Don't Forget About Moral Rights
Moral rights are the right “to claim authorship of the software, to object to or prevent the modification of any software or to withdraw from circulation or control the publication or distribution of any software, and any similar right, existing under judicial or statutory law of any country in the world, or under any treaty, regardless of whether or not such right is denominated or generally referred to as a ‘moral right.’” Managing Risks in Computer Contracts in Data Processing Agreements § 1.261 (William A Hancock ed., April 1997).
Under the Berne Convention, “moral rights” in a work may exist in the author regardless of the author’s status as an employee or contractor. Moral rights are separate and distinct from any other ownership rights generally provided for under copyright law.
Moral rights encompass three rights: integrity, paternity, and disclosure rights. Integrity rights provide that the creator of the work must consent to any change to the work to protect against the derogatory treatment of the work. Paternity rights provide that authorship must be attributed to the author and that a third party cannot falsely attribute development of the work. Further, the author’s name cannot be used in association with the work he did not complete. Disclosure rights allow the creator of the work to control the display of his work. For a general discussion see Note, Moral Rights: A Copyright Conflict Between the United States and Canada, 1 Sw.J.L & Trade in the Americas 171 (1994); Kwall, Copyright and the Moral Right: Is An American Marriage Possible?, 38 Vand. L. Rev. 1 (1985).
The Canadian Copyright Act, for instance, considers moral rights to encompass “paternity rights” (the right of the author to have his or her name appear as the author of the work in all public uses) as well as “integrity rights” (the right of an author that his or her work not be mutilated or altered). Revised Statutes of Canada Chapter C-42 (13), (14) and (15) (1985, as amended). Such rights may prove troublesome in the case of software that is continuously modified or where marketing considerations preclude identification of the author.
Articles 8 and 9 of the Berne Convention establish the author’s right of ownership at the time of creation. Under the Berne Convention, an author’s moral rights are “inalienable,” and thus it is unlikely that such rights could be contractually transferred by a contractor to an employer. Berne Convention Article 6 bis. Furthermore, a waiver of such rights may be difficult or impossible to enforce in some jurisdictions. Some countries allow moral rights to be waived but not assigned. In such countries, an employer hiring a contractor to perform work would be well advised to include a waiver provision in any legal document with the contractor to protect against ownership claims by the contractor at a later point in time. In addition, some lawyers require the contractor to affirmatively state that he or she will not assert his or her moral rights.
A model moral rights waiver is as follows:
Consultant hereby irrevocably waives, and covenants not to assert, any and all moral rights in connection with the Services and Deliverables, and shall cause its employees and subcontractors performing services on behalf of Licensee to irrevocably waive and covenant not to assert any and all moral rights in connection with the Services and Deliverables.
While signatories to the Berne Convention are typically required to recognize and comply with the Berne Convention’s requirements on an author’s moral rights, the United States does not recognize broad moral rights. The United States has enacted legislation affording limited moral rights to prevent mutilation or destruction of visual works of art only, and only under certain circumstances. 17 U.S.C. §§ 106, 113, amended by Pub. L. No. 101–650, § 604, Dec. 1, 1990. The unwillingness of the United States to recognize moral rights is evidenced by its insistence that the General Agreement on Tariffs and Trade (GATT) and North American Free Trade Agreement (NAFTA) specifically provide that the United States is under no obligation to recognize such rights.
The question of whether a U.S. employer would have to recognize an offshore contractor’s moral rights under the Berne Convention is closely tied to the issue of how the Berne Convention is implemented in countries that do not deem treaties to be self-implementing. See Nimmer & Geller, International Copyright Law and Practice § 3 pp. 69–76 (1993). The answer to that question is found in Article 36 of the Berne Convention, which provides that:
1. any country party to the Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention; and
2. it is understood that, at the time a country becomes bound by this Convention, it will be in a position under its domestic law to give effect to the provisions of this Convention.
Therefore, the Berne Convention appears to leave the decision about self-implementation of the treaty to each individual member country.
This has also been the position of the United States, which has never viewed the Berne Convention to be self-implementing. The United States acceded to the Berne Convention by means of the Berne Convention Implementation Act of 1988. Pub. L. No. 100–568 (Oct. 31, 1988). In doing so, the United States included an express provision denying the self-implementation of the Berne Convention. Id. Because the Berne Convention is not self-implementing, the Berne Convention’s provisions are not by themselves enforceable in U.S. courts. Moreover, the United States Copyright Act specifically declares that no right or interest in a work protected under Title 17 may be claimed by virtue of, or in reliance upon, the Berne Convention’s provisions or the United States’ adherence to the convention. Pub. L. No. 100–568 § 4(c) (Oct. 31, 1988). In other words, neither the Berne Convention itself, nor the fact of adherence to the convention, will affect the current law of the United States. In one of the few U.S. cases addressing moral rights, the Seventh Circuit Court of Appeals rejected their application in the United States. Vargas v. Esquire Inc., 164 F.2d 522 (7th Cir. 1947) (moral rights while recognized by the civil law of foreign countries are not recognized by the laws of the United States).
Because U.S. law does not recognize most moral rights, a U.S. employer hiring an offshore contractor in a jurisdiction that is a signatory to the Berne Convention need be less concerned about the applicability of moral rights if the employer can ensure that U.S. law will govern in case of a copyright dispute between the parties and if the work will only be used in the United States. In an attempt to accomplish this, the U.S. employer may select U.S. law by including in a contract with the offshore contractor a choice of law clause. However, this approach is not entirely free of problems.