By Senior Partner Le Quang Vinh

Vinh@bross.vn

Background

The civil case dates back to 2001 and 2003 when the plaintiff - Nguyen Quang Tuan sued the defendant - Dao Thai Ton for infringing upon his 4 copyrighted articles by verbatim incorporating them into the latter’s reprinted literary-criticism book titled “the Tale of Kieu – research and discussion” without the permission of the former. It is worth noting that both of the plaintiff and defendant are reportedly renowned scholars with respect to the research and critique of the Tale of Kieu.

The defendant’s critique book consists of two parts wherein part 1 embodies the author’s analyses and comments while part 2 compiled 10 articles on the same topic by others including 4 published articles by the plaintiff.

According to the first-instance verdict no. 68/2006/DSST heard by the Hanoi People’s Court, the court granted the plaintiff’s claims, ruling that the act of verbatim printing 4 articles without the plaintiff’s permission has constituted a copyright infringement whereby ordering the defendant to make apology and pay a damage amount 26,040,000VND.

The overruling made by the Appellate Court

Due to being appealed, the case was re-heard by the Hanoi-based Appellate Court of the Supreme People’s Court with its Judgment No. 127/2007/DSPT of June 14, 2007 which reversed the first-instance verdict by arguing that:

(a)    The defendant was forced to quote in a literal manner the plaintiff’s 4 articles to show up 82 errors (a total of words included in 4 articles is 16,545 words but having up to 82 errors) relating to lack of knowledge under the plaintiff’s 4 articles and although in his comments, the defendant criticized the plaintiff for dishonesty and badness at expertise, until the dispute occurred no counter-arguments by the plaintiff were responded. Accordingly, the defendant rebuilt up the whole debate for the purpose of research, disseminating information leading to the defendant’s reprinting verbatim 4 articles authored by the plaintiff is to help readers perceive the contents of debate

(b)   No modification, edition, distortion was made by the defendant, the author’s name includes in the book, thus the source and authorship were expressly made. Moreover, although “the whole and verbatim printing”, the defendant’s act of reproduction is merely quotation because he interpolated into the plaintiff’s paragraphs his comments or critiques so that readers are able to easily cross-check and recognize the mistakes available in the plaintiff’s articles, whereby it can be said that this is a scientific research paper, a completely created work by the defendant but not purely the case that this is a collection or compilation comprising multiple authors printed out for the commercial purpose.

(c)    As far as the remuneration amount of 7,000,000VND actually received by the defendant is concerned, the Appellate Court assumes that such amount received is merely from the legislations on remuneration mode, the defendant did not receive any income arising from the printing and publishing by the publisher, thus it is not possible for such amount to understand that it would involve the plaintiff’s 4 articles 

Although the Appellate Court confirmed the lower court applied correctly the applicable laws to the dispute, it decided that the defendant’s act does not violate the plaintiff’s copyright since Section 760 of the 1995 Civil Code stipulates “an individual or organization is entitled to use a work of another which has been published or disseminated, provided that such work is not banned from reproduction and its use is not aimed at business purposes and does not affect the normal exploitation of the work, not detrimental to other interests of the author or owner of the work; an individual or organization using such work shall not have to ask permission from and pay remuneration to the author or owner, provided that he/she must record or mention the name of the author and the origin of the work”

Comments

It is known that the Berne-based three-step test specifies: (1) in certain special cases, provided that (2) such reproduction does not conflict with a normal exploitation of the work and (3) does not unreasonably prejudice the legitimate interests of the author. Interestingly, even though the above lawsuit took place before Vietnam acceded to the Berne Convention, the three-step test standard in relation to limitations and exceptions to exclusive right of reproduction or also widely known as fair use defense was actually incorporated into Section 760 and 761 of the Vietnamese Civil Code of 1995.

In addition to Section 760 referred to by the appellate court above, Section 761 mentioning forms of using works without having to ask for permission or to pay remuneration states that:

1. The use of works stipulated in Article 760 of this Code includes the following forms:

a) To reproduce the work for private use;

b) To quote from the work without falsifying the intent of the author in order to make comment on or illustrate his/her own work;

c) To quote from the work without falsifying the intent of the author in order to write newspaper articles or for use in periodical publications, broadcasting and television programs, and documentary films;

d) To quote from the work without falsifying the intent of the author in order to teach or test knowledge at school;

e) To copy the work for archives and use in libraries;

f) To translate, publish works from Vietnamese into the languages of ethnic minorities in Vietnam and vice versa;

g) To perform theatrical works and other types of performing art in cultural and propaganda activities at public places;

h) To make direct audio and visual recording of performances, to report on topical events or for teaching;

i) To take photograph, televise and otherwise introduce works of sculpture, architecture, photography and applied arts displayed at public places in order to introduce such works;

j) To convert a printed work into Braille characters for the blind.

2. The right to use works as defined in Clause 1 of this Article shall not apply to the copying of architectural works, sculptural works and computer software.

The above dispute shows the two legal key issues the court has to decide are: question (1) whether the defendant’s act of copy of the other’s copyrighted works to create the former’s own critique work has fallen into any of fair use defenses stipulated in Section 760 and 761 or not?, and question (2) to what extent are the substantiality and amount of quotations beyond the threshold of accepted fair use?

We consider that the three-step test present in both Section 760 and 761 is arranged in an opposite manner, particularly, certain special cases (step 1 under three-step test) listed out consist of 11 circumstances at Section 761(1) including such situations involved in the dispute as “quoting from the work without falsifying the intent of the author in order to make comment on or illustrate one’s own work or “reproducing the work for private use” whilst both step 2 - such reproduction does not conflict with a normal exploitation of the work and step 3 - does not unreasonably prejudice the legitimate interests of the author – are incorporated into Section 760 that is responsible for confining and imposing prerequisite conditions before Section 761(1) based situations are enforceable. Hence, we think that the fact the bench court’s failure to thoroughly scrutinize and correctly understand the three-step test (included in both Sections 760 and 761 in a bit strange manner) led to a series of significant misjudgments, namely:

(a)    Quote or quotation is always quote or quotation only which never means making a full copy or reproduction of other’s work because according to multiple dictionaries including Vietnamese dictionaries, such as the Collins Dictionary “a quote from a book, poem, play, or speech is a passage or phrase from it”. Accordingly, the bench court insisted that the defendant’s using whole and verbatim copy of 4 articles without remuneration to the plaintiff is obviously wrong

(b)   Supposing that the defendant’s using 4 articles is lawful, the appellate award still showed the justice really did not take into consideration all of the limitations and conditions set out in Section 760 before applying Section 761, that states that such use neither has profit purpose nor affect the normal exploitation of the work nor detrimental to other interests of the author.

(c)    Moreover, another error made by the bench court is that copyright protection granted to a work absolutely does not depend on the quality, goodness or badness of the work whereby any work that is created and fixed in a certain material form or also known as fixed in any tangible medium of expression with originality is copyrightable. Therefore, the justification by the bench court that due to the plaintiff’s failure to counter-argue the defendant’s critique, the defendant is forced to copy the whole literal articles by the plaintiff is obviously unpersuasive.

Conclusion

Fair use, fair dealing, certain free uses or limitations and exceptions to or limitations of rights, copyright often used interchangeably in jurisprudence and copyright laws of countries all around the world is very significant legal tool to help balance the exclusive rights between copyright holders and the freedom of speech of the public. The well-reasoned acceptance or denial of fair use or copyright non-infringement defense that is inherently regarded a quite complicated seems to be far from becoming real in Vietnam. However, we should hope in near future a persuasively-reasoned judgment in Vietnam regarding the copyright-related fair use will be come out.

Bross & Partners, a Vietnamese registered Patent, Design, Trademark and Copyright agent, constantly ranked by Managing Intellectual Property, World Trademark Review, The Legal 500 Asia Pacific, AsiaLaw Profiles and Asian Legal Business. We are providing clients all over the world the reliable, affordable contentious and non-contentious IP services including IP enforcement, anti-counterfeiting, litigation and domain name recovery before courts and arbitrations. For further discussion, please get in touch with us via vinh@bross.vn or contact@bross.vn or saigon@bross.vn