Vietnam Courts: Economic Rights Beaten out by Moral Rights in the Lawsuit Than Dong Dat Viet and Warning the Copyright Holders about Likely Being Sued by the Authors

Than Dong Dat Viet

Contact  email:  vinh@bross.vn

Two  Core  Legal  Issues  and  the  Reason  Why  the  Economic  Rights  Lost  out  to  Moral  Rights?

The more-than-decade intellectual property rights dispute between the  copyright owner and author related to the famous comic series "Than Dong  Dat Viet" finally ended  with  the  first  instance  judgment  no. 35/2019/DS-ST  dated February 18, 2019 of the People's Court of District 1, Ho Chi Minh City  and the appellate judgment no. 774/2019/DSPT of September 3, 2019 by the  People's Court of Ho Chi Minh City in favor of the Plaintiff (an artist author).

This case has only two key legal issues. Firstly, whether the Defendant  has the entitlement to co-authorship for the mediums of expression of 4  characters Trang Ti, Suu Eo, Dan Beo and Ca Meo if she is the first person having  the idea and shaping in her mind about those 4 characters, personally directing  and assigning tasks to the Plaintiff? Secondly, as the copyright owner, does  the Defendant have the right to use variations of the forms of expression of 4characters to continuously compose volume 79 onwards and other sets of manga  comics?

According to the court record, the Plaintiff cooperated with Defendant,  Phan Thi Informatics Technology Services and Trading Company Limited (“Phan Thi  Company”) represented by Ms. Phan Thi My Hanh, under a labor contract since  2001 as an illustrator. The Plaintiff created about 30 characters and out of  which only 4 characters Trang Ti, Suu Eo, Dan Beo and Ca Meo were chosen to  produce a comic book titled Than Dong Dat Viet. Due to a conflict, the  Plaintiff had terminated the employment contract with the Defendant after he  completed episode 78.

The Plaintiff  brought a civil action against the individual Defendant (Ms. Hanh) and entity  Defendant (Phan Thi Company) asking the court to recognize him as the sole  author for episodes from 1-78, petitioning the court to reject Ms. Hanh's  request to acknowledge her as the co-author, and requesting the court to forbid  Phan Thi Company to form and use variations of 4 characters available in  subsequent series Than Dong Dat Viet after volume 78 and in other newly produced  manga comics by the reason that such continued formation and use have infringed  upon his moral right to the integrity of the work under Section 19(4) of the IP  Law.

On the contrary, regarding  the moral rights, the Defendant assumed that she must have been credited as a  joint author because she was the first person having the idea of ​4 characters  that were clearly shaped in her mind and the Plaintiff was only hired to  materialize those ideas to the outside world. With respect to the economic  rights, the Defendant asserted that she is duly the copyright owner for 4characters, so her use of 4  characters to continuously develop volume 79  onwards and other publications namely Than Dong Dat Viet Khoa Hoc and Than Dong  Dat Viet My Thuat shall obviously belong to her right to make derivative works pursuant  to Section 20(1)(a) of the IP Law, meaning that the Defendant did not violate  the Plaintiff’s moral right to integrity.

Both first  instance court and appellate court dismissed the Defendant’s request for  recognition of her as the joint authorship because the written agreement to  name the Defendant as a co-author when registered with the Copyright Office was  null and void. The first instance court found that the Defendant is the owner  of moral right to "publish or permit others to publish the work"  and all economic rights including the right to "make derivative works"  while the Plaintiff is the owner of moral rights including the right to "protect  the integrity of the work, forbid other persons to modify, mutilate or distort  the work in whatever form, causing detriment to the author’s honor and  reputation". Thereby, the court of first instance held that Defendant's  change of the original expression of 4 characters to match the plot, context  and content of each comic volume from volume 79 onwards as well as the comic  series Than Dong Dat Viet Khoa Hoc and Than Dong Dat Viet My Thuat were the activity  of making derivative works with modifying the original form of expression  without a consent by the Plaintiff. Agreeing with the view of the court of first  instance, the court of appeal concluded that the Defendant is entitled to make  derivative works but must not modify, mutilate the mediums of expression of 4 characters  or distort these works in whatever form, causing harm to the author’s honor and  reputation.

Likely  Explosion of Moral Right Lawsuits by Authors to Preclude Copyright Owners from  Transforming or Disposing of Their Acquired Works?

The  first consequence from Than Dong Dat Viet lawsuit is that any written agreement  to name as a sole author or joint authorship signed between the commissioning  parties, employers or copyright transferees and the other party being the  commissioned parties (eg. artists, creators) pursuant to independent contractor  contract (commissioning agreement), labor contract, copyright assignment  contract shall be declared invalid by the court in case of dispute because  Vietnamese IP law provides for the moral right of paternity (giving attribution  or credit) and moral right of integrity of the work are inalienable and  non-transferable regardless of whether the author no longer holds any economic rights.

However,  the bigger concern is that potential investors, employers, assignees may face  risks of being sued for infringing upon the author’s exclusive right of  integrity of his/her work, especially when the authors abuse their moral rights  to take legal action on account of making derivative works with amending the  mediums of expressions of their original work.

Bross & Partners, a Vietnam intellectual  property law firm ranked Tier 1 in 2021 by Legal 500 Asia Pacific, has  experience and capacity to resolve intellectual property rights complex  disputes regarding trademark, copyright, patent, plant variety and domain name  in Vietnam and abroad.

Should you need any assistance, please contact:  vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross;Wechat: Vinhbross2603.