How to avoid the implementation of the prohibition of the bulk assignments of future works in copyright contracts?

Prohibition of the bulk assignments of future worksArticle L. 131-1 of the French intellectual property Code (IPC) is required in the context of the drafting of a contract for the exploitation of copyright in more than one work.

It is not necessary to rely on its concise drafting, “the overall assignment of future works is nul.”; the consequences are more than important: invalidity of the assignment will result to an act of counterfeiting of the contracting party which is entitled to a compensation.

If two doctrinal positions oppose themselves, a strict interpretation, prohibiting the assignment of more than one future work and the other prohibiting only the assignment of all future works thus allowing the transfer of the patrimonial rights on certain future works subject to determining precisely what works are the object of the assignment (formalism of article L. 131-3 of the IPC). The jurisprudence tends towards this latter position in that it accepts the validity of assignments relating to future works when these works can be individualized and determinable.

Based on the solutions given by the case law, the drafter may infer an applicable framework where it is necessary to frame the assignment of rights in future works, as is particularly the case for the creation of employees or regular orders to the same author.

A perfect practice would be to have a copyright assignment contract for each of the works created as the collaboration develops; this solution is not possible when the number of works is too much or the company does not have the necessary structuring for such a device.

The company must therefore endeavour to minimise the risk of infringement of the prohibition of article L. 131-1 of the IPC by means of alternative solutions:

Promises of contract or assignment: this allows the employer to compel its employees or the sponsors to give him the priority to the assignment of the copyrights on their future works. With the disadvantage that despite the reform of the law of contracts, it does not seem possible for the employer, in the event of a breach of the promise, to resort to forced execution. Future jurisprudence will be decisive in the interpretation of the new article 1124 of the French civil Code by the courts.

The addition of a clause in the employment contract or the framework contract of orders providing the transfer of the author’s patrimonial rights as it is established: it is essential that this clause indicates the determinable or distinct character of works created within the framework of these contracts and to strive to define the criteria for the determinability of the works.

The Security may be strengthened by forward-looking referring to annexes or amendments to the employment contract or the frame work contract to establish a complete and up-to-date list of the works covered by the assignment of rights clause. It must be ensured, however, that this task is carried out assiduously and regularly, as a defect of diligence leads the courts to declare the transfer obsolete (judgment of the Paris CA of 31 May 2011). Companies must therefore ensure the feasibility of the system of annexes and amendments before predicting it in the original contract.

Arguing that the contract of employment or of order allows the employee or the general partner to terminate the contract and regain his freedom. This possibility makes it possible to exclude the contract from the field of the “bulk assignment” of article L. 131-1 of the IPC.

Regardless of the strategy adopted by the company, it is essential that it ensures, through the concluded contracts with its employees or sponsorships, that good information has been made to the author. In order to do so, it must ensure that it is as explicit as possible in the contracts on the taking into account of the legal difficulty of the prohibition of the bulk assignment of future works and that the author is fully informed about the strategies commonly implemented.