‘Jurisdiction and Copyright Law’
by Mireille van Eechoud

• Materials to read before the course

1. Annette Kur, ‘Principles governing jurisdiction, choice of law, and judgments in transnational disputes: A European Perspective’, Computer und Recht Int. 2003 no 3, p. 65.
   
   

2. 'Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters', p. 1-23.

General rules

Article 1 Scope

Article 2 Domicile defendant (forum rei general rule)

Article 3 Relation to national jurisdiction rules

Article 23-24 Party Choice of forum (explicit/tacit)

 

Rules for specific actions relevant to copyright:

Article 5(1) and 5(3) Contracts and Torts

Article 22(4) Validity and registration of intellectual property rights

Article 18-21 Employment contracts

Article 31 Provisional measures

 

Rules for consolidation of claims:

Article 6 Counterclaims, closely connected actions with different defendants

Article 23 Lis pendens (same cause of action, same parties)

Article 24 Related actions

• Optional reading material

1. Th.M. de Boer, 'Chapter II. Methods and objectives of private international law, from: Facultative Choice of law, The Procedural Status of Choice-of-Law Rules and Foreign law', Recueil des Cours volume 257, 1996, p. 271 - 30
   
   

2. André Lucas, 'Private International Law Aspects of The Protection of Works and of the Subject Matter of Related Rights Transmitted over Digital Networks', WIPO paper WIPO/PIL/01/1 Prov., dec. 2000.
   
   

• Questions for discussion

1. Ownership in cuban music

  Case based on: Peer International et al  v Termidor Music Publishers Ltd (16 Nov 2006, [2006]  EWHC 2883 (Ch)).

  The case

A dispute over who owns the copyright in music created by Cuban musicians in Cuba. Claimants Peer are an American music publishing company and its UK subsidiary, claiming to own the (UK) copyright in Cuban music. They bring an action in the UK against Termidor, defendants are UK and German established music publishers who claim exclusive exploitation rights in the music, obtained from the Cuban state owned music publisher ECM. In the course of the proceedings ECM (Editora Musical de Cuba) became defendant on application of Termidor, since Termidor had acquired its exploitation rights from ECM.

Background:

American Ralph Peer entered into contracts with Cuban musicians/composers in the 1930-50s, ostensibly acquiring their intellectual property in music for (reportedly) very little consideration. At the time, Cuban style music was popular abroad. The US and Spain were important markets. The picture painted of Ralp Peer is diverse. According to Lindsay J in his final ruling: ‘Peer [Inc.]…, paints Ralph Peer as a connoisseur of Cuban music throughout the 30s, 40s and 50s.  EMC … by contrast seeks to draw him as a quasi-monopolist who drove impecunious composers to accept the terms, sometimes misleading but always, says EMC, unconscionably ferocious in Peer’s favour on a take-it-or-leave-it basis.”

Most of the agreements contained no provision on applicable law, but some did, for the laws of Mexico and New York USA.

After the Cuban revolution Peer closed its Havana office. There were no more contacts between Peer Inc and the composers, and no royalties were paid due to the embargo. After the revolution, the Cuban government established a body representing Cuban authors and composers Musicabana. Its successor EGREM was founded in the 1960s and in 1993 the publishing activities were separated in the company ECM, or  Editora Musical de Cuba.

By law, any agreement on the transfer and/or exploitation of work by Cuban musicians needed approval of EGREM/ECM. Lacking such approval an agreement was deemed null and void (Cuban Act 860 of 1959). Failure to have pre-existing agreements between publishers and artists approved would lead to the publisher forfeiting his rights. The artist would then be free to enter into other publishing agreements. Peer had not submitted its contracts with the Cuban musicians for approval as prescribed by Act 860.

Cuban music became very succesful throughout the world in the 1990s (Buena Vista Social Club etc.), which sparked conflicts over the exploitation of existing catalogues. In the late 1990s Peer hired a Cuban lawyer to re-establish contact with the (heirs of the) composers, to obtain reconfirmation that it owned the copyright. A complication is that under the laws of some jurisdictions copyright reverses to the authors or his estate (or did so in the past) without express renewal by the author. Prior to 1959, the UK copyright act contained a reversion clause. It provided that 25 years after the author’s death, the copyright would devolve automatically  “on his legal personal representatives as part of his estate”. The author could only prevent reversion by Will.

The UK are an important hub in the music industry, from which many records with cuban style music are published. In the UK, the reproduction rights in musical compositions are collectively managed by the Mechanical Copyright Protection Society (MCPS). As a result of the dispute over ownership, MCPS registered the songs as subject to dual claims and reserved payments.

Questions:

1. Under the Brussels Regulation, how would you rate the jurisdiction of the English court,
   
   1) In relation to: Peers’ action against Termidor claiming ownership of the copyrights.
   2) A (potential) counterclaim by Termidor seeking judgment that the agreements between Peer and the composers are void on grounds of misrepresentation/fraud/undue influence.
   3) A (potential) counterclaim by ECM seeking judgment that Peer infringes it copyright .
   
   What do factors do you expect to be relevant in ascertaining which substantive law govers:
   4) the agreements between composers and Peer. 
   5) the ‘further dealings’ between estate and Peer .
   6) the agreement between ECM and Termidor .
   7) the question of ownership of the copyright.
   8) the question as to whether Termidor infringed copyright.