23 October 2020
The Intellectual Property Court rendered the 109-Min-Zhu-Su-14 Decision of April 30, 2020 (hereinafter, the “Decision”), holding that the objects of the rental within the meaning of the Copyright Law shall be the “originals of works” or “reproductions of works,” and their use right can only be obtained by a transfer of possession rather than a transfer of ownership.
According to the facts underlying this Decision, the Plaintiff asserted that he was granted an exclusive rental right license of three musical works such as “Redemption,” “Spoony Roses” and “Brothers and Sisters” (hereinafter, the “Musical Works at Issue”). However, without the Plaintiff’s authorization, the Defendant made available karaoke machines containing reproductions of the Musical Works at Issue in the restaurant operated by the Defendant to its guests for profit. Therefore, the Plaintiff claimed damages from the Defendant in accordance with Article 37, Paragraphs 1 and 4 of the Copyright Law and Article 184, Paragraph 1 of the Civil Code.
According to the Decision, Article 29, Paragraph 1 and the first part of Article 60, Paragraph 1 of the Copyright Law provide that except as otherwise stipulated, authors shall have the exclusive right to rent their works; and the owners of the original works or lawful reproductions of such works may rent such originals or reproductions. Therefore, the objects of the rental within the meaning of the Copyright Law shall be the “originals of works” or “reproductions of works,” and their use right can only be obtained by a transfer of possession rather than a transfer of ownership.
It was further indicated in the Decision that the placement of karaoke machines in the stores by restaurants or KTVs for the consumers to order the songs for singing along did not involve a transfer of possession of the “originals of the works” or the “reproductions of the works” to the consumers. Even if a restaurant charges a fee for ordering the songs from the consumers or a KTV charges a fee for private rooms from the consumers, such fee, in the perception of the consumers, is subjectively a consideration for the use of the audiovisual equipment or private rooms rather than a consideration for obtaining the right to use the songs in the karaoke machines. In addition, the installation of karaoke machines in a restaurant or KTV for ordering and singing by the consumers is an act to communicate the contents of musical works to the public by allowing the consumers to order and sing the songs onsite. This is an act to use the works through “public performance,” not a rental act. Therefore, the Plaintiff’s assertion is legally groundless.
For further information, please contact:
Albert Yen, Lee Tsai & Partners
lawtec@leetsai.com
