A Place Called Silence (the Movie) is a suspense thriller by the reputable director Sam Quah, who previously directed the blockbuster Sheep Without a Shepherd in 2019. According to the news, the Movie was first released in 2023 during the Taipei Film Festival, and then in cinemas across China in 2024. The Movie has achieved significant commercial success by grossing over RMB1.332 billion at the box office. Despite its commercial success, a recent judgment by Taiwan’s Intellectual Property and Commercial Court (the IPC Court) sheds light on another aspect of the success story of the Movie.
The case arose out of a copyright dispute over the use of the film score (the Score) of the Movie for promotional events in 2023 and 2024. The plaintiff, Ms. Shi, the arranger of the Score, filed a lawsuit against the general director of the Movie, Ms. Wu, alleging, among others, that:
The plaintiff contributed to the creation of the Score for the Movie;
The plaintiff should be recognised as a joint author of the Score; and
The defendant violated the plaintiff’s copyright by, without the plaintiff’s consent, authorising use of the Score during the promotional period of the Movie.
The defendant argued that no violation occurred because the Score is a commissioned work, and, under Article 12 of the Copyright Act, the defendant, as the party who funded the creation of the work, should be entitled to use the copyrighted work. Furthermore, the plaintiff was aware of the Movie and the intended use of the Score right from the start, implying at least the existence of implicit consent for the defendant’s use of the Score.
The ruling by Taiwan’s Intellectual Property and Commercial Court
On August 6 2024, The IPC Court entered a decision in favour of the defendant, determining the following:
According to Article 8 of the Copyright Act, “A joint work is a work that has been completed by two or more persons where the creation of each person cannot be separately exploited.” Furthermore, Article 40 of the same provides that “In the case of a joint work, each author's share of the ownership of such a work shall be as stipulated by the joint authors; where no stipulation has been made, ownership shares shall be determined according to the degree of each author's creative contribution. Where the degree of each author's creative contribution is not clear, it shall be presumed that each author owns an equal share.”
In this case, according to the contract submitted by the defendant, the plaintiff, as the arranger, was responsible for composing, recording, and coordinating the performance of the vocalist, the cellist, the violinist, the backing vocal, and the synthesiser. The defendant, as the general director, was entrusted by the movie company to produce the Score. Based on the records of correspondence between the parties, the defendant and the plaintiff co-worked with each other closely throughout the creation of the Score, including the use of instruments and the synthesiser, and regarding the style and theme of the music. The IPC Court therefore opined that the plaintiff’s and defendant’s contributions to the Score are inseparable parts of the musical work and recognised both parties as joint authors of the Score.
With regard to the plaintiff’s allegation that the defendant unlawfully authorised use of the Score for promotion during the Taipei Film Festival, although the contract between the plaintiff and the defendant is silent about use of the Score for the Movie, the IPC Court found that there is sufficient circumstantial evidence suggesting that the defendant’s use falls within the contractual scope. For example, when approached by the defendant, the plaintiff was clearly advised that the purpose of the contract was to create the Score for the Movie. The plaintiff also knew the defendant was the general director entrusted by the movie company to produce the required Score, and understood that the Score would be used for the marketing campaign of the Movie. Additionally, the correspondence between the parties also indicates that the plaintiff knew the resulting work would be the Score for the Movie, and the Score was intended to be used by the Movie for promotion. Added to that, throughout the Taipei Film Festival, the plaintiff never brought up any objection to use of the Score. In view of the above, the IPC Court considered that the defendant’s use should be aligned with the contract, and does not constitute infringement of the plaintiff’s copyright.
Since the defendant’s use of the Score is aligned with the contract, and the plaintiff failed to provide evidence proving that the defendant has breached the contract, or violated any other moral rights under the Copyright Act, the IPC Court found the plaintiff’s lawsuit to be without merit, and dismissed it accordingly.
Key takeaways from the decision
Regarding the exercise of copyright between joint authors, Article 40-1 of the Copyright Act provides that “Joint economic rights in a work shall not be exercised except with the consent of all the joint economic rights holders”. What is intriguing in this case is the IPC Court did not delve into whether there was an implied licence or consent between the joint authors; i.e., the plaintiff and the defendant. Instead, the IPC Court simply construed the contract between the plaintiff and the defendant, and ruled that the defendant’s use is aligned with the contract. This suggests an alternative approach for those who wish to argue the existence of an implied consent or licence for specific use. After all, under Article 37 of the Copyright Act, there is a rebuttable presumption of no licence when explicit terms and conditions are absent.
Another takeaway is that the parties shall not only clearly define the nature of the work (e.g., works for hire, work by an independent contractor, or joint work) but also determine who owns the copyright, and specify the permitted use of the copyrighted work. From the perspective of the movie company, this case also highlights the importance of a clear contractual arrangement among the relevant content creators, to ensure that the subsequent marketing and promotion of the film will not be disrupted by unexpected copyright disputes.
