This article focuses on presenting essential information and documentation a business should properly manage for effective enforcement and exploitation of their copyright and related rights, taking into account Vietnam’s law and practices. Main regulations in this regard include those that stipulate paperwork for copyright/ related rights enforcement and registration, and integrity rights of a creator in a copyrighted work created under employment or commission. From an IP law firm’s experience, these regulations often pose significant difficulties to businesses’ protection of interests in relation to their copyright and related rights.
1. Law and practice
1.1 Paperwork for Copyright and Related Rights Enforcement
Paperwork preparation for a copyright and related rights enforcement request is significant with various evidential materials required. Copyright registration certificates are indeed very important in enforcement proceedings before Vietnamese authorities. Under Vietnam’s Law on Intellectual Property (“IP Law”)1, copyright and related rights are established automatically upon creation and fixation of the works2 without registration required.3 However, holders of registration certificates shall not bear the burden of proving their ownership of the copyright and related rights in a dispute, unless there is otherwise evidence.4
Below are basic paperwork requirements in requests for copyright enforcement:
Along with the petition, the plaintiff in a copyright/ related right lawsuit must submit evidence on their right holder status and evidence on infringement, among other things:5
- Evidence on Right Holder Status: The plaintiff has to submit one of the following documents to prove their copyright or related right holder status in a lawsuit:6
- certified copies of copyright/ related right registration certificates; or
- extracts from the National Register of Copyright and Related Rights demonstrating the registration information; or
- other types of evidence proving the establishment of copyright/ related rights in the absence of registration certificate, including originals or copies of the compositions, fixations of the performances, audio/ visual recordings, broadcasts, satellite signals carrying encoded programs, together with other documents evidencing the creation, publication, dissemination the works, etc.; and
- copies of copyright or related right license/ assignment agreements, or a certification of succession, in case the copyright or related rights are subject to a license, assignment or successions.
In practice, due to limited competence of the Court in verifying evidence, the Court prefers registration certificates which clearly demonstrate the right holder status. According to some court judgments, the Court may even rely on copyright registration to determine a work’s copyright-ability, i.e. factors such as originality or artistry.7
- Evidence on Infringement: The plaintiff must submit descriptions and specimens of the protected works; specimens, related exhibits, photos or recordings of the items to be examined; written explanations and comparisons between the examined items and protected works; minutes, testimonies and other documents evidencing acts of infringement.8
- The same evidence as those set out above must be attached to the complaint for administrative enforcement against copyright/ related right infringement.
- In practice, enforcement authorities often request certified copies of copyright/ related right registration certificates as evidence of the right holder status.
Copyright and Related Rights Infringement Assessment:
In 2016, the Ministry of Culture, Sports and Tourism established the Expertise Center of Copyright, Related Rights (“ECCR”), the state agency with authorisation to issue expert opinions in copyright and related right issues, responsible for assessing copyright infringements. IP holders can obtain expert opinions from ECCR in courses of enforcement. The expert opinions are non-binding but are well considered by enforcement authorities in Vietnam.
The required documentation in a request for copyright and related rights infringement assessment by ECCR includes an application with details including general information on the right owner and allegedly infringer, summaries on subject matters for assessment, protection scopes, similarities of works and infringement signs, etc.; a detailed description of the infringing acts; and notarised and legalised copies of copyright/ related rights registration certificates. ECCR specifically requires registration certificates but no other types of evidence on the right holder status.
An IP holder without a copyright/ related right registration certificate may be placed in disadvantage in the above enforcement proceedings, despite the fact that their rights are automatically protected. The law and authorities do not specifically require the registration certificates to be issued in Vietnam, so foreign certificates are accepted as Vietnam is a member of the Berne Convention. However, as a matter of practice, Vietnamese authorities may prefer Vietnamese certificates.
1.2 Paperwork for Copyright Registration
Given the significance of a registration certificate as presented above, businesses are advised to pursue registration for their copyright/ related rights. Preparation of application for copyright/ related rights registration can also be troublesome with the following required documents/ information under the law9:
- An application with information about the applied work (content summary; date, time and form of publication) and the creator (s);
- Copies of applied works or related right items, etc.;
- Power of Attorney;
- Documents proving the right to apply for registration in case the right is subject to license/ assignment/ succession;
- Admission letter of co-creators (if any);
- Admission letter of co-owners (if any).
However, in practice, the Copyright Office of Vietnam (“COV”) also requires the following additional documents for verifying the above statutory information and documentation:
- Passport/national identity card of (each) creator;
- All employment contracts/commission decisions directly related to the creation of the works, i.e. the contracts or decisions may need to specifically mention the assignment on creation of the works;
- A declaration confirming that the creator(s) created the works on an assignment basis and by him/herself, without copying the work from any other parties – signed by the creator.
Under no circumstances does COV tolerate the absence of the above documents for registering copyrights or related rights. Businesses often have some difficulties in locating such documents since the exercise of archiving employment/ commission’s papers for purpose of copyright/ related right registration is not popular in many countries, especially those where the requirements for registration are not as stringent.
1.3 Integrity Rights of Creators
Companies should take adequate account of managing the creator integrity right issue, which may significantly affect the development of their copyrighted works.
Vietnam is a pro-author and pro-employee country where the law pays close attention to the well-being and entitlements of employed creators. Under IP Law, copyright and related rights for works made under the scope of employment shall belong to the employer, unless the parties have agreed otherwise. However, the employee is entitled to the non-transferable moral rights in their work, including rights to integrity of the work.
Under Decree 2210 guiding the IP Law regarding copyright and related rights, authors are entitled to prevent others from modifying, editing or distorting their works unless there are mutual agreements between related parties. There is an inconsistency between Decree 22 and the IP Law regarding the regulations of integrity rights, in particular:
- According to Article 20.3 of Decree 22, authors are entitled to prevent others from modifying or distorting their works in any cases, unless there are mutual agreements.
- According to Article 19.4 of the IP law, authors are entitled to forbid other persons from modifying, editing or distorting their works in whatever form, in the case such modification, editing or distortion causes harm to the honor and reputation of the author.
There has been a recent case in Vietnam that reflects the Court's viewpoint over this issue, i.e. Mr. Le Phong Linh v. Phan Thi Company (“Vietnamese Genius Case”)11. This was a dispute over developing comic characters between the author and copyright owner. In February 2019, the case was decided by District 1 People’s Court of Ho Chi Minh City with a verdict in favour of the author.12 The company that hired the author to create the comic characters, though owning the copyright, was found to infringe the author’s integrity right “to protect the integrity of the work, to not allow others to modify, mutilate or distort the works in any way that is detrimental to the author’s honour and reputation”.13 However, when drawing such conclusion in the verdict, the Court did not require any evidence on the damage to the author’s honour and reputation. The appellate trial on September 2019 rejected the appeal of the Defendant and upheld the first-instance judgement. The Court's approach in this case seems to be more in line with the provision under Decree 22 above.
In practice, the right to integrity of the works may be an issue for employers to manage and pays attention to as it would potentially block them from modifying the works created by their employees.
Below are recommendations for business in their copyright and related rights management considering the above issues:
- Archive documents in relation to the creation of work
- The documents needed for registration purpose as set out in Subsection 1.1.2 above, including copies of passport/national identity card of each creator, all employment contracts/commission decisions directly related to the creation of the works, should be well kept;
- Where the creator is a full-time employee who creates works as a daily task, establishing a mechanism for monthly docketing of the created works is recommended;
- A template for declaration confirming that the creator(s) created the works on an assignment basis and by him/herself, without copying the work from any other parties for convenient signing by the creator should be made.
- Obtain registrations in foreign countries
In case a Vietnamese registration certificate could not be obtained due to the paperwork, the right holder may consider obtaining registration certificates from other countries where the paperwork requirements are simpler. In this case, application for assessment by ECCR is highly recommended for strengthening the right holder’s stand in enforcement proceedings, if ECCR’s opinion is favourable.
- Sign Agreement on Waiver of Moral Rights:
IP Law prohibits transfer of moral rights but is silent on whether it is possible to waive such rights. It is therefore advisable for employers to sign with their employed creators an agreement in which the creators waive all moral rights in the works. This agreement can be in the form of a provision inserted in labor contracts. This agreement may pre-emptively eliminate the risk of potential claims by the employees over the works which obstruct the employer from developing/ modifying further the works.
- Internal Labor Regulations and Labor Contracts (NDA)
It is vital that the Labour Contract Template and Internal Labour Rules address the issues of copyright ownership. Companies should assert that it owns the copyright in the works created by employees during the time working for the company.
Accordingly, it is recommended that the regulations and contracts should oblige the employees to sign relevant documents to record the employer's ownership of the intellectual property created by the employee in the course of employment as soon as possible upon its creation.
Written by: Yen Vu, Trung Tran, Bao Nguyen and Yoonyoung Lee
1Law No. 50/2005/QH11 on Intellectual Property issued by the National Assembly on 29 November 2005 (“IP Law 2005”), with a number of provisions amended by Law No. 36/2009/QH12 on amendments and supplementations to a number of provisions of IP Law, issued by the National Assembly on 19 June 2009 (“Amended IP Law 2009”) and Law No. 42/2019/QH14 on amendments and supplementations to a number of provisions of Insurance Business Law and IP Law, issued by the National Assembly on 14 June 2019 (“Amended IP Law 2019”).
2Copyrights are established at the moment a work is created and fixed in a certain material form, irrespective of its content, quality, form, mode and language and irrespective of whether or not such work has been published or registered (Article 6.1 of IP Law 2005). Related rights shall arise at the moment a performance, audio and visual fixation, broadcast or satellite signal carrying coded programmes is fixed or displayed without causing loss or damage to copyright (Article 6.2 of IP Law 2005).
3Articles 6.1, 6.2 and 49.2 of IP Law 2005
4Article 49.3 of the IP Law
5Article 203 of IP Law 2005
6Article 203 of IP Law 2005, guided under Article 24 of Decree No. 105/2006/ND-CP Detailing and Guiding the Implementation of A Number Of Articles of The Law on Intellectual Property on Protection of Intellectual Property Rights And on State Management of Intellectual Property issued by the Government on 22 September 2006 (“Decree 105”) amended under Article 1.4 of Decree No. 119/2010/ND-CP amending and supplemeting a number of Decree 105 issued by the Government on 30 December 2010 (“Decree 119”).
7Judgment No. 213/2014/DS-ST issued on 14 August 2014 by Tan Binh District People’s Court of Ho Chi Minh City (“Judgment 213”). In this case, the Court denied copyrightability of images as they have not been registered.
8A scanned copy of the judgment (in Vietnamese only) is available at: http://banan.thuvienphapluat.vn/Uploads/DocumentAttackFile/70be69ce-fab5-4a6f-a6dd-56a9cdc61f0f/213_2014_DSST.pdf.
9Article 25, Decree 105
10Article 50, IP Law
11Decree No. 22/2018/NĐ-CP on Guidelines for Certain Number of Articles of the IP Law 2005 and Amended IP Law 2009 issued by the Government on 23 February 2018
12Judgment No. 35/2019/DS-ST issued on 18 February 2019 by District 1 People’s Court of Ho Chi Minh City
13Tuoi Tre News, Artist wins copyright row over characters in Vietnam’s longest-running comics after 12-year lawsuit. A summary of the case (in Vietnamese only) is available at: https://tuoitrenews.vn/news/lifestyle/20190219/artist-wins-copyright-row-over-characters-in-vietnams-longestrunning-comics-after-12year-lawsuit/48995.html
14Article 19.4, IP Law