries could be attacked on constitutional ground~.~'For example,

"[u] nder the Austral ian constitution, taxation measures have to be introduced in a separate bill and cannot be mixed with non-tax measure. A majority of the Australian high court decided that the blank tape levy really was a tax and was therefore invalid because it was included in a bill that dealt with copyright matters. The Canadian constitution is different from the Australian one in this respect, so a constitutional challenge here on similar grounds is less plausible. But other dangers lurk for a measure that loses its copyright obligations of international agreements like the world Trade Organization Agreement or the proposed Multilateral Agreement on Investment. This may include an obligation to provide national treatment, something the blank tape levy scheme currently lacks.'*

( 1) Private Copying in Canada

'' .4ustraiian TF Mamrfacturers AmLtd v. Australia (1993). 25 I .P.R. 1.

Vaver, supra note 28 at 47-48. Before the recent "rnodemization" of the ( 'opyrtghr Act in 1997, Canadian copyright law did not have üny provision with respect to private home copying. The private home copying of audio or audio-visual recording is not itself a exemption of copyright infrinçement, unless it was made for the purposes of "private study or research", "criticism, review or newspaper summary" or the acts listed in section 27 (2) bm.Moreover, Canadian courts have not adopted the rule that home taping for

"tirne shifiing" is not an infringement of copyright, as accepted by the Amencan court in the Hetc~murcase.'"

tlowever, in Canada, the creative riçhts owners in sound recording or audio- visual works still cannot protect their rights from pnvate copying and cannot collect the royalties due, since rnforcement tends to be impractical. According to a report of the

Task Force on the Future of the Canadian Music Industry, approximately 44 million blank tapes were sold in Canada in 1995. Lt is estimated that 39 million of these tapes were used for private ~opyinp.'~

On Septem ber 1, 1997, Bill (2-32, an Amendment Act to the Copyrzght Act came into force. The Amendment contains a provision providing authors (composers and lyricists), performers and makers of sound recordings (record companies) to be paid for private ~opying.'~Under the Amendment, a levy will be charged on al1 blank audio

45 See Tom Hopktns ïnr 'I v. Wall & Redekop Reaity Lld, [ 19841 5 W.W. R. 555.

'6 Leglslative Highlights Backgrounder on Büi C-32 , supra note 25.

'' The 1997 Act, Part III. recording media, made or imported, and sold in Canada. It will be collectrd by the

"collecting body" designated by the Copyright Board and then redistributed to the

eligi ble beneficiaries through their collective societies."'

The collective and distributhg rate of the levy will be decided by the Copyright

Board. In doing so, according to the original Bill, the Copyright Board must consider

"the amount of the levy payable under comparable laws of other countries; the nature of

the Nonh America sound recording industry; and any prescribed criteria?"' However,

this requirernent was subsequently modified. The Act now merely requires the Board to

consider whether the proposed tariff is "fair and equitable, having regard to any criteria directcd by regulation.""*

Section 86 of the 1997 Act provides an exemption for associations rzpresrnting people with perceptual disabilities. Tapes sold to these associations are not subject to the blank tape levy. Presumably, the exemption is based on the idea that the tapes purchased by these institutes will eventually be used by disabled persons. The Act apparently does not brace the latter point thoroughly since it only provides the exemption for these associations but not for indiviiuals. The individual who purchases a blank tape to make a recording for a person with perceptual disabilities is still required to pay the levy.''

" The 1997 Act, S. 83. (8) (d) and S. 84.

'9 Bill C-32, S. 83. (9).

The 1997 Ac& S. 83. (9).

Vaver, supra note 28 at 6. According to S. 80 ( 1 ) of the 1997 Act, the pnvate copying of a "musical" sound

recordinç does not constitute an infingement of the copyright in the sound recording.

The private copying exemption does not apply to film, literary (except the music lyrics)

or artistic works. According to the <;ovrrnnieni I,~gi.sk~r~veReporf of HiII ( -32, audio

media are covered sincr tapes of musical works can be easily made and distnbuted. The

Keport, however, does not explain the basis for this conclusion. It seems unfàir that the

Amendment Act only offers relief for people who copy commercially recorded music for

private use, but leaves out those who tape drama, comedy or recitation of records for

privatr use, thus risking funher infringement of copyright. Howrver, the latter do

indirectly pay a lew when they purchase the tapes."

(2)Private Copying in the United States of America

The Audio Home Ikcording Act, enacted in October 1997, was the first private

copying legislation in the U.S.A. The Act introduced a royalty payment system and a

technical control mechanism to prevent unauthorized "senal copying"" in digital audio

recording. In comparîson with counterparts in other countries, however, the rules of

Audiio Home Recording Act are limited. The Act only applies to the audio private

'' Vaver, supra note 27

'' The Act prevents what is called "senal copying". However, individuals can produce copies directly fiom the original digital audio recordings they purchased, though they cannot make additional copies fiom the copies. Under section 1002 of the Act, any digital audio recording device imported or distributed on the US market must be fineci with a device controllhg copying known as the "serial copy management system". Davies & Hung, supra note 36 at 203. copying, and thus discounts the problem of vidéo privaté copying. Monover, the Act

only deals with digital technology. As for the cases involving analogue audio recorders and analogue recording media works, it is neccssary to examine the fair use doctrine"

under US law? In determining whether a particular use of a work can br accounted

"fair use", section 107 of the 17 U.S.C. provides several necessary factors to be considered. It should be noted that the fair use doctrine has been described as an cquitable rule of reason under the Act. Each question is to be decided on a case-by-case basis, according to the facts. In Son-v v. Unrversd

Court held that the sale of copying equipment does not constîtute contributory infringernent if the product is capable of substantial non-infring~nguses, and the video copying for non-commercial time shifting is a clear example of non-infringing use.

Under section 1004 (a) and (b) of the 17 U.S.C., the first person to manufacture and distribute or import and distnbute a digital audio recording device or recording medium has the obligation to pay royalties to creative nghts owners. However, royalties are not payable on digital audio recorders which are not designed for the "primary purpose of' rnaking a digital audio recording for private use. Accordingly, royalties are not due on professional mode1 products and equipments used for the purpose of making

SJ 17 U.S.C. 1976, S. 106 and S. 107.

'' Davies & Hung supra note 36 at 20 1-202.

Sony, supra note 37. copies of non-musical literary works, such as answenng machines."

The royalties will br collrcted by a government agency, the Rrgister of

Copyrights. The Register of Copyright will then distribute the royalty to the

representative organizations of the beneficiaries.'~nderthe Act, the royalty rate for

digital audio recording media is three per cent of the transfer price of each medium. The

rate for digital audio recording devices is two per cent of the transfer price?

The beneficiaries of the royalty include three groups of creative rights owners: the owners of sound recordings (producers); the copynght owners (authors or publishers) in the musical works; and featured recording artists who have performed a distributed sound recording* Under section 1 O06 (b) of the Act, the royalty incomes are first put into two funds: the "Sound Recording Fund" and the "Musical Works Fund". The shares among various beneficiaries are set fonh by the Act as feilows:

(i) 33 1/3% Musical Works Fund

Music Publishers 16 2/3 %

Authors 16 2/3 %

(ii) 66 2/3% Sound Recording Fund

" The Audio Home Recording Act 1992 (U.S.), S. IO0 1(2), (3).

sg The Audio Home Recording Act 1992 (US.), S. f 003.

in some specific cases concerning digital audio recording devices, section 1004 (2). (3) of the Audio Home Recordng Act imposes certain limitations on the royalty.

The Audio Home Recording Act 1992 (U.S.), S. 1007(7). Non-featured Performers 4 ?/o

Featured P ertbrmers 25 1/15 Oh

Producers 37 315 0.0

Of panicular noteworthiness, the allocation of royalties specified in section 1006

(b) of the Act cannot be modified by private agreement. The purpose for the latter provision is to protect performers and authors as the weaker parties in negotiating aL~eeernrnts."'Wi t hi n each group, however, representative organizations may establish the appropriate distribution. The above Act also includes an rxacting tirnetable for the distribution of royalties and the resolution of disputes ovrr the same.

(3) Private Copying in the United Kingdom

In the 1956 Copyright Act of the United Kingdom, there was no "private use" exception to copyright. After the copyright law amendment in 1988, sound recordings and audio-visual works were entitled a full copyright protection as the literary, drarnatic, musical or artistic works of authors. Al1 copyright ownen are afforded absolute rights to reproduce their works except for the limitations set forth in section 29 of the CDPA

1988. Section 29 provides: "fair dealing with a literary, ciramatic, musical or artistic work for the purpose of research or private study does not infhnge any copyright in the

6' Davies & Hung, supra note 36 at 205. work." Private home copying cannot be accounted a fair dealinç, unlrss the copying

wre made for purposes of "research or private study".

Althouçh the U.K. government had seriously considered the issue, the CDPA

1988 did not adopt a provision to deal with private home taping. The reason for this leçislation rejection is said to be the strong lobbying by organizations for the visually handicapped and tape rnan~facturen.~'Nevertheless, the CDPA 1988 explicitly excludes the private copying of a audio or video tape for the purposes of "time-shifting" from copyright infrir~~ernent.~~In the cases of performers' live performances, performers' consents are requirrd for the recording of their performances, except when the recording is made for private and domestic use?

It has been argued that the manufacturers of recording mediddcvices could be regarded as a joint tortfeasor and thus obliged to pay compensation to copynght owners in sound recording works. In CBS Songs Ltd and Others v. Amsrrad Consumer

Electronics pic and Another ~m.strad~~the House of Lords opposed the above view by saying that under W. K. copynght law, the manufacturer of a recording device "owed a duty not to infringe copyright and not to authorize an infringement of copyright. Ii did

'The U.K. government published a White Paper in 1986 in which a levy on blank audio tapes was introduced. See îbid. at 1 58.

The CDPA 1988 (U.K.),S. 70.

a The CDPA 1988 (U.K.), S. 182.

'' CBS hgsLfd and Others v.Amstraci Consumer Electronics plc ard Anolher, House of Lords, 1 2 May 1988 (Terne Law Report, 13 Mat 1988). not owr a duty to prevent or discourage or wam against infringement. Millions of

breaches of the law must be committed each year . . . a law which was treated with such

contempt should be amended or repealed."*

C. Performers as Composers / Lyricists

Sometimes, a performer who perfomed in a sound recording could also be the composer or the lync writer of the embodied musical work in that sound recording. In addition to a performer7s right based on hislher performance, as the author of that musical work, the performer/composer should be entitled to a copyright for the work he/she creates. Generally, when musical works are published, publishers (record companies) acquire rights from the creators and then promote and license uses of those acquired musical rights. The two pnmary sources of revenue for the musical work are the incomes derived from the rights of public performanceb7 and the rights of reproducti~n.~~In the music industry, the exercising (assigning and licensing) of these two categories of rights occur through different means. To administer the public performance rights, the publishers joined with the music creators to assign !he rights to public performance rights collective organizations. In contrast, the reproduction rights

Davies & Hung, supra note 36 at 159.

"These include broadîasong rights, cable transmission and retransmission ri@ and public perfomiing rîghts.

" These include mechanical, synchronization, transcription, and reprographie rights. are nomnally managed by music publishers. ln many countrics music publishrrs will form an agency type collective to represent thern in administering the reproduction rights." The following section introduces the perfoming right collectivr societies and reproduction right agents of musical works and their operation in Canada, the United

States and the United Kingdorn.

(1) Performing Rights Collectives Administration Organizations

In the area of musical performing rights collectives administration, every country currently has its own organizations, and the operation of these organizations may differ in detail from others. Generally, the collectives adopt a similar format in licensing the

69 See Sinacore-Guinn, supra note 1 at 748-749.

SOCAN was fomed in 1990 fiom the two musical performing rights societies, PROCAN and CAPAC. C APAC (Composers, Authors and Publishers Asrociation of Ca&) was established in 1 925 as C(Ptarh;mPe@mingl(Jghrrkiery (CPRC)and changed its name to CAPAC in 1945. PROCAN (Performrng lirgh~sOrganization of CeLtd) was formed in 1976. The precursor of PROCAN was a whoiiy-owned subsidisry ofBMI (Brdca~lMusic Inc., U.S.A). The merging of these two societies wa~primarily due to two reasons: fkst, to avoid the duplication of administrative activities and Save the operating costs; secondly, to promote Canadian music, which couid not be made with foreign ownership. See Simon Frith, Music wtd Copyright (Edinburgh: Edinburgh University Press, 1993) at 5 1. rights, collecting royalties, distributing the incomes and monitoring the uses of rights of

their members. The similanties between these societies mentioned above could be

described in several ways:

(a) AI 1 these soc i et ies are basical ly non-profi t organizations, except SESAC. Some do

noi charge membership fees, e.g., SOCAN. The others charge low fecs. For exampie,

ASCAP charges each song writer/composer $10, and each producer $50 annually; PRS

charges each songwnter/composer and each producer certain amount of admission fee.'!

(b) These collectives administer only the performing rights of musical works," and not al1 pans of the perfoming rights in a musical work. For example, most of them only administer non-dramatic performing rights, also known as "small rights", and not dramatic performing rights, also known as "grand rights", such as the rights to complete performances of operas, ballets, must be licensed directly from the copyright owner."

(c) The licensed fees are set in many different rate schedules. The fees for similar businesses that perfonn music with the same type of usage are the sarne. The fees collected by ASCAP were decided through negotiations between the ASCAP and the performing rights user groups.'' In Canada, the nites of licensed fee are proposed by

" Online: SOCAN,"SOCAN facts" (date assessed: 16 October 1998). See also online: ASCAP, "About ASCAP" (date assesseci: 16 October 1998).

The administration of SESAC includes the licensing of synchronization rights which is normally administered by the reproduction rights coiiectives.

Sidney Shemel & M. William Krasilovsky, The Busines of Music, 6th ed. (New York: Billboard Books, 1990) at 2 14-2 15. See also "SOCAN facts", supra note 71.

'' "About ASCAP", supra note 7 1. SOCAN and then determined by the Copyright Board.

(dl The niles For distribution in these societies adhere to the "follow the monry" principle: the source of incomr from various types of licenses determines whrre the income should be pooled. For example, the money collected from television stations is combined and then re-distrîbuted to those members whosc works had been performed or; televisi~n.'~ le) To identify and credit the music works used in public performance, the performing riçhts societies usually adopt a special procedure that may Vary with the user groups. For example. there are many musical performances broadcast everyday. It is impossible to monitor every performance on every radio station. The societies rnay adopt a station

"sampling" (survey) system. This sample system can be applied to ail local commercial radio stations and cable services. As for the national broadcast network or major cable services, the perfonning societies usually analyze the performance uses on an "al1 count" bais. For television and cinema, the perfonning societies analyze al1 music "cue sheets"

("census surveys") for programs broadcasted on every major networks. These "cue sheets" ("census surveys"), obtained fiom producers, distributors and broadcasters, give accurate information about '-who piayed what" in a particular program. As for live performances, the effon is made to collect the royalties from every users for ail eiigible live performances."

------'=/brd.

'6 "SOCAN fàcts"; "About ASCAP", supra note 7 1

152 (0Thrsc performing rights societies have reciprocai agreements with such societies in foreip countries so that their members may receive collectrd royalties from thosr other countries. In tum, the right owners of foreign works can gather royalties for performances rendered in any locale covered by domrstic societies."

(2) Reproduction Rights Collective Agencies

(,'unuda - Cunudian Musicd Reproduction r rghrs Agency L lm ited (C.*bfRRA)

ï'he United Sfute o/A mericu - The Harq IIox Agenc-v (IHI.2)

American Mechonicul Ri&t.s Agen- lnc (AItffU,)

The (Jnited Klngdorn - Mechunical Copyright Prorection Society, Ld (hf('PS)

In the music industry, there is usually an agreement between the writer of a musical work and a music publisher, in which the writer will authorize the publisher to license the reproduction of the musical work by mechanical rnean~.'~This, however, does not mean that the authorization of the musical work is no longer the author's concem. Under the agreement between author and publisher, the author shares with the publisher the income from any use of the music work. Whenever a user makes an agreement with a music publisher (or agent) conceming the licence of reproduction

M. W~amKrasilovsky & Sidney Shemel, More Ahtï2isBusms.s of MuRe. 5th ed. (New York: B illboard Books, 1994) at 5 1. rights, an agreement is also indirectly made between the user and author.

A reproduction rights agency is a collective society fomed by publishers to administer reproduction rights. Sevenl aspects of this type of reproduction rights societies should be noted:

(a)These collective agencies comrnonly administer three categories of rights including:

Mechanical Rights: "The mechanical right refers to the reproduction of performances of copyriçhted musical works by 'mechanical' me an^."'^ For example, if one wants to use a musical work to manufacture commercial cassettes and CDS, which are to be distributed to the public for private use, then he will need to obtain the mechanical right in that musical work.

Synchronization Rights: "A Synchronization right is the right to record a protected work in synchronous relation with visual images"80 including movies. broadcast and television programs, CD videos and home videograrns.

Transcription Rights: "Transcription rights are the rights to reproduce performances of a music work in any media for use in comection with commercial music services that provide 'background music' for such settings as stores, offices, restaurants, or other public places.'"'

(b) The agreements between these agencies and their members are non-exciusive agency

Sinacore-Guinn, supra note 1 at 759.

Ibid. at 76 1. " Ibid. agreements that permit publishrr membzrs to gant liccnses thrrnselve~.~'

(c) the rate for mechanical right licenses is grnsrally drcided by neçotiation between

record industry and publishsrs."' For example. in 1997. "CMRRA licensed mechanical riçhts on the basis of 6.6 cents per Song per copy sold or othenvise distributrd. Where the playing time is tive minutes or less, for each additional minute (or part thereof) 1.32 cents is added to the rate."" The royalty rate (January 1, 1998) for the mechanical rights license of HFA is "7.1 cents per composition or 1.35 cents per minute of playing time, whichever is greater, per record, tape or CD made and di~tributed."~'Synchronization and transcription licensing are usually issued according to individualized licrnsinp. The rates or tems of licenses are not typically set by collective agrncies.

(d) Lyric reprinting or sheet music print rights do not faIl under the mechanical licence ganted by these agencies. For authorization of the latter, the user must deal directly with the publisher. Moreover, these licences only gant authorities to reproduce the musical composition; they cannot be used to reproduce pre-existing sound recordings. For authorization of the latter, one mut obtain a licence directly from the reproduction rights

Online: CMRRA, "mechanical licensing . . and other mysterious"

Ibid. In the United States, mechanical rights are subject to compulsory statutory licensing requirernents, and the rate of royalty is determined by the wpyrigtit law. Nevertheless, there is stiil rwm for negotiation. See Sinacore-Guinn, supra note 1 at 759.

Online: CMRRq supra note 82.

" Online: HFA , "Mechanical Licensing" (las modifieci: March 1998). owner of the sound recordingM

(3)Collective Administration of the Rights in Musical Works in the R.O.C. (Taiwan)

Accordinç to the Collecave ..ldminrstrarron Orgunrruflon Ac/ of the R.O.C.

(Taiwan), enacted in November 1997, every collective organization that involves the activities of collecting, licensing of copyright on behalf of their afiliated rights owners should apply for registration to the competent authonty, namely, the Ministry of

Interi~r.'~Currently, thcre are several societies which exercise as collective administration organizations of musical copyright. However, most of them have not yet obtained the registration approval from the Ministry of Interior. Moreover, many collective society in Taiwan manages both the performing rights and reproduction rights for its members - a significant difference from collective societies in other countries.

There are various approaches in considering the issue of giving rnonopoly status to a single collective administration within a particular area of creative rights management. Several arguments in favor of monopoly statu stand out: First, a collective administration organization must be powefil enough to monitor uses of its members' works in order to effectively safeguard the interests of its memben. It has been argued that the existence of several collective administration organizations within a country may

Ibid

" The Collective Adninimution Organizazion Act 1997 (R.O.C.), art. 4. 156 actually weaken their negotiating positions against the more powerful users." Second, the existence of several organizations may lead to the loss of valuablc resourcrs due to the replication of collective administration. The latter, of course, would raise the administration costs borne by each protected work." Third, the existence of srveral societies may create confusion among users who wish to choose the most representative organization for the works they hope to use. Some of the major users would likely be required to obtain licenses from al1 societies, generating additional costs for license negotiat ion and corn pl iancr."'

On the other hand, the arguments against rnonopoly status generally base upon the assumption that consumers shouid be allowed to benefit from an economic free market. Users benefit from the free market econornies in that free cornpetition guaranties low prices and promote quality. Since creative rights owners are the consumers of services involving the collective's administration, they will benefit from the development of competing collective administration organizations."

In practice, there only exists multiple collective organizations (towards a free market) in a particular category of rights and only in several countries, such as the United

" Sinacore-Guinn, supra note 1 at 223.

" Ibid. at 224.

YO Ibid. at 226.

9' Ibid. at 228. States, Colombia, and Brazil.'" Even in these countnes the existence of multiple collective organizations has not forged a tmly free market. The assumption that competition between collectives will keep down prices paid by customrrs is diffïcult to prove as truly valid since the costs to customers have grown due to the need to obtain nghts from al1 societies. Moreover, the proof of competition among multiple collective organizations is rather difficult. For example, in the United States, two major musical perfonning rights societies, BMI and ASCAP, have been charged for antitrust ~iolation."~

Considering the scale of the market, the musical copyright collective organizations in Taiwan may be better off to move toward greater consolidation rathrr than maintain present diversity. An interesting example of suc h consolidation is the merger of two former musical perfonning rights societies in Canada, the CNAC and

PROCAN, which became SOCAN.

D. Performers' Societies

Currently, there is no performer's rights collective administration in Canada, the

United States or the United Kingdom. However, in discussing the administration of performers' rîghts protection, one cannot ignore the potential impact due to the operation of performers' associations/unions, especially the impact on the performers' livelihood.

Generally, performers' unions do not directly engage in the collective activibes of

* Ibid.

93 ibid. at 232. perfomcrs' rights. Nevertheless, they do play a roie where performers' interests are involved. The best-known stones in this field are those struggles between the Amrrican

Federation of Musicians (AFM) and the recordinçibroadcasting industries.

( 1 ) AFM: An Historical Review

In the mid-nineteenth century, several musicians' groups were founded in the

United States. The purpose of these societias was to improve the musicians' professional lives. They provided loans and other financial seivices to their rnembers during illness or unemployment. In 1 896, t hese musicians' groups gathered to cstablish a musicians' trade union, namely the Amencan Federation of Musicians (AFM). Four years later, the union expanded to serve both the United States and Canada. MMthen changed its name to the American Federation of Musicians of the United States and Canada?

The revolution of communication technology in the twentieth century has emphasized the importance of the interests of perfoming artists. Along with the new invention of recording devices and their coming into use, performers were facing competition from their own or others' recorded performances. Live musicians felt that recording musicians are responsible for their unemployment and that some profit from the commercial exploitation of recorded music should be allocated to those live

See online: AFM ,"About the AFM", "History"Chttp: //www. ami.or@ (date assesseci: 16 October 1998). performers whose performances have been displaced by record.'''

In 1943 and 1944, AFM neçotiated and signed contracts with record companies to establish the Recording and Transcription Fund. Record companies were, under the ageement, obliged to pay part of their incomes from record sales into this îùnd. The

Fund's purpose was aimed to offer job for unemployed union's members. Latcr in 1918, the trust fund was substituted by an independent tmstee. The tmstee was created for "the public interest by providing free live music and encourayiny the employment of musicians whether union members or not.'"jb

On the other hand, performers who found works as recordinç musicians felt that they as well lost significant values of their performances since the recordings of their performances could be used repeatedly without paying additional fees to them. It is unfair to ask them to share their incomes with live perfonners. Recording musicians argued that "they had a property right in the wage iiicreases which had been improperly diverted into the trust fund." Some recording musicians attacked "the legality of the trust funds on the ground of breach of their fiduciary obligations by the union and the txustee.'*'

In 1960, the union changed its negotiation objective from trust fund to wages and

95 Stewart, supra note 1 5 at 665-670.

91 Ibid. at 668. See aiso Anderson v. American Federafioi of musicians. Case No 669, 900, Cal S. Ct, LA County ( 1959). pensions. At the same time, the concept of "residuals" (reused payments) had been

introduced. Such payments were basrd on a percentage of the employer's income from

Bryond 1964, the amounts previously collected from manufaciurers in trust were halved, with one half placed into the trust, and other into a new fund - the

Phonograph Record Manufacturers' Special Payments Fund. The latter fund then sent the money to the individuals who had performed on a record during the preceding year?

(2) Current Operation of AFM

(a) AFM Agreement

The AFM Electronic Media Services Divisions (EMSD) manages agreements negotiated between the MM and the buyers of AFM rnemben' services - record companies. These ageements cover a wide range of communicated and non- communicated media including recording, radio, television and film. Such agreements provide regulations of minimum wage scales, working conditions and other unique needs of musical performers. '" It should be noted that the agreements managed by the EMSD are not really collective agreements, since they are not "entered into by individual AFM

The reason for not cdhg it a "royalty" is to differentiate performers incomes tiom the incomes of "authors". Stewart, ibid. at 670 n. 12.

'O0 Online: AFM, supra note 94. (b)Tmst Funds

Established in 1948, the: trust fund, now knowvn as the Rrcording Industries Music

Performance Trust Fund (hereinafter RIMPTF). is currently funded by royalties from

recording companies. The trust fund was originally created in order to lessen the impact

of the loss of jobs resulting from the exploitation of recordrd music. The prevailing

purpose of the fund today, howevrr, is to support a public appreciation for livr music and

to nourish the rducation and culture of the country. The trust fund now primarily

provides payments to musicians who have jobs and occasionally play 1ive performances

in public places, and not to performers without jobs.'''

Another main trust fund established by AFM is the Phonograph Record

Manufactwers Special Payment Fund (PRMSPF). Under an agreement between MM

and record manufactures (the Phonograph Record Agreement), record companies must

pay into the PRMSPF fund according to nurnber of copies they have sold in a year. The

PRMSPF then sen& the funds, following an established rate, to the musicians who had

panicipated in recordings. 'O3

'O' Sanderson, sirpra note 12 at 132, 138.

lm Online: AFM, supra note 94. See also Sanderson, ibid. at 127; and Krasilovsky & Shemel, supra note 78 at 28.

lm Sanderson, ibid. at 127- 128. See also online: AFM, supra note 94. III. Specialized Collective Administration Organizations for Performen' Rights

Once we accept the idea that collective administration is wonhy to be

recornmended in respect of performen' rights, there are two important issues needed to

be examined on a practical level. The first issue is whether the affiliation with a

collective should be voluntary or govemrnentally mandated.'@' The second issue is

whether the formation of a single or a joint collective administration organization for

performers and authors, or performers and record producers, is appropriate From a

performers' perspective.

A. Mandatory Collectivization in Relation to Performers7 Rights

Most of the arguments in favour of a mandated affiliation with a collective

administration organization were based upon necessity - some categories of creator's

rights may not be effectively protected without the mediation of the collective

administration organi~ation.'~'In respect of performers' rights, there are several arguments for the grounds of necessity:

(a) The legal concepts related to performer's protection have only recently been

introduced and only in some coumies. The collective administration organizations play

an important role in strengthening the protection of perfoners7 right against social

- --

lW Sinacore-Guinn, supra note 1 at 289.

'O' Ibid. at 295. ignorance. This cannot succeed in absence of a significant number of creators who

participate in the collectivt. effort. A system of mandatory administration is therefore

necessary in the legislation of performen' rights. However, a system of mandatory administration is not the only method for the promotion of a creative right. For çxampls, the govemment could address the problrm of social ignorance "through educational and public relations efforts, supplemented by an enforcement mechanism ihat would seek out usen and creators to advise each as to their rights and responsi bility. "'06

i b) Another argument purports that most performers have a relatively weaker bargaining power in dealing with the users of performers' rights. Individual performers cannot by themselves negotiatr a fair agreement with the usen of their performances, especially where most of the users are large companies or entities. A rnandated collectivization is therefore necessary to protect performers from their own incornpetence and from powerful user^.^^' However, a govemrnent can supervise the negotiations betwern individual performers and the users of their performances by imposing a faimess provision on a regime of petformen' right~.'*~Forced collectivization is thus not the only rneans to solve the issue of whether the performer is in a much weaker negotiating position than with powerful users.

IM Ibid. at 29 1

'07 Ibid at 293.

'" Ibid. (c)The most persuasive argument in favour of mandatory collectivization is based on the nature of the affected rights "lt sttems logically self-evident that any conception of private rights ernbodies an element of frer choicr on the part of the protected individual: the right to choose betwren two or more possibilities.""" However, in practice, an individual's choicr may be lirnited by bcing unable to adequately enforce that right.""

Practically, some individual categories of perfonners' rights (for example, the riçht of remuneration in a public performance of phonograms and the right to remuneration for home taping) are not enforceable unlrss at the instance of a collective representative.'"

Collectivization itsrlf becornes a part of these rights. "[Tlhe right may not even exist without the imposition of a collective administration schrme t hat makes the right kasible from the point of view of the government choosing to impiement that nght.""'

B. The Potrntial for Specialized Prrforrners' Rights Collectives

In this section, 1 show ways in which performrn' rights collrctives might operate to avoid possible problems. A number of issues in relation to the establishment of independent performers' rights collectives were considered.

"' /bid. at 295. See also BRT v. SABAM, Case 127/73, [1974] E.C.R 3 13; Department of Communications Task Force on Copyright Revision of the Copyright Law of Canada 13 8 (Rev. Ed. 1983). It should bc emphasized that collective administration may not cxist if copyright law fails to provide a provision under which rights could be legally executed on a collective basis. Moreover, "even if there is an established property right, çollrctives may not exist becausc the transaction costs of enforcing rights are too high relative to the gains even when collective enforcement is cho~en.""~Some interaction of this effect with the first factor, however, may occur. Here, the issue of whether the incornes of a performers' riçhts collective necessarily ovemde the costs of administration is not rsamined. However, one cannot simply "conclude that the absence of collectives implies that costs excecd benefits."I ''

One rnight suçgest rhat performers and record producrrs should contract with musical performing rights collectives which would handle their phonograrn performing rights inc~rne."~Since any user requiring an Article 12 rights licensc will also need a musical author's performing rights licence, a join executive organ would reduce the administration costs of the Article 12 rights, assurning self-operation. Moreover, the commission for authors' rights societies arising from this process could be used to improve their own administrative efficacy.""The musical performing nghts societies

lL3Douglas A Smith, Collective Agencies for the Acimin~straiiortof Copyright (Consumer and Corporate Anairs Canada, 1983) at 77.

IL' Ibid at 37

"' Sinacore-Guinn, supra note 1 at 796-797.

Ibid. at 783. See also Stewart, supra note 15 at 242. which combine the representation of creators and publishers rnay have displayed the success of a unitary or~anization."' However, the latter suggestion does not take into account the fact of potential conflicts betwezn the various groups of creative rights owners.

The suggestion of establishing specialized collective administration of performers' rights is gcneral ly grounded in two rrasons:

(a) Specinl ized collectives general ly avoid the potential contl ict between differing types or classes of creators. Performrrs and record producers art: not only the owners of the

Article 13 rights in sound recording, but are also the users of the embodird musical works. "There is natural and understandable reserve betwern any licensee and licensor - their interests arc: in obvious conflict. It is hard to dissipate that reserve and replace it with cooperation simply because one party changes hats.""" More conflicts between performçrs and authors seem to occur, "where each will be seeking to profit from a single act of exploitation, such as the broadcasting of a commercial rec~rding.""~

Similarly, conflicts may also arise between performers and phonogram producers who

'17 For these purposes, a unitary collective administration is defined as an organization that represents the interests of a wide range of rights owners and their rights within a single unified organization.

' '"inacore-Guinn, supra note 1 at 795.

' '' Ibid. at 279. See aIso Stewart, supra note 15 at 19 1 - 192. Histoncally, authors were always opposed to the granting of public performing rights in sound recordings to performers. From an author's perspective, petformers have been adequately reimbursed. They received compensation through recording contraas, and as a resuIt of free advertising for their records tiom broadcasting. are both owners and users of pe~ormances.I2O

(b) Various specialized collective administration organizations must each spend certain amounts in administration fees in order to maintain a network of licensing. In a joint society, most of the administration expenses could be combined at a lower overall co~t.'~'

However, this claim seems only partly tme. For example, if the copyright term of a work has expired, the author has no nght to benefit from othen' exploitation of the work. On the other hand, the performer who renders such work might still be entitled to receive remuneration from those uses of her or his performances. Since the execution of these two cateçories of rights are not duplicated in al1 cases, a unitary society would not benefit creators "by reducing their economic overhead through rfficiencies of scale."'"

Moreover, one should not ignore the fact that "varying fields of collective administration exist at varying levels of de~elopment."'~In many countnes, perfoners' rights and collective administration are new and within the developmental stages. Whereas, the musical performing rights societies in these same countries tend to be well-established organizations. The unification of these two different fields into one society require

''O For example, phonogram producers are the owners ofthe rights in sound recording, as well as the users of perfomers nghts when they make the sound recording.

'" Sinacore-Guinn, mpra note 1 at 25 1-28?

'" lbid at 282. See ais0 Boytha, "Where Do Authors Need to be Represented by a Professionai Oryanization in Exercising Thrir Copyright?WIPO Forum 3 1, 33. serious investments. For now, it seems that the members of the authon' rights societies will likely not want their incomes adjusted to invest in this expansion.124 Chapter 8

Conclusion

Justification of Performers' Ri~hts

The rights for a perfomer in her or his performance has been long neglected in the scherne of intellectual property law. However, the increasing combination of commercial interests between the users and owners of creative rights might encourage a balance between legislative protection for performers and other creative nghts owners.'

In considering performers' nghts protection, even authors have to admit that it is frequently the actors, musicians or singers, through their interpretational performances, who attract a potential audience and give the work its commercial value. It seems unjust that a performance which also represents the result of creative effort cannot be protectrd under such scheme.'

The justification for performers' rights can be explored under the two major categories of intellectual property theones, narnrly economic incentive theories and natural law theorieç. Conflict between these hvo systems will ofien anse over whether the protection of intellcctual property is an instrument by which the individual creators

' Julian Turton & Cees van Rij. eds., Nerghbouring Rights: Arrisrs, Producers and nerr Co~fechvc! Socirtrrs - reportspreserited at the meerwg of the htemonalAssociation of Enrercriinmerit Lmyers. Midm IYPO, C'ms (Apeldoorn Netherlands: MAKU Publishers, 1990) at 16.

' Stanifonh Ricketson, Lrnr. of hitefiectuafProperp (Sydney:The Law book Company, 1984) at 15. 86. owners can receive appropriate compensation, or whether it is an arrangement for the

enhancement of public interest. Frorn the view of economic incentive theories, a

protection for performances will encourage performers' production and therefore benefit

the public. But this conclusion has not yet been grounded in actual evidence. Even if

one assumes that performers' rights protection can in fact bnng more performances to

the public. the public's access to performances does not warrant stronger societal

interests.

In contrast, the "desert" nom which derived fiom the concepts of natural laiv theorirs shows more potential in justifying perfonen' rights. However, it seems too conclusive to say that intellectual products should be protected as creators' propem.

Each theory alonr may not solve the problem of connecting creations with rewards of a panicular nature and degree. The creation of a new type of intellectual propeq rights would not be advantageous for either creators or the public, in absence of careful observation of the social and econornic factors and of striking a proper balance between creators and users.

International Standards

The origins of intellectual property rights tend to be considered as temtorial.'

' D' Amato. Anthony & Long, Dons Enelle. eds.. Intemut~o~Ilnrellecrud Properry LIIK (London. Kluwer Law International, 1997) at 82. With the growth of the marketplace for audio and audio-visual entertainment products.

however, the need for a unified standard of protection in the field of neighbouring rights

has become the subject of recent debate among nations.

The Rome Convention provides the first international mode1 in the field of

neighbouring rights. However, the Convention has not yet successfully established a

worldwide standard for the protection of performers' rights. The situation has apparently changed aHer the enforcement of the Agreement on Trade Related Aspects of Intellectual

Property Rights (TRIPS}. Countries seeking to join the multinational treaty negotiations of WTO must now amend their laws to meet the minimum standard of the TRIPS

Ageement. As a rrsult, the hamonization of the legislation in the latter regimes can now be achieved more effectively.

The WIPO Performances and Phonogams Treaty (1996) provides not only protection of economic rights but also moral rights protection in performers' performances. Under the Treaty as well, performers are given protection including coveragr of their performances of folklore. Aiso, the Treaty addresses the issues raised by recent technolog~calmodification, such as the introduction of digital technology and the Internet. New technology yet brings the challenge of the enforcement of related rights. It remains to be seen whether the Treaty will urge towards a new world order.

National Le~islation

Today, protection for performers is generally accepted by most legal systems. Various views have arisen as to the form of protection required. The protection for

perfomers in comrnon law systems, however, is either readily accepted as a category of

copyright, or recognized relatively late afler a forma1 legal process.

In summary, three main tendencies have occurred in perfomers' rights protection

in these countries:

First, protection tends to involve a right (but not a copyight) in a separate section

of the copyright legislation. Prrfonnen are granted rights to prevent unauthorized

recording and unauthorized live broadcasts of their performances. (the C1oppglti.

Lksrgns und Putenîs .-!cf 1988 of the U.K.)

Second, protection tends to provide performen' rights provisions under the

copyri~ht.thouçh under separate provisions frorn other copyrights created by authors.

Performers are not only granted a right over the fixation and broadcasting of their live

performances, but also a nght to receive remuneration for public performance uses of

their phonograms. In addition, a blank tape le- paid by ihe imponers and manufacturcrs

of recordinç media is provided for authon, producers and performers in musical sound

recordings. (the Copyright Aaof Canada j

Third, protection tends to gant performers a right, separate frorn copyright, to

prevent unauthorized fixation and traficking of their "musical" performances. (the

ïopyrrghf Act of the U.S.)

Afier January 1998, the Copyrrghr Law of the R.O.C. recognizes performers as the authors of their performances, and therefore vesü both copyright and moral rights in

173 performers. The recent copynght revision in Taiwan was developed specifically for joining the World Trade Organization. However, the failure of enforcing the law efficiently will likely preclude Taiwan fiom becoming a qualified mernber of international society. It seems that Taiwan needs to restore the fundamental value of intellectual property rather than develop its own set of modem laws which comply with current international standards but only in a rigid, formal sense without flexibility to evolve.

Operation and Administration

No matter what theory we employ to justiS performers' rights, it would br undesirable for a legal system if the right owners cannot effectively benefit from the granting of the rights. Two questions may be frequently asked in respect of the enforcement of performers' rights: (a)should performen be allowed to assign their rights gwen the fact that rnost performers are in a weaker negotiating position against record companies?; (b)how should the administration of perfonners' rights be undenaken?

One way for national laws to protect performers' interests is to stipulate a provision that restricts the assignrnent of perfonners' rights. However, some exceptions in this area seem necessary. For example, under sectjon 192 (4) of the CDPA 1988

(U.K.), although performers' rights are not assignable, this pnnciple does not effect the ability of the performer to enter into exclusive recording agreements. In practice, some court decisions suggested that if a record Company contracts with a perfomer and takes

174 advantage of its strong bargaining position by insisting that the perfonner sign out her or his rights, the doctrine of unconscionability could be a possible ground for the performer to daim recovery.

From the nature of some categones of perfomers' rights, such as the Article 12 rights of the Rome Convention and the right to receive a blank tape levy, individual perfomers would not have the ability to administer their nghts individually. Those rights would be enforceable only at the instance of a collective representative. Therefore. it is necessary to adopt a compulsory collective system in these areas. For example, under sections 19 (1) and section 84 of the 1997 Cup-vrrght Act (Canada), these rights could on1 y be administered by collective organizations but not individual right omers.

Another important issue anses from the selection of a mode1 for performers' nghts collective administration. Considering the economic efficiency - the cost of operation and administrative expenses - one might purport that performers should join the administration organizations of authors' rights or producers' rights. The potential for a conflict of interest benveen performers and authordproducers, however, suggests that unitary collectives may be inadequate in administrating both these different groups of rights.

The function of performen' rights collectives might be similar to the performing rights societies of musical authors. Some countries may consider their own administration systems for musical performing rights as specific examples for the administration of performers' rights. However, in countries, such as Taiwan, where

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