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Moral Rights Defeated Economic Rights in the Controversially Heard Copyright Dispute “Than Dong Dat Viet” by a Vietnamese Court

11

MAR

2020

Summary of the Lawsuit

According to the information reported by many different newspapers, the plaintiff, Mr. Le Phong Linh, a painter who had worked for the Defendant, Phan Thi Informatics Technical Services and Trading Company Limited ("Phan Thi Company") represented by Mrs. Phan Thi My Hanh since 2001 as a role of an illustrator.

Upon being commissioned to draw a series of folk tale adapted from ancient characters, the Plaintiff built up about 30 characters and among them, 4 character figures were selected, Trang Ti, Suu Eo, Dan Beo and Ca Meo that are used to compose a comic book named Than Dong Dat Viet. However, Ms. Hanh claimed that it was correct that she also participated in the process of creating the comic book together with Mr. Linh.

In 2002, the forms of expression of 4 characters of Trang Ti, Suu Eo, Dan Beo and Ca Meo were granted certificates of copyright registration by the Copyright Office of Vietnam (under the Ministry of Culture, Sports and Tourism) in which recorded their ownership are Phan Thi Company but the credit of authorship was merely recorded as collective authors.

Mr. Linh participated in composing Than Dong Dat Viet until the end of episode 78, then quitted his job. Phan Thi Company subsequently hired other artists to continue continuous episodes from 79 one as well as other publications, namely Than Dong Dat Viet Khoa hoc, Than Dong Dat Viet My Thuat without Mr. Linh’s permission.

According to the first instance judgment of February 18, 2019 quoted by the press, the Plaintiff requests the court to resolve 4 claims:

(1) Recognizing that he is the only author of the above 4 figures from episodes 1 to 78, not recognizing Mrs. Phan Thi My Hanh as co-author;

(2) Forcing Phan Thi Company to stop creating and using variants of 4 characters on the next episodes Than Dong Dat Viet after the episode 78 and on other editions.

(3) Forcing Phan Thi Company to apologize publicly in some newspapers

(4) Forcing Phan Thi Company to pay attorney fees.

According to the lawsuit file, the Defendant did not agree to recognize Mr. Linh as the only author of the 4 characters Trang Ti, Suu Eo, Dan Beo and Ca Meo pertaining to the episodes Than Dong Dat Viet from episodes 1 to 78 with reasoning as follows:

  1. Ms. Hanh said that Mr. Linh signed an agreement on March 29, 2002 acknowledging Mrs. Hanh as a co-author, and at the same time consented to transfer the ownership of all 4 figures to Phan Thi Company so Mr. Linh must not violate his commitments.
  2. Mrs. Hanh was the first perso who had idea, shaped in her mind about the characters of Than Dong Dat Viet then started to hired artists, including Mr. Linh, to produce characters. During the process of creation, Mrs. Hanh personally directed, assigned tasks regarding the above 4 above characters which completely coincided with the work in question in her spiritual world.
  3. Phan Thi Company concurrently relies on the March 29, 2002 agreement as a basis to claim that Mrs. Hanh is a co-author, thus the company has the right to use these 4 images to make derivative works. Moreover, Hanh also said that Mr. Linh could not prove that he was a direct creator of the work, in particular, he could not prove his time, place, creative way, and imprints of personal creativity apart from the only ground indicated by Mr. Linh that he was credited as Le Linh painter on the cover fo the work at dispute, those which were not provided for in Decree 100/2006/ND-CP.
  4. Phan Thi Company does not agree with Mr. Linh's claim forcing Phan Thi Company to stop creating 4 character figures mentioned after the episode 78 and other publications such as Than Dong Dat Viet Khoa hoc, Than Dong Dat Viet My Thuat because Mr. Linh acknowledged that Hanh is a co-author (the agreement duly signed by him on March 29, 2002) and also transferred ownership of these 4 characters to Phan Thi Company while these copyright registrations issued by the Copyright Office of Vietnam are still valid (not yet considered invalid). Therefore, the right to make derivative works is the right of Phan Thi Company.
  5. Phan Thi Company and Mrs. Hanh do neither agree with the Plaintiff’s damage claim nor public apology because they do not violate copyright.

The table comparing 4 figures characters at dispute before and after the Plaintiff ended his employment contract with the Defendant

Characters in episodes from 1-78

Characters in episodes from 79 onward and comic series Than Dong Dat Viet Khoa hoc

Trang Ti

Coverpage Than Dong Dat Viet episode 5 (Source: http://thandong-datviet.blogspot.com/2016/09/than-dong-dat-viet-tap-5-dau-tay-xoa-no.html)

Coverpage Than Dong Dat Viet Khoa Hoc (Source: https://tiki.vn/than-dong-dat-viet-khoa-hoc-dac-biet-tap-2-tiem-hoa-ngay-tet-p439115.html)

Suu Eo

Coverpage Than Dong Dat Viet episode 32 (Source: http://thandong-datviet.blogspot.com/2016/09/than-dong-dat-viet-tap-23-trai-tim-suu-eo.html)

Coverpage Than Dong Dat Viet Khoa Hoc (Source: https://tiki.vn/than-dong-dat-viet-khoa-hoc-dac-biet-tap-2-tiem-hoa-ngay-tet-p439115.html)

Dan Beo

Coverpage Than Dong Dat Viet episode 73 (Source: http://www.nettruyen.com/truyen-tranh/than-dong-dat-viet/chap-73/101646)

Coverpage Than Dong Dat Viet Khoa Hoc (Source: https://tiki.vn/than-dong-dat-viet-khoa-hoc-dac-biet-tap-2-tiem-hoa-ngay-tet-p439115.html)

Ca Meo

Coverpage Than Dong Dat Viet episode 73 (Source: http://www.nettruyen.com/truyen-tranh/than-dong-dat-viet/chap-73/101646)

Coverpage Than Dong Dat Viet Khoa Hoc (Source: https://tiki.vn/than-dong-dat-viet-khoa-hoc-dac-biet-tap-2-tiem-hoa-ngay-tet-p439115.html)

Comparing pages with credit of episodes 74 and 79 before and after

the Plaintiff quitted working for the Defendant

(Source: vuilen.com)

Findings by the Public Prosecutor and Court

The representative of District 1 People's Procuratorate holding the right supervise compliance with the law at the hearing opined:

  1. Procuracy requested that the trial panel not recognize Mrs. Hanh as a co-author, but recognize Mr. Linh to be the only author based on the grounds (a) the application for registration of copyright made on March 29, 2002 between Mr. Linh and Mrs. Hanh; (b) the coverpage of the comic series Than Dong Dat Viet from episodes 1 to 6 stating "written and illustrated by painter Le Linh", from volumes 7 to 78 showing "painting and stories by painter Le Linh"; (c) the match between the first original manuscript of 4 characters and articles of Phan Thi Company in episodes 24 & 47; (d) there is no evidence that Ms. Hanh held Mr. Linh’s hands to draw; (d) fixation in mind is not protected by law and a person who makes comments, supports or supplies material to others who compose a work is not the author of the work.
  2. The fact that Phan Thi Company is recognized as the stakeholder of ownership of copyright over 4 characters (4 works) does not mean Phan Thi Company has the right to change the original image of the works without the consent of the author Le Linh. From the 79th episode onwards, the fact that the Defendant has created a series of other publications such as the Than Dong Dat Viet Khoa Hoc and Than Dong Dat Viet My Thuat with different variations without the plaintiff's consent would infringe the moral rights set out by Section 19 and 28 of the IP Law. Hence, it is proposed to accept the Plaintiff's requests, forcibly stop the Defendant from creating variations from episode 79 onwards, and other publications that are based on the original images created by the Plaintiff as well.

In its 23-page judgment, the people’s court of District 1, Hochiminh city ruled in favor of the Plaintiff wherein its eight findings as below are notable:

  1. An author is a person who directly creates part or the whole of a “literary, artistic and scientific work[1]. Things that are merely existing in mind (existence in the form of ideas) that have been not yet expressed outside in a certain physical form through which the creation of material or spiritual values is not a literary artistic and scientific work.
  2. On the episodes from 1 to 6, there were the words "written and illustrated by Le Linh painter", from volumes 7 to 78 on the coverpage: "written and illustrated by Le Linh". In the section of exchange with readers, there is information acknowledging the idea of ​​the comic using the status quo as the main content attributed by Mrs. Hanh while Mr. Linh studied and generated characters, scripts, layouts and drafting plans for the work. The case file shows that the Defendant did not ask for this information to be corrected, so it was reasonable to assume that the defendant acknowledged the Plaintiff's role as the only person who directly created the expression of Trang Ti, Suu Eo, Dan Beo and Ca Meo. In addition, the Defendant paid royalties to the Plaintiff for a long time from episodes 1 to 78, thus there is a basis to determine that the Defendant acknowledged the role of the Plaintiff as the author from episodes 1 to 78.
  3. Applied artwoks are the works expressed by lines, colors, shapes, compositions, according to which characters Trang Ti, Suu Eo, Dan Beo and Ca Meo must be represented by lines, color, shape, composition then to be recognized as works and protected by the law. Where if “fixation” of these characters is in existence in the form of idea, it shall be not the work and the person who made “fixation” of that idea but dit not directly create shapes, compositions, colors, lines is not the author of the form of expression of 4 characters
  4. Except for the economic rights and moral rights in the form of publication of the work, personal rights shall not arise in civil transactions but arise in the process of creating works. Therefore, even if the Plaintiff has made a written agreement with the Defendant confirming that the Defendant is a co-author, such agreement shall be null and void because the law stipulates that the author cannot transfer moral rights or personal rights to others except for the right of publication of work.
  5. The Defendant commissioned the Plaintiff to create and the two parties had otherwise agreement thus the Defendant is the owner of economic rights including the “right to make derivative work” while the Plaintiff is the owner of personal rights, including which has the right to "protect the integrity of his work, not to allow others to modify, edit or distort in whatever form, causing harm to author’s honor and prestige”. As such, the Defendant has the right to make derivative works but must not modify or mutilate the form of expression of 4 characters: Trang Ti, Suu Eo, Dan Beo and Ca Meo or misrepresenting these works in any form that harms the plaintiff's honor and reputation.
  6. According to clause 3, article 7 of Decree 105/2006/ND-CP as revised, "the basis for determining copyright infringement element is the scope of copyright protection defined in the form of expressing the original work; determined according to the characters, images, ways of expressing the characters, figures and details of the original works in case of determining infringing elements of derivative works", thereby the forms of expression of 4 characters Trang Ti, Suu Eo, Dan Beo and Ca Meo as shown in the copyright registration certificates shall be deemed as expressions of original works.
  7. Derivative work is defined in clause 8, article 4 of the IP Law as "translated works from one language to another language, or adapted, transformed, compiled, annonated or selected works”. The Defendant always believes that the variation created from episode 79 onwards as well as other publications such as Than Dong Dat Viet My Thuat and Than Dong Dat Viet Khoa Hoc whose their forms of expression differ from those of the works from episodes 1 to 78 registered with the Copyright Office of Vietnam are duly the activities of making derivative works, but the Defendant does not prove such activities belong to which activities amongst "translating, adapting, modifying, transforming, compiling, annotating or selecting”.
  8. The fact that the Defendant had changed the original form of expression of 4 characters Trang Ti, Suu Eo, Dan Beo and Ca Meo to accord with the plot, context, specific content of each episode from episode 79 onwards is also the activity for making derivative works that modifies the original version without the Plaintiff’s permission and the Plaintiff in fact did not consent has constituted a copyright infringement provided by clause 5 section 28 of the IP Law.

Based on the above findings, the court decided in favor of the Plaintiff, namely recognizing Le Linh is the only author, and to force the Defendant to stop creating and using variants of characters Trang Ti, Suu Eo, Dan Beo and Ca Meo from episode 79 onwards of Than Dong Dat Viet and other publications such as Than Dong Dat Viet Khoa Hoc and Than Dong Dat Viet My Thuat.

Bross & Partners has intensive knowledge and experience in assisting clients in defending against allegations of copyright infringement, related rights including a recent pending lawsuit where the client was claimed a record damage amount of USD 1.5 million. Should you have specific needs, please contact: vinh@bross.vn; cellphone 84-903 287 057, 84-4-3555 3466; Wechat: wxid_56evtn82p2vf22; Skype: vinh.bross.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting, litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.


[1] In accordance with the Berne Convention, to which Vietnam is a member since October 26, 2004, the definition of a protected work shall be understood as literary and artistic work” but a literary and artistic work shall include every production in the literary, scientific and artistic domain. Therefore, in its IP Law, Vietnam modifies “literary and artistic work” toliterary artistic and scientific work”

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Tel 84-24-3555 3466
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