7 May 2021
The Intellectual Property Law of 2005 (IP Law) was Vietnam’s first truly comprehensive legal instrument focusing on intellectual property. More than 15 years since its issuance, the IP Law has been strengthened and refined through its two amendments (in 2009 and 2019) and subordinate legal documents. Still, some provisions of the law have issues that remain controversial or unclear.
One issue that has recently drawn attention from legal scholars and practitioners is related to moral rights under the copyright regime. Under the current IP Law, the moral rights of authors/creators include the following:
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The right to give titles to their works.
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The right to attach their real names or pseudonyms to their works and to have their real names or pseudonyms acknowledged when their works are published or used.
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The right to publish their works or authorize others to publish their works.
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The right to protect the integrity of their works, and to prevent others from modifying, mutilating, or distorting their works in any manner prejudicial to their honor and reputation.
Moral rights are non-transferable, except for Point 3 as explicitly stated, and Point 4 in the case of modification of dramatic works, cinematographic works, architectural works, or computer programs. It is not clear whether such moral rights are waivable, and this appears to have never been tested before the court or other authorities. Many argue that as the name indicates (the Vietnamese term is quyen nhan than, or “personal” rights), moral rights are rights of the person, and are therefore inalienable, unwaivable, and perpetually associated with the author. Others, however, believe if there is a waivable agreement, duly agreed to by the commissioning party and the author in a voluntary manner, such agreement should be valid and respected by law, since the law does not explicitly prohibit the waiver of moral rights.
In 2019, a fierce debate arose after the verdict was announced in a copyright dispute relating to a series of Vietnamese comic books. The plaintiff in this case was Mr. Le Phong Linh, who worked as an illustrator for a publishing company named Phan Thi. At the request of Phan Thi, the plaintiff created four characters used in the popular comic series Than Dong Dat Viet (Prodigy of Vietnam). After issue 78 of the series, Mr. Linh quit his job and Phan Thi hired other artists to continue to use the images of the four characters for further development of the comic as well as for other printed matter.
Mr. Linh then filed a lawsuit against the company, requesting, among other things, that the company stop creating and making derivations of such characters, after his retirement, in any subsequent issues of the comic and in other printed matter. The court determined that Phan Thi had economic rights to the four characters, including the right to make derivative works. However, the court also ruled that because the company’s continued use of the works included alterations of the characters’ appearances (such as facial expressions and postures), without asking for the author’s permission, this use constituted copyright infringement—that is, it infringed the author’s right to prevent others from modifying, mutilating, or distorting his works in any manner prejudicial to his honor and reputation.
This verdict raised a serious concern, especially for a commissioning party, as to the possibility of violating the moral rights of a hired author. Obviously, a commissioning party has the economic rights in hand, which allow them to create a derivative work. However, based on the verdict in this trial, it would seem they still need to ask for the author’s permission before making and releasing any derivations. This could be quite burdensome, especially if the author does not show a willingness to cooperate. However, if such moral rights were clearly stipulated by law to be transferable, this would no longer be a concern.
The good news for commissioners of works for hire is that under the latest draft of the amended IP Law (draft version 3.0), for the first time in Vietnam, some of the moral rights (particularly the right to give a title to the work and the right to modify the work, regardless of the type of work) are stipulated as being “negotiable,” which would consequently make them transferable, provided that such transfer was agreed to by both parties in writing. This new provision will help minimize the legal risks of violating moral rights and facilitate a safer legal environment for operation in creative businesses. If it is included when the amended law is passed, contracting parties could reduce risk in the future by having a specific provision in their contracts concerning the permitted scope of modification of a copyrighted work.
For now, while the IP Law still prohibits the transfer of moral rights (though it remains silent or untested on the validity of an agreement to waive such rights), it is advantageous for a commissioning party to include a provision on waivability of moral rights or other similar provisions (e.g., the author does not have or claim any rights of any kind whatsoever or will not take any legal actions) in the labor contract or service agreement for work creation, to indicate the parties’ willingness right at the start of the engagement period and mitigate the potential legal risks.
For further information, please contact:
Duc Anh Tran, Partner, Tilleke & Gibbins
vietnam@tilleke.com
