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Tuesday, 28 April 2015

No cats are skinned, but publisher is "Berned" for Chesterton infringement

"If it be true (as it certainly is) that a man can feel exquisite happiness in skinning a cat, then the religious philosopher can only draw one of two deductions. He must either deny the existence of God, as all atheists do; or he must deny the present union between God and man, as all Christians do. The new theologians seem to think it a highly rationalistic solution to deny the cat" (G. K. Chesterton, Orthodoxy, 1908).
G. K. Chesterton
A couple of weeks ago the Spanish Supreme Court gave a judgment which synthesised the construction of the Berne Convention and the Spanish IP Law regarding the scope and duration of authors' rights in the European Union. In doing so, it confirmed the decisions of the lower Courts of Madrid and dismissed an appeal by Spanish publisher Valdemar (Enokia S.L) which was found to have exploited without due consent the works of the English theologian and philosophist G. K. Chesterton (right), who died in 1936. This was on the basis that 80 years of post-mortem protection under the Spanish IP Law of 1879 had not yet expired.

The author's rights in Chesterton's works had been vested in a UK charity, the Royal Literary Fund, which was set up in 1790 to help British writer facing financial difficulties to publish their works. The Fund's action for copyright infringement, alleging the unlawful publishing and commercialization of Chesterton's works, succeeded. Valdemar appealed to the Supreme Court, relying on two pleas.

The first plea relied on infringement of Articles 5(2) and 7(6) of the Berne Convention. Said Valdemar, the Madrid Court of Appeal had confused the scope of protection of authors' rights under Article 5 with the duration of protection under Article 7. In doing so, said Valdemar, the Court misapplied Article 5(2) by interpreting the right of the Countries of the Union to extend the terms of protection beyond 50 years from the author's death [in this case, up to 80 years from the author's death according to the Spanish IP Law of 1879], as provided by Article 7(6). While Article 5(2) recognises that authors are exempted from formalities if they wish to enjoy protection in the Countries of the Union, and that such protection is independent of the protection granted in a work's country of origin, such exemption concerns the author's entitlement to the rights, but not their duration. Valdemar maintained that the exemption should have been applied to the 50 years term of protection since that was the term established by Article 7 of Berne while, in order for Chesterton's works to be protected for 80 years, those rights should have been registered, as the Spanish IP Law of 1879 required. Otherwise, concluded Valdemar, more favourable treatment would be accorded to European authors at the expense of Spanish authors, who would this suffer discrimination on the basis of nationality.


In its second plea in law, Valdemar asserted that the error mentioned in the first plea led to the failure of the Court of Appeal to apply the rules governing the public domain, enshrined in Article 38 and 39 of the Spanish IP Law of 1879, since Chesterton's works were not registered with the Spanish Registry. Further, the Court had misapplied the fourth and fifth transitory provisions of the Spanish IP Law of 1996, which was the law applicable at the time the dispute commenced, on the duration of the authors' rights. The fourth transitory provision of the 1996 law reduced the term of protection accorded under the Law of 1879 in respect of the works of authors who died before 7 December 1987.

Valdemar's pleas were in vain.


As to the first plea in law, the Supreme Court stated that, in compliance with the principle of National Treatment, expressed in Article 5(1) of the Berne Convention, Chesterton's works should be afforded the same protection as was granted to Spanish authors: such protection must be free of registration restraints, irrespective of whatever the Law of 1879 provided. That protection would be granted for the entire term applicable under the relevant law to Spanish authors, namely 80 years after author's death, according to the Spanish IP Law of 1879 in conjunction with Article 7(6) of Berne., since duration of protection is regulated by the law of the country in which protection is claimed -- in this case Spain (Berne, first [art of Article 7(8).


Not prepared to|
be skinned ...

The Court observed that the second part of Article 7(8), which stated that 'the term shall not exceed the term fixed in the country of origin of the work' [in this case, the then-UK term of 50 years post mortem auctoris] could not apply in the view of the principle of non discrimination contained in Article 118 of the Treaty on the Functioning of the European Union and its construction by the Court of Justice of the European Union in both Phil Collins C-92/92 and C-326/92 and La Bohème C-360/00. it followed from this that the rights in Chesterton's works were entitled to protection during the entire period in protection available in Spain, making no distinction between the term stipulated in the Berne Convention and the extension contained in the Spanish IP Law of 1879. This did not mean more favoured treatment for EU authors against native Spanish authors who published under the 1879 law, or against those authors whose works entered the public domain for lack of registration under Articles 38 and 39 of the 1879 law.


There was no discrimination, bearing mind the fourth and fifth transitory provision of the IP Code of 1996. First, the 80-year term of protection was applicable to all authors who died before 7 December 1987, irrespective of their nationality. Secondly, under the application of the relevant law at the time of the dispute (ie the 1996 IP Code), those works which entered the public domain in compliance with the 1879 Law were to be considered as remaining protected since the new legislation did not recognise constitutive effects to the registration of IP rights [without prejudice of the rights acquired by third parties under the previous IP laws, as the fifth transitory provision recites].


In the end, Valdemar had to comply with the withdrawal of Chesterton's works from the market, the destruction of the works' printing blocks and the payment of compensation of 23,180.02 euros to the Royal Literary Fund.

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