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of authorship. 62 The need for a uniform, national law was so apparent that the Founding Fathers adopted Article 1, Section 8, cl. 8 with little debate.63 As noted by Madison in the Federalist Papers,

The utility of this power will scarcely be
questioned.
The States cannot
separately make effectual provision for either
[the rights of authors and inventors or the
public], and most of them have anticipated the
decision of this point by laws passed at the
instance of Congress. 64

The problems arising from inconsistent state laws ultimately led to the adoption of the preemption clause of the 1976 Act. As noted by the House Judiciary Committee in its report on the Act:

Today, when the methods for dissemination of
an author's work are incomparably broader and
faster than they were in 1789, national
uniformity in copyright protection is even
more essential than it was then to carry out
the constitutional intent.65

3. H.R. 1623 Raises Many of the Same
Questions and Creates Many of the
Same Risks as Direct Incorporation
of Berne into U.S. Law.

The Coalition appreciates the efforts expressed in H.R. 1623 to face squarely the difficult issue of the moral right by proposing a bill which treats it substantively and explicitly. Unfortunately, and with all due respect, the proposal leaves many questions unresolved. It proposes to limit the moral right in ways arguably inconsistent with the requirements of the Convention. This is not to criticize the bill, for the Coalition doubts whether it is possible to

62

See H.R. Rep. No. 7083, 59th Cong. 2d Sess. 3 (1907) (Report of the Committee on Patents on proposed revision of the copyright law).

63

See id. See also 1 Nimmer on Copyright § 1.01[A]. 64 The Federalist No. 43. at 271-72 (J. Madison) (C. Rossiter ed. 1961).

65 H. Rep. No. 1476, 94th Cong., 2d Sess. 129 (1976).

28 ·

craft any moral right provision without serious disruption to the American system of copyright because of the moral right.

For

The bill generally tracks the broad language of Article 6 bis, but that leaves vexatious questions unresolved. example, the bill does not explain or delimit how and in what context an author may "claim authorship". Nor does it scratch the surface of the troublesome question of when an authorized modification is an unlawful distortion, mutilation or other alteration that is prejudicial to honor or reputation. No standards are provided for determination or evaluation of prejudice to honor or reputation. Indeed, it is not clear whether honor and reputation embody the same or (as is suggested by the disjunctive) different interests.66

Just as courts will look to a direct interpretation of the Convention and to foreign law in the absence of any legislative guidance on the moral right, they will be forced to rely on these same sources under the broad language of H.R. 1623. For the reasons discussed above, such a result is unacceptable.

67

The bill does attempt to limit the moral right in three respects. Each is crucially important: waivability (and possibly alienability), the maintenance of the doctrine of work for hire, and the ability of a publisher to engage in customary and reasonable preparation of a work for dissemination. Unfortunately, the first two limitations are questionable under Berne; the third is an open invitation to litigation.

Waivability. H.R. 1623 does not expressly provide that the moral right shall be alienable or waivable, but does provide that nothing in section 106a (which grants the rights) shall limit the right and power of an author to freely contract concerning his moral rights or invalidate any express waiver by an author of his rights. Section 9(a). Such an uncertain acknowledgment of waivability and

66 H.R. 1623 contrasts with the current proposal for legislation in the United Kingdom, which provides numerous pages of specific rights under droit moral. The Coalition does not mean to suggest that it agrees with the conclusions expressed by the British bill; we mean only to highlight the fact that as novel a doctrine as the moral right requires carefully considered and detailed legislation if there is to be any hope of avoiding chaos.

67 See note 61, supra, and accompanying text.

alienability raises questions in light of the plain language of the Convention and the tradition of the moral right.

It is generally accepted that as a reflection of the author's personality, the moral right is not alienable.68 Although the issue of waivability is less clear, there is authority for the proposition that droit moral is not waivable. Recent French cases have uniformly struck down advance waivers and consents as inconsistent with the doctrine.69

As Register Oman testified: "the plain language of Article 6 bis (1) indicates that moral rights remain with the author even after the transfer of said [economic] rights. this makes it appear that moral rights are neither alienable nor waivable."70

In light of the uncertainty over the waivability of the right under the Convention, even if waivability were clearly provided by the bill, there would be a substantial risk that a court would strictly construe the terms of any waiver and would seek excuses to invalidate the waiver. This would be particularly likely in cases of, general advance waiver, as by an employed author, or if the fourt perceived an imbalance in

68 See, e.g., WIPO, Guide to the Berne Convention at 42-3; Sarraute, supra note 9 (discussing the inalienable nature of the right). Thus the bill currently being circulated in the U.K. reportedly provides for waiver but not alienability. Similarly, proposed Canadian legislation provides that "moral rights may not be assigned but the author of a work may waive the rights." Bill C-60, 33d Parl. 2d Sess. § 12.1(3). But see 2 Nimmer, Copyright § 8.21[A] at 8-247.

69 See, e.g., Champaud v. Editions Legislative et Administrative, Cass. civ. 1re, Dec. 16, 1986, Arret No. 346 (holding void an express waiver of droit moral by an author

of a contribution to a collective work); Fox Europe Productions v. Luntz, Cass. civ. 1re, Feb. 77, 1973, Arret No. 101 (holding a director's express contractual waiver of his right to protest changes in the film invalid as a violation of copyright law); Guille v. Colmant, Cour d'appel, Paris, Nov. 15, 1966, Gaz. Pal. 1967.1.17 (holding void as inconsistent with right of paternity, a ten-year contract between a painter and an autodealer requiring the painter to use a pseudonym on half of the paintings produced under the contract and to leave the rest unsigned). French law describes droit moral as "perpetual, inalienable and imprescriptible." Laws of March 11, 1957, article 6.

70 Oman Statement at 40 (emphasis added).

the author-publisher relationship. In any event, the uncertainty and the interjection of standard contract defenses would lead to an increase in litigation, a chilling of dissemination and a further burdening of the judicial system.

Even were broad waivers clearly valid under U.S. law, waivers would not resolve the problems posed by the moral right. First, Berne requires retroactive application of the moral right to all existing copyrighted works, including those works, to which authors have transferred all copyright interests. Introduction of the moral right would

71

effectively rewrite those contracts, requiring renegotiation and potentially substantial additional payments for past or planned modifications or uses.

Second, the injection of new issues into settled contractual relationships would be disruptive in its own right. Relationships, including freelance and other licensing relationships that have, until now, been conducted informally, would likely require written agreements. interjection of such formality would inflate transaction costs and impose additional burdens.

The

Third, in many cases publishers do not deal directly with authors. For example, photograph stock houses sell to publishers without the involvement of the author.72 Publishers or other copyright owners frequently transfer works or rights in works for further publication. Thus, the ultimate publisher may not have control over whether or not a waiver has been obtained.

Fourth, waivers executed in foreign countries may well, under conflict of law rules, be found invalid. Thus, U.S. publishers could find the need to deal differently with foreign contributors on the basis of their nationality.

In sum, although specific recognition of waivability is essential under any U.S. scheme of droit moral, the Coalition does not believe that waiver resolves the manifold problems posed by the importation of droit moral.

Work for hire. Although H.R. 1623 does not explicitly state that in cases of work for hire the employer holds the moral right, the incorporation of the term "author" suggests the bill's intent that the employer is the holder of the

72

See note 22, supra, and accompanying text.

73

rights granted by Section 106a." The Coalition agrees that such a result is essential but believes there are questions whether the result is permitted by Berne.

Numerous commentators believe that as a reflection of personality, the moral right is necessarily related to a natural person and cannot vest in a juridical entity. As Professor Kernochan has stated, "[t]he work for hire concept is generally antithetical to the droit moral view of art works as linked to the personalities of the individuals who actually create them."74 This interpretation also is embodied in French law, which grants all droit moral to the employed author. The Ad Hoc Report notes its uncertainty about the issue and concludes that "if Article 6 bis requires the recognition of moral rights in employees in any event, additional consideration of moral rights compatibility [of U.S. law] would seem warranted. Commentary suggests an absence of clarity, at least, on this point. Some authorities may feel that some moral rights, although at a diminished level, must be accorded to employed creators." 76

The work for hire concept has long been embedded in U.S. law and is essential to the smooth flow of works to the public. Any chance that adherence to Berne would disrupt settled employer-employee relationships or impose the need for formal employment contracts where none now exist is, alone, sufficient reason to oppose adherence.

"Customary standards and Reasonable Requirements." The bill attempts to meet the needs of editorial revision by permitting modifications to a work that are consistent with "customary standards and reasonable requirements of preparing a work for dissemination." Unfortunately, the very uncertainty of the exception ensures litigation.

73 "In the case of a work made for hire, the employer or other person for whom the work is prepared is considered the author for purposes of this title..." 17 U.S.c. § 201(b).

1.

74

Colum.-VLA at 687 (Kernochan Comments).

75 Under the 1957 Copyright Act in France, all rights vest in the creator of the work. Law of March 11, 1957, art. "Thus, traditional French copyright law rejects the American regime of works made for hire." Ginsburg, supra note 29, at 88.

76 Ad Hoc Report, Colum.-VLA at 616-17 n.9.