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09 August 2010
In general terms, copyright refers to the exclusive rights granted to the author of an original work to use and to authorise others to use his or her copyrighted material. Any party that uses a copyrighted work without the corresponding authorisation from the rights holder could face a claim for copyright infringement.
Since copyrights are governed by the US Copyright Act 1976, which is a federal statute, the federal courts have exclusive jurisdiction as to copyright infringement. However, the federal act does not deal with moral rights granted to authors. Moral rights (eg, attribution of authorship rights and the right to the integrity of the work) are protected by the provisions of state laws. The author has the right to be recognised as the creator of the material, and to prevent a work from being altered, distorted, truncated or shown in an objectionable context. In Puerto Rico, these rights emanate from the Intellectual Property Act 1988.
Nonetheless, in the past confusion has arisen as to ownership protection of a copyrighted work. The situation is more complicated in the context of inheritance issues. This issue was addressed by the Court of Appeals of Puerto Rico in Chavez-Butler v Venegas Hernández,(1) in which the court determined that property rights constitute part of the author's moral rights. In addition, the recognised the privative nature of copyright.
In Chavez, the state court ruled that the copyrights interests belonged to the children of the deceased author as bequeathed by will. Soon after, in Venegas-Hernández v Peer – a copyright infringement suit brought by the heirs against the widow and two music publishing companies – the Federal Court for the District of Puerto Rico stated that:
"the state case implicated legal rights that are not included within the preemptive scope of the federal Copyright Act, and are in fact reserved to the states… state courts have exclusive jurisdiction to probate wills disposing of copyright."(2)
Given that copyright is considered to be personal property, Section 201 of the Copyright Act states that the ownership of copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.
In Puerto Rico, decisions regarding property ownership in inheritance situations must be executed as provided for in the Civil Code. In cases in which a conjugal partnership exists, the code grants rights to the IP rights holder's descendants and recognises to the surviving spouse one-half of the community property, excluding the deceased's privative property. The code also grants the widow a usufruct over the heirs' participation.
In terms of succession, the state court has stated that intellectual property is considered a privative possession, as it is the very personal by-product of intellect and talent. It is the prevailing rule of law that upon an author's death, the rights over the works pass exclusively to the forced heirs by means of law.
Nevertheless, a more complicated scenario arises as to the renewal rights that are created and assigned by virtue of Section 304 of the Copyright Act. In Venegas the court found that the author's right to renew the copyright had not matured at the time of his death, and that it was necessary to distinguish between ownership rights of the original copyright and the right to renew those rights.
The court ruled that the heirs and widow each owned 20% of the renewal interest on the copyrights that arose after the author's death. However, after the case was heard by the US Court of Appeals for the First Circuit,(3) the decision regarding the renewal rights interests was overruled, with the appeals court stating that such rights were to be split 50/50 between the spouse and offspring. Unfortunately, the issue concerning voluntarily or automatic renewal was not discussed, despite the fact it would certainly have had an impact on the decision.
The federal decision regarding the ownership of renewal rights in this particular case is conflictive in the context of the state succession law. On the one hand, Section 304 of the Copyright Act recognises ownership to the widow, while on the other, Puerto Rico's law of succession sets forth that intellectual property is privative and belongs only to the forced heirs. Federal court decisions such as Venegas present a constitutional problem, particularly when the heirs already have the rights in their possession by virtue of state law.
However, in reaching its decision, the federal court pointed out that the issue pertaining to the Puerto Rico succession law was not presented before it and, therefore, it could not interpret the case situation in light of such provisions. This leaves an open door for future renewal rights cases to take exception to decisions such as that reached in Venegas, and request the court to consider Puerto Rico's particular laws of succession when dealing with such matters. This will be a challenge for federal jurisdiction in Puerto Rico, in that the court will have to determine whether a federal statute regarding copyright can interfere with the states laws of succession affecting the constitutional right to enjoy a privative property.
For further information on this topic please contact Eugenio J Torres-Oyola, Yolanda Alvarez or Carmen Rodríguez-Oller at Ferraiuoli Torres Marchand & Rovira by telephone (+78 7766 7000), fax (+78 7766 7001) or email (firstname.lastname@example.org, email@example.com or firstname.lastname@example.org)
(1) 2000 MJA 67 (2000).
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Eugenio J Torres-Oyola