A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States

王目珮儀（Wang Pei-Yi）

次（Content）

1. Introduction
2. Basic Concepts of Creative Commons Licenses
2.1 Attribution
2.1.1 Meaning of Attribution
2.1.2 The Related provisions concerned about moral rights
1) The United States
2) Japan3) Taiwan
2.2 Non-commercial
2.2.1 Meaning of Noncommercial
2.2.2 Interpretation or Guidelines of “Non-commercial”
2.3 No Derivatives Works
1) The United States
2) Japan3) Taiwan
2.4 Share Alike
2.4.1 The meaning of “Share Alike”
2.4.2 The Change of the Version with “Share Alike”
2.4.3 The Contradictions of “Share Alike” and “No derivative works”
3. A Legal Analysis – the Nature of Creative Commons Licenses
3.1 The Relationship between Creative Commons Licenses and Copyright
3.2 Licenses in General
3.3 New Licenses Different From Traditional Licenses
3.3.1 Shrink-wrap, Click-wrap and Browse-wrap Licenses
3.3.2 Creative Commons Licenses
3.4 The Nature of Creative Commons Licenses∗

国立台湾大学法学部,法学研究科修士課程修了, 台湾弁護士

22∗名古屋ロー・レビュー 第 2 号（2010 年 9 月）

3.4.1 Contract
3.4.1.1 Common Law
3.4.1.2 Continental Law
3.4.2 Pure License
3.4.3 Conclusion
3.5 The Differences to be regarded as Contract or Pure License in Taiwan
3.5.1 The Timing of Contract and License to Be Constituted
3.5.1.1 Contract
3.5.1.2 License
3.5.2 Formation
3.5.2.1 Copyright in General
3.5.2.2 The Formation of License or Contract
3.5.2.2.1

Offer and Acceptance1) Contract2) License
3.5.2.2.2

Competency and Capacity of Both Parties

1) Contract2) License
3.5.3 Priority between Conflicting Transfer of Ownership and Nonexclusive License
3.5.3.1 Registration and Written
1) The United States
2) Japan3) Taiwan
3.5.3.2 Enforceability Against Third Parties－Stability of CC
3.5.3.2.1

Contract- in personam

1) Criticism by Scholars
2) The Problem in Taiwan3) The Solution of Difficulties in Taiwan(A) German Theory of “Zweckübertragungstheorie”(B) Principle of Abusing of Right
3.5.3.2.2

License- in rem

3.5.4 Freedom of Contract and Real Right Legalization Principle
3.5.4.1 The freedom of contract
3.5.4.2 Real Right Legalization Principle
4. Conclusion
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A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

1. Introduction
In the digital era it is difficult to use copyrighted material under the fair use
doctrine to copyright and licensing mechanism to create free culture, consequently
numerous open content licenses are increasing to help to cultivate society’s commons.
Licenses such as the Creative Commons Licenses, BBC Creative Archive License,
Open Content License, Open Publication License, GNU Free Documentation License,
Free Art License, and Open Music License are examples of such open content licenses.
Besides, in the area of software, because of the mention of source or object code, it isstrongly encouraged by Creative Commons to use the licenses made available by theFree Software Foundation or listed at the Open Source Initiative, such as the GNU
General Public License, the Berkeley Software Distribution License (BSD) and theMozilla Public License (MPL).
Nowadays the leading project is Creative Commons (CC). First of all, 1.0 versionof the general Creative Commons licenses was released in December 2002 and updated
2.0 versions in May 2004. Later were the versions 2.5, and finally are versions 3.0 now.
Furthermore, because of Creative Commons International (CCi)’s dedication to port
the core Creative Commons Licenses to different copyright legislations around theworld, there are up to 53 countries that completed the process and developed licenses. 1
2. Basic Concepts of Creative Commons Licenses
The origin of Creative Commons Licenses can be traced to the ideas of free
software and open source which are special for the computer program. This freeculture movement draws inspiration from free software movement to othercopyrighted contents. Free software movement and Creative Commons both emphasize

See generally, Website of Creative Commons International, at
http://creativecommons.org/international/ (visited on 2010/5/30). These countries
include Argentina, Australia, Austria, Belgium, Brazil, Bulgaria, Canada, Chile, China
Mainland, Colombia, Croatia, Czech Republic, Denmark, Ecuador, Finland, France,
Germany, Greece, Guatemala, Hong Kong, Hungary, India, Israel, Italy, Japan,
Luxembourg, Macedonia, Malaysia, Malta, Mexico, Netherlands, New Zealand,
Norway, Peru, Philippines, Poland, Portugal, Puerto Rico, Romania, Serbia, Singapore,
Slovenia, South Africa, South Korea, Spain, Sweden, Switzerland, Taiwan, Thailand,
UK: England and Wales, UK: Scotland, the United States and Vietnam.
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the importance of freedom 2. As long as licensees accept the terms and conditions, thelicensor grants licensees the rights released by a Creative Commons License. This
paper tries to state the main idea of Creative Commons Licenses and also otherrelevant licenses.
Creative Commons licensing model includes three levels: the human-readable
Commons Deed 3, the lawyer-readable Legal Code 4, and the machine-readable Digital
Code or metadata 5. In the human-readable Commons Deed, there are one common
term and three optional license terms. Attribution is the common term, so if a licensor
wish to release his or her work under a Creative Commons License, “Attribution” must
to be chosen. In contrast, a licensor can choose “No Derivatives”, “Share Alike”, and“No Commercial” by their will. Those four elements could be composed in six kinds ofCC licensing choices: Attribution (by), Attribution Share Alike (by-sa), Attribution No
Derivatives (by-nd), Attribution Non-commercial (by-nc), Attribution Non-commercial
Share Alike (by-nc-sa) and Attribution Non-commercial No Derivatives (by-nc-nd).
2.1 Attribution
2.1.1 Meaning of Attribution
When relating to copyright protection, there is an important distinction between
authors’ or artists’ economic rights and moral rights. This distinction presents a basic
divergence between the intellectual property law regimes found in civil law countries
like European countries, Japan and Taiwan, and those found in the common law

See generally, Website of GNU Operating System, at
http://www.gnu.org/philosophy/free-sw.html/ (visited on 2010/5/30) “Free software isa matter of the users' freedom to run, copy, distribute, study, change and improve thesoftware. More precisely, it refers to four kinds of freedom, for the users of thesoftware: The freedom to run the program, for any purpose (freedom 0). The freedom tostudy how the program works, and adapt it to your needs (freedom 1). The freedom toredistribute copies so you can help your neighbor (freedom 2). The freedom to improve
the program, and release your improvements to the public, so that the wholecommunity benefits (freedom 3).
3 See generally, Website of Creative Commons, at
http://creativecommons.org/about/license/ (visited on 2010/5/30) “Commons Deed: A
plain-language summary of the license, complete with the relevant icons.”
4 Id. “Legal Code: The fine print that you need to be sure the license will stand up in
court.”
5 Id. “Digital Code: A machine-readable translation of the license that helps searchengines and other applications identify your work by its terms of use.”
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countries like the United States.
Many countries in continental Europe recognize that authors and artists havelegal interests in their work that exist independently of the legal interest created bycopyright laws. These legal interests remain with the authors or artists even after the
copyright is transferred to another party and the work is no longer in the hands of theauthors or artists. These moral rights include: (1) the right of integrity, under which
the artists can prevent alterations in their work; (2) the right of attribution or
paternity, under which the artists can insist that their work can be distributed ordisplayed only if their name is connected with it; (3) the right of disclosure, underwhich the artists can refuse to expose their work to the public before they feel it issatisfactory; and (4) the right of retraction or withdrawal, under which the artists can
withdraw their work even after it has left their hands. For civil law countries, moral
rights are inalienable. 6
In contrast, common law countries such as the United States historically did notrecognize the collective moral rights as legal interests. By ignoring the legality ofmoral rights, the United States effectively renders unenforceable any attempt by anartist to retain such rights in a creation after transferring ownership of their work. In
effect, the United States views moral rights as non-economic rights of the artist or
author. 7 Since attribution is included by moral rights, how different countries
stipulate the provisions concerned about moral rights is important. In paragraph 2.1.2.,
the moral right related to attribution in copyright law in the U.S., Japan and Taiwan
will be discussed in detail.
2.1.2 The Related provisions concerned about moral rights
The following discusses the right related attribution in different jurisdiction: theUnited States, Japan and Taiwan.
1) The United States
Brandi L. Holland, Moral Rights Protection in The United States and The Effect of
The Family Entertainment and Copyright At of 2005 on U.S. International Obligations,
6

39 VAND. J. TRANSNAT'L L., at 219 (2006).
Id. at 219.

7

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The Berne Convention, which originally drafted 1886, requires that signatory
countries provide protection for moral rights, particularly the rights of paternity andintegrity. However for more than 100 years, the United States refused to sign the
Berne Convention, because it disagreed with the protections afforded by moral rights
clause. In 1989, the United States reversed its position and signed the Berne
Convention, claiming that U.S law had evolved to the point where it could provide
minimal protection for artists' moral rights required by the Convention. 8
In order to comply with the international obligations, American Congress
partially embraced the tenets of the Berne Convention by passing the Visual Artists
Rights Act of 1990 (VARA). 9 VARA recognizes the moral rights of attribution andintegrity in the context of a limited class of visual arts and protects both the reputationof visual artists and the works they create. This Act came two years after Congress
decided to recognize the moral right as an amendment to the Copyright Act of 1976.
VARA, although narrow, brought the United States closer into line with much of theEuropean community. 10
While the enactment of VARA suggests that America is on its way to recognize themoral right of creative artists, VARA has three distinct shortcomings. First, VARA only
protects a specific type of artist. 11 Second, VARA only protects certain types of art 12.
Finally, even if a work meets the VARA definitions of "visual artist" and "visual art," aBrandi L. Holland, supra note 6, at 230.
17 U.S.C. § 106A(a)(3)(A)-(B) (1990), available at
http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000106---A000-.html(visited on 2010/5/30).
10 Brandi L. Holland, supra note 6, at 233-234.
11 17 U.S.C. § 106A (b) Rights of certain authors to attribution and integrity- Scopeand Exercise of Rights.— Only the author of a work of visual art has the rights
conferred by subsection (a) in that work, whether or not the author is the copyrightowner. The authors of a joint work of visual art are co owners of the rights conferred bysubsection (a) in that work.
12 17 U.S.C. §101 Definitions: A “work of visual art” is— (1) a painting, drawing, print,
or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer thatare signed and consecutively numbered by the author, or, in the case of a sculpture, in
multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively
numbered by the author and bear the signature or other identifying mark of theauthor; or (2) a still photographic image produced for exhibition purposes only, existingin a single copy that is signed by the author, or in a limited edition of 200 copies or
fewer that are signed and consecutively numbered by the author.
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number of exceptions may still prevent the artist from protection 13 . One of the
exceptions concerns works “made for hire”. The relevant part of the Copyright Act
defines a work made for hire as “a work prepared by an employee within the scope of
his or her employment”. This exception will effectively exclude most of theprofessionals who are seeking to have their work protected.14
Although there are provisions related to attribution in American Copyright Law,
it provides limited protection in reality. In order to keep authors’ or artists’ credit,
Creative Commons Licenses provide the selection of “attribution” in the first version
1.0, however because most people who chose a Creative Commons License would alsochoose the element of “Attribution”, so since version 2.0, all Creative Commons
Licenses require “Attribution”.
2) Japan
According to Japanese Copyright Act (JCA), the author’s rights comprise moral
rights and economic exploitation rights. Whereas copyright as a property right can betransferred, the moral rights are inalienable. The JCA is therefore clearly based on the“dualistic theory”. 15 In the 1970s, the legal nature of the author’s moral rights was aheatedly debated issue among Japanese experts. Whereas some commentators adhere
to the “theory of inseparability” pursuant to which the author’s moral rights formed amere subcategory of the general personality right, others support the “theory ofseparating” which regards the author’s moral rights as separate and independentrights and emphasizes the difference between the author’s moral rights and the
17 U.S.C. § 106A(c) (1)-(3) Rights of certain authors to attribution andintegrity-Exceptions: (1) The modification of a work of visual art which is a result of
the passage of time or the inherent nature of the materials is not a distortion,
mutilation, or other modification described in subsection (a)(3)(A). (2) The modificationof a work of visual art which is the result of conservation, or of the public presentation,
including lighting and placement, of the work is not a destruction, distortion,
mutilation, or other modification described in subsection (a)(3) unless the modification
is caused by gross negligence. The rights described in paragraphs (1) and (2) ofsubsection (a) shall not apply to any reproduction, depiction, portrayal, or other use ofa work in, upon, or in any connection with any item described in subparagraph (A) or(B) of the definition of “work of visual art” in section 101, and any such reproduction,
depiction, portrayal, or other use of a work is not a destruction, distortion, mutilation,or other modification described in paragraph (3) of subsection (a).
14 Brandi L. Holland, supra note 6, at 234.
15 TATSUHIRO UENO, JAPANESE COPYRIGHT LAW, at 41(2005)
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general rights. Due to the dualistic JCA, the theory of separating might be better
applicable.16
Moral rights in the JCA comprise three kinds of rights:(1) the right of making thework public 17, (2) the right of determining the indication of the author's name 18 and(3) the right of preserving the integrity. 19 So, in Japan, the protection of “Attribution”
is from JCA Article 19, and Creative Commons Licenses of which version is 2.0 or later
just restate this kind of author’s right. If a licensee does not abide by the terms ofCreative Commons, the rights granted in a Creative Commons license would terminate
automatically. In this situation, a licensee also infringes a licensor’s moral right; JCA
Article 112 provides that a licensor may make a demand for cessation or prevention ofsuch infringements. 20 If a licensee has intentionally or negligently infringed alicensor’s attribution right, they shall be liable to compensate any damages resulting
in consequence under Civil Code article 709. Besides, a licensor can ask a licensee totake measures necessary to identify him or her as the author, to correct distortions,mutilations, or modifications or to recover his honor or reputation either in place of or

16

Id. at 42.

JCA Article 18(1) (“The author shall have the rights to offer to and to make available
to the public his work which has not yet been made public (including a work which has
been made public without his consent; the same shall apply in this Article). The author
shall have the same right with respect to works derived from his work which has not
yet been made public.”)（公表権）, available at http://www.cric.or.jp/cric_e/clj/clj.html/(visited on 2010/5/30).
18 JCA Article 19 (1) (“The author shall have the right to determine whether his true
name or pseudonym should be indicated or not, as the name of the author, on theoriginal of his work or when his work is offered to or made available to the public. The
author shall have the same right with respect to the indication of his name whenworks derived form his work are offered to or made available to the public.”)（氏名表示権）.
19 JCA Article 20(1) (“The author shall have the right to preserve the integrity of his
work and its title against any distortion, mutilation or other modification against his
will.”)（同一性保持権）.
20 JCA Article 112 (1) (“Against those who infringe or are likely to infringe moral rights
of authors, copyright, right of publication, moral rights of performers or neighboringrights, the author, the performer or the owner of copyright, right of publication orneighboring rights may make a demand for cessation or prevention of such
infringements. (2) In making such demand, the author, the performer or the owner of
copyright, right of publication or neighboring rights may demand to take measuresnecessary to effect such cessation or prevention of infringement, such as theabandonment of objects the making of which constituted an infringement, objects
made by an act of infringement or implements and tools used solely for an
infringement.”)
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together with indemnification of damages under JCA article 115.
Under Creative Commons version1.0, a licensor can choose “Attribution” if he or
she is willing to do so. If a licensor does not choose “Attribution”, does it mean that heor she waives his or her moral right by agreeing on the Creative Commons License?
This relates to one usual question which is often asked by people “Can moral rights bewaived by contract?” As already mentioned above, the moral rights of the author are
exclusively personal to him or her and are inalienable. Even after the author has
transferred his or her copyright, the moral rights remain with him or her, so that theauthor may exercise them in a manner prejudicial to the smooth work exploitation by
the transferee. For this reason, many copyright contracts contain clauses in which theauthor declares in advance that he or she will not exercise his or her moral rights withrespect to the licensed exploitation. The validity of such clauses is not unanimously
accepted, however. To the majority of commentators, at least blanket waivers areinvalid as they offend the public order and good morals pursuant to Article 90 of the
Civil Code.21 Others expressly affirm the validity of blanket waivers. The discussion
whether or to what extent the waiver of moral rights should be allowed has not yet
found a satisfactory solution.22

3) Taiwan
Taiwan also belongs to civil law regimes as Japan. The author’s rights comprisemoral rights and economic exploitation rights. The “Attribution right” relates to themoral right in Copyright, 23 also the name’s right in Civil Code. 24 According to theprinciple of the applicability of special law prior to general law, when licensees infringea licensor’s attribution right, the licensor can demand removal of infringement under
Article 90 of the Japanese Civil Code: (“A juristic act with any purpose which isagainst public policy is void.”)
22 TATSUHIRO UENO, supra note 15, at 42-43.
23 Article 16 of the Taiwan’s Copyright Law (“The author of a work shall have the rightto indicate its name, a pseudonym, or no name on the original or copies of the work, orwhen the work is publicly released. The author has the same right to a derivative work
based on its work.”).
24 Article 18 of the Taiwan’s Civil Code (“If one's right to use his name is infringed, one
may apply to the court for removing of infringement and for damages for emotional
distress.”).
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Article 84 of Taiwan’s Copyright Law,25 and also can demand the licensees to be liablefor damages and may claim a commensurate amount of compensation in the event of
non-pecuniary injury under Article 85 of Taiwan’s Copyright.26
In Taiwan, the question about “Can moral rights be waived or not to be exercisedby contract?” is also widely discussed. According to the explanation of Ministry of theInterior, it affirms that going through contracts can limit the author not to exercise hisor her moral rights, 27 and there are some scholars who regard this opinion positively. 28
However, other scholars argue about this, and claim that moral rights can not be
waived by contract, because moral rights are inalienable. 29 There is also acompromising opinion that is taken by scholars that by observing different types ofrights, the rights of publication and the rights of determining the indication of theauthor's name can be limited by contracts; however the right of preserving the
integrity cannot be limited by contracts. 30
In the case of Creative Commons License version 1.0, both in Japan and in
Taiwan, when a licensor does not choose “Attribution”, it does not necessarily meanthat the licensor waives his or her attribution right. It can be explained that thelicensor agrees not to exercise his or her “Attribution Right”. The licensor just promises
to let licensees who abide by the terms and conditions to use his or her work.
2.2 Non-commercial

Article 84 of the Taiwan’s Copyright Law (“The copyright holder or the plate rights
holder may demand removal of infringement of its rights. Where there is likelihood of
infringement, a demand may be made to prevent such infringement.”).
26 Article 85 of the Taiwan’s Copyright Law (“(1) a person who infringes on the moral
rights of an author shall be liable for damages. In the event of non-pecuniary injury,
the injured party may claim a commensurate amount of compensation. (2)In
infringement matters referred to in the preceding paragraph the injured party may
demand indication of the author's name or appellation, correction of content, or
adoption other appropriate measures necessary for the restoration of its reputation.”).
27內政部八十一年十月二日台(八一)內著字第八一一八二○○號函、
內政部八十三年三月十八日台(八三)內著字第八三○四四○六號函。
28 劉孔中，著作人格權一些新舊問題的檢討，律師雜誌 258 期，2000 年 3 月，頁 28。
29 謝銘洋、陳家駿、馮震宇、陳逸南、蔡明誠，著作權法解讀，元照出版有限公司，2001
年 3 月，頁 58。
30 羅明通，著作權法論第一冊，台英國際商務法律事務所，2004 年 1 月第五版，頁 389。
25

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2.2.1 Meaning of Noncommercial
The licensors who release their work by Creative Commons Licenses can
specifically restrict the commercial use of the work. On the human-readable Commons
Deed, it states that “You may not use this work for commercial purposes.” Even though
on the legal code (full license), the interpretation of “commercial and non-commercial”
is not so clear: “You may not exercise any of the rights granted to You in Section 3
above in any manner that is primarily intended for or directed toward commercial
advantage or private monetary compensation. The exchange of the work for othercopyrighted works by means of digital file-sharing or otherwise shall not be considered
to be intended for or directed toward commercial advantage or private monetarycompensation, provided there is no payment of any monetary compensation inconnection with the exchange of copyrighted works.” 31
2.2.2 Interpretation or Guidelines of “Non-commercial”
Until now, there is no legal interpretation which deals directly with the “monetarycompensation” for the use of copyrighted works. In practice, the scope of the“commercial use limitation” is up to license interpretation. According to the generalcontract law, an unclear contract term will be interpreted against the party who was
responsible for writing the term. However, the interpretation rules are not very usefulin the case of Creative Commons Licenses because they are mass-market licenses
granted to the public 32 and also royalty-free. Consequently MIT provides theinterpretation and guidelines of “non-commercial” to make its meaning much clearer.
MIT Open Courseware (OCW) is a web-based publication of virtually all MIT
course content. OCW is open and available to the world and is a permanent MIT
activity. 33 MIT provides all of the contents by Creative Commons License“Attribution-NonCommercial-ShareAlike 3.0 United States”. 34

See Creative Commons, Creative Commons Legal Code, version 3.0. §4(b), at
http://creativecommons.org/licenses/by-nc-nd/3.0/us/legalcode/ (visited on 2010/5/30).
32 HERKKO HIETANEN, VILLE OKSANEN & MIKKO VALIMAKI, COMMUNITY CREATEDCONTENT: LAW, BUSINESS AND POLICY, at 55 (2007).
33 See MIT Open Courseware, at
http://ocw.mit.edu/OcwWeb/web/about/about/index.htm (visited on 2010/5/30).
31

34

Id.

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In order to make clear the meaning of “Non-commercial”, MIT clarifies thecommercial element in its website as the following.
“Non-commercial use” means that users may not sell, profit from, orcommercialize OCW materials or works derived from them. The guidelines below
are intended to help users determine whether or not their use of OCW materials
would be permitted by MIT under the "non-commercial" restriction.35
1. Commercialization is prohibited: Users may not directly sell or profit from
OCW materials or from works derived from OCW materials, for example: acommercial education or training business may not offer courses based on OCW
materials if students pay a fee for those courses and the business intend to profit
as a result.
2.

Determination of commercial vs. non-commercial purpose is based on the use,

not the user: Materials may be used by individuals, institutions, governments,
corporations, or other business whether for-profit or non-profit so long as the use
itself is not a commercialization of the materials or a use that is directly intended
to generate sales or profit, for example: a corporation may use OCW materials forinternal professional development and training purposes.
3. Incidental charges to recover reasonable reproduction costs may be permitted:
Recovery of nominal actual costs for copying small amounts (under 1000 copies) of
OCW content on paper or CDs is allowed for educational purposes so long as there
is no profit motive and so long as the intended use of the copies is in compliancewith all license terms. Students must be informed that the materials are freely
available on the OCW Web site and that their purchase of copied materials is
optional, for example: an institution in a remote area has limited Internet accessand limited network infrastructure on campus, and a professor offers to create
CDs of OCW materials relevant to her course. The professor may recover the costsof creating the CDs.
2.3 No Derivatives Works
35

Id.
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The licensors who release their work by Creative Commons Licenses can
specifically prohibit modification or derivative works. On the human-readable
Commons Deed, it states that “You may not alter, transform, or build upon this work.”
In the definition of “Derivative Work” 36, it means a work based upon the Work or upon
the Work and other pre-existing works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgment, condensation, or any other form in which the Work may berecast, transformed, or adapted, except that a work that constitutes a collective work
will not be considered a derivative work for the purpose of the license. For the
avoidance of doubt, where the work is a musical composition or sound recording, thesynchronization of the work in timed-relation with a moving image ("synching") will beconsidered a derivative work for the purpose of the license.
The concept of “derivative works” relates to the reproduction right or adaption
right of economic right in civil law regimes and common law regimes, and also theintegrity right of moral right in civil law regimes.
1) The United States
According to the American Copyright Act, a “derivative work” is defined asfollows: a work based upon one or more preexisting works, such as a translation,
musical arrangement, dramatization, fictionalization, motion picture version, soundrecording, art reproduction, abridgment, condensation, or any other form in which awork may be recast, transformed, or adapted. A work consisting of editorial revisions,annotations, elaborations, or other modifications, which, as a whole, represent an
original work of authorship, is a derivative work.37
The copyright in the derivative work never extends to the portion of the work thatincorporates the material from the base work, but only extends to the new material.
This keeps the base work author's rights fixed and rewards only the creativity in thederivative author's additions. Besides, the derivative work must differ from the base

See Creative Commons, Creative Commons Legal Code, version 3.0 §1(b), at
http://creativecommons.org/licenses/by-nc-nd/3.0/us/legalcode (visited on 2010/5/30).
37 17 U.S.C. § 101.
36

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work, otherwise it is merely a reproduction. It is defined by court that a derivative
work must be “substantially different” from the base work.38
2) Japan
According to JCA Article 2(1) (xi) “derivative work” means a work created bytranslating, arranging musically, or transforming, or dramatizing, cinematizing orotherwise adapting a pre-existing work. The original author is entitled to decide about
the publication of a derivative work under JCA Article 18, and share the copyright in itwith the adapter under JCA Article 28.39 Therefore, for example, the exploitation of
the main character of a comic series by the illustrator without asking permission of theauthor of the original stories infringes the copyright of the latter. In addition,according to JCA Article 11, 40 the copyright in the derivative works shall not prejudice
the rights of the author in the original work. The provision clarifies that the adapter’s
copyright in a derivative work persists irrespective of whether it was created withauthorization of the original author or not, but the derivative work cannot be freely
exploited to the detriment of the author of the original work. 41
In the version 3.0-CCi Affiliate Checklist, it mentions the inclusion of an express
moral rights acknowledgement. If it is not possible to make any change to a workwithout infringement moral rights, which is the case in Japan, Creative CommonsInternational (CCi) suggests to include an additional statement in those licenses that
permits derivative works, such as BY, BY-SA, BY-NC, or BY-NC-SA, similar to thoseincluded in the Unported license, but with adjustments in accordance with thejurisdiction. Specifically, an example of such statement is: “Licensor agrees that in thethose jurisdiction (e.g., Japan), in which any exercise of the right granted in clause 3(b)of this License (the right to make Adaptions) would be deemed to be a distortion,
mutilation, modification or other derogatory action prejudicial to the original author’s
honor and reputation, the licensor will waive or not assert, as appropriate, this clause,
Robert J. Morrison, Deriver's Licenses: An Argument for Establishing a Statutory
License for Derivative Works, CHI.-KENT J. INTELL. PROP. 87
38

JCA Article 28 ( “In connection with the exploitation of a derivative work, the authorof the original work shall have exclusive rights of the same types as those possessed by
the author of the derivative work under the provisions of this Subsection.”).
40 JCA Article 11 (“The protection granted by this Act to derivative works shall notaffect the rights of an author to the original work.”).
41 TATSUHIRO UENO, supra note 15, at 27-28.
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A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

to the fullest extend permitted by the applicable national law, to enable You toreasonably exercise Your right under clause 3(b) of this License (right to makeadaptations ) but not others.”

3) Taiwan
According to Article 3 of Taiwan’s Copyright Law, “Adaptation” means to create
another work based upon a pre-existing work by translation, musical arrangement,
revision, filming, or other means, and in the same way as in Japan and the U.S., aderivative work shall be protected as an independent work. Protection of a derivative
work shall not affect the copyright in the pre-existing work. 42 In addition, Taiwan is
one of the jurisdictions that entitle authors’ moral rights, so Creative CommonsInternational suggests that to make sure to include an express acknowledgement that
moral rights are retained along lines similar to the one included in the Unported
license version 3.0. This should be included as a new subparagraph to section 4 asfollows: “Except as otherwise agreed in writing by the Licensor or as may be otherwise
permitted by applicable, if you reproduce, distribute or publicly perform the work or
any adaptations or collections, you must not distort, mutilate, modify or take otherderogatory action in relation to the work which would be prejudicial to the original
author’s honor or reputation.”
2.4 Share Alike
2.4.1 The meaning of “Share Alike”
Share Alike means that if licensors alter, transform, or build upon this work, they
may distribute the resulting work only under the same or similar license to this one. 43
It is regarded as a kind of “copyleft” which is a general method for making a programor other work free, and requiring all modified and extended versions of the program orother work to be free as well. It doesn't mean abandoning the copyright; in fact, doing

Taiwan’s Copyright Law §6
See Creative Commons, Attribution-Noncommercial-Share Alike 3.0 Unported, at
http://creativecommons.org/licenses/by-nc-sa/3.0/ (visited on 2010/5/30)
42
43

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so would make copyleft impossible. 44
2.4.2 The Change of the Version with “Share Alike”
At first, in the version 1.0, when licensors release their work under a Creative
Commons License with “Share Alike”, it means that licensees may distribute, publicly
display, publicly perform, or publicly digitally perform a Derivative Work only under
the terms of this License. 45
In Creative Commons License Version 2.0 and 2.5, the conditions of “Share Alike”
are no longer limited to the terms of this License, but also include the restrictions
contained in “a later version of this License with the same License Elements as thisLicense, or a Creative Commons iCommons license that contains the same License
Elements as this License. 46
Until now, in the version 3.0 unported, it describes “a Creative Commons
iCommons license that contains the same License Elements as this License” much
more clearly to “a Creative Commons jurisdiction license (either this or a later license
version) that contains the same License Elements as this License”. In addition, it also
increases one more choice for licensees that are the fourth one “a Creative Commons
Compatible License”.47

See GNU Operating System, at http://www.gnu.org/copyleft/ (visited on 2010/5/30)
The word “left” in “copyleft” is not a reference to the verb “to leave” — only to thedirection which is the inverse of “right”.
45 See Creative Commons, Attribution-Noncommercial-Share Alike 1.0, at
http://creativecommons.org/licenses/by-nc-sa/1.0/legalcode (visited on 2010/5/30)
46 See Creative Commons, Attribution-Noncommercial-Share Alike 2.0, at
http://creativecommons.org/licenses/by-nc-sa/2.0/legalcode (visited on 2010/5/30)
47 See Creative Commons, Attribution -Share Alike 3.0, at
http://creativecommons.org/licenses/by-sa/3.0/legalcode (visited on 2010/5/30)“You may
Distribute or Publicly Perform an Adaptation only under: (i) the terms of this License;(ii) a later version of this License with the same License Elements as this License; (iii)a Creative Commons jurisdiction license (either this or a later license version) that
contains the same License Elements as this License (e.g.,
Attribution-NonCommercial-ShareAlike 3.0 US) ("Applicable License"); (iv) a Creative
Commons Compatible License. If you license the Adaptation under one of the licenses
mentioned in (iv), you must comply with the terms of that license. If you license theAdaptation under the terms of any of the licenses mentioned in (i), (ii) or (iii) (the"Applicable License"), you must comply with the terms of the Applicable License
generally and the following provisions.”
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2.4.3 The Contradictions of “Share Alike” and “No derivative works”
It needs to be noticed that because the element “No derivative works” means that
Creative Commons Licensors do not permit modifications or derivative works, and theprecondition of “Share Alike” is that licensors permit licensees to modify or adapt.
Consequently these two elements “Share Alike” and “No derivative works” contradict
to each other. It is why there are just six, not eight, kinds of Creative Commons
Licensing choices.
3. A Legal Analysis – the Nature of Creative Commons Licenses
Copyright law is specifically enacted for the purposes of protecting the rights andinterests of authors with respect to their works, balancing different interests for thecommon good of society, and promoting the development of national culture. 48 In otherwords, it creates barriers to the use of creative works for users. For example, it
provides owners a set of exclusive rights in their creative works. Non-owners are
required to obtain a license for every use of a work that is covered by these rights.
There are certain limitation and exceptions of copyright, allowing free use such as “fairuse”. The barriers on use are thus effectuated by two separate aspects of copyright: (1)the legal right to restrict use and to seek an injunction in cases of unauthorized use,and (2) the information costs associated with securing a license.49
Because the default setting of copyright is “all rights reserved”, users have to get
permission to uses of the copyrighted work. This kind of permission to use others’
copyrighted works is “license.”

48

Taiwan’s Copyright Law §1

See Niva Elkin-Koren, What Contracts Cannot Do: The Limits of Private Ordering
In Facilitating A Creative Commons, FORDHAM L. REV., Vol.74, at 375 and 379 (2005).
49“1.It preserves the right of owners to manage or control over some uses of the work in amore flexible, easy and open way without going through intermediate such ascollecting societies or lawyers. 2.It leaves the door open for collaboration with market
players such as Wikipedia and open software. Maintaining the enthusiasm and thesense of trust among potential contributors could be crucial for the success of Creative
Commons. 3. Claiming property rights may allow authors to safeguard their work
against abuse.”
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3.1 The Relationship between Creative Commons Licenses and Copyright
The strategy of Creative Commons for promoting the share and reuse of
informational works makes an innovative use of two traditional common law concepts:
property and private ordering (license). There are several advantages to rely on
property rights under copyright law. 50 Consequently, Creative Commons Licenses help
authors to retain and manage their copyright and also for their enforcement.
3.2 Licenses in General
According to Black's Law Dictionary, a “license” is “a revocable permission tocommit some act that would otherwise be unlawful,” while “licensing” is defined as “thesale of a license authorizing another to use something (such as computer software)
protected by copyright, patent, or trademark.” 51 In the U.S., the Uniform Computer
Information Transactions Act (UCITA) defines the term “a license” more specifically as“a contract that authorizes access to, or use, distribution, performance, modification, or
reproduction of, information or informational rights, but expressly limits the access oruses authorized or expressly grants fewer than all rights in the information, whether
or not the transferee has title to a licensed copy.” 52 Therefore, a license is defined as“an agreement the terms of which entail a limited or conditional transfer of
information or a grant of limited or restricted contractual rights or permissions to use
information.” 53 In other words, a license exists (1) if a contract grants greater rights or
privileges than a first sale, (2) if it restricts rights or privileges that might otherwise
exist, or (3) if it deals with other issues of scope of use.54
In Germany, those who need to exploit the copyrighted works (such as employers)
must acquire title or interests through individual or labor contracts with the creators
under the purpose transfer rule. Therefore, the disposal of rights through so-called50

Id. at 397

Black's Law Dictionary 7th edition (1999).
52 UCITA § 102(a) (40). The term includes an access contract, a lease of a computer
program, and a consignment of a copy. The term does not include a reservation or
creation of a security interest to the extent the interest is governed by Article 9 of the
Uniform Commercial Code (“UCC”).
53 See Cheon-Seok Seo, Licenses and the Uniform Computer Information Transactions
Act, 1 BUFF. INTELL. PROP. L.J., at 146 (2001).
54 Id. at 147.
51

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A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）“Copyright Contract Law” (“Urhebervertragsrecht”) has been well developed inGermany. 55

Besides,accordingto

Article31

ofGermanCopyright

Law(Urheberrechtsgesetz, UrhG), “the author may grant a right to another to use the workin a particular manner or in any manner (exploitation right). An exploitation right may
be granted as a non-exclusive right or as an exclusive right.” 56
3.3 New Licenses Different From Traditional Licenses
From above, a “license” is traditionally regarded as an agreement, even a contract
in the Uniform Computer Information Transactions Act in the U.S. or CopyrightContract Law (Urhebervertragsrecht) in Germany. However, not all of the charactersof licenses are the same, especially the appearance of the software licenses (i.e.,“shrink-wrap license”), licenses in the internet (i.e., “click-wrap license” and“Browsewap agreement”) and also free content licenses (i.e., Creative Commonslicenses).
3.3.1 Shrink-wrap, Click-wrap and Browse-wrap Licenses
Makers of personal computer software generally rely upon dealers to sell thesoftware. However, dealers are unwilling and also unable to make buyers signindividual contracts. Because of the regulations of Uniform commercial Code“mass-market licenses are typically enforceable only if the licensee manifests assent tothe contract after having an opportunity to review its terms” and the Copyright Act,57
software manufacturers sought to change their relationship with buyers by contract,
and the most common contractual approach is the use of “ shrink-wrap” licenses. 58

See HISAO SHIOMI AND PETER GANEA, CHAPTER VII COPYRIGHT CONTRACT LAW,
JAPANESE COPYRIGHT LAW, at 77 (2005).
56 See WIPO, Germany Copyright Law, at
http://www.iuscomp.org/gla/statutes/UrhG.htm#31 (Translation provided by theInternational Bureau of WIPO) (visited on 2010/5/30).
57 See UCITA § 209(b).
58 See PETER B. MAGGS, JOHN T. SOMA AND JAMES A. SPROWL, COMPUTER LAW:CASES-COMMENTS-QUESTIONS, at 384 (1992); also see Steven A. Heath, Contracts,
Copyright, and Confusion Revisiting the Enforceability of ‘shrinkwrap’ licenses, 5
CHI.-KENT J. INTELL. PROP., at 12 and 15 (2005). “The software manufacturers
incorporate the” shrink-wrap” license within the packaging of the purchased softwareby simple virtue of the fact that it was physically included with the package's
cellophane wrapping. Three initial forms are common:(1) the “envelope license”, with55

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名古屋ロー・レビュー 第 2 号（2010 年 9 月）

Consequently, shrink –wrap licenses are those unsigned “agreements” that are shippedwith some types of software. The software manufacturers want to have this kind ofcontractual protections that are not available without an agreement. Shrink-wrap
licenses provide nothing to sign, but create protections for the manufacturers.
In determining the enforceability of shrink-wrap licenses, the courts in the UnitedStates generally consider three points: first, whether the license is acceptable to theprinciples of contract law; second, whether the transfer is in fact a sale; and third,
whether federal law preempts the state's contractual regime. 59 It was not until thecase of ProCD v. Zeidenberg 60 that a court explicitly enforced a shrink-wrap license
applying to mass-marketed software.
The new licensing such as Shrink-wrap licenses, click-wrap licenses andbrowse-wrap licenses usually seeks for that (1) the grant of a license circumvents theDoctrine of First Sale; (2) the license can include restrictive terms, such as prohibitions
against “Fair Use” exceptions for reverse engineering and decompiling; and (3) the
license may also purport to disclaim all implied and express warranties in the
product. 61
3.3.2 Creative Commons Licenses

the license printed on the exterior of a sealed envelope containing the product (usuallya CD-ROM or disk); (2) the “box-top” license; read before opening a sealed box
containing the product; and (3) the “referral license”, where the user is informed of alicense that should be read before the manufacturer's seal is broken. Being an
innovative response to change market conditions, the shrink-wrap license has since
been refined, as symbolized by the emergence of electronic “click-wrap” and“browse-wrap” licenses.”
59 Heath, supra note 58, at 17.
60 86 F.3d 1447 (7th Cir. 1996). Also see, Cheon-Seok Seo, supra note 53, at 153-154.
“The Seventh Circuit, in an opinion by Judge Easterbrook, reversed the district court.
[FN63] After finding shrink-wrap licenses generally enforceable, the court held that §301 of the Copyright Act did not preempt their enforcement. In so holding, the court
drew a distinction between the rights conferred by copyright, which are enforceable*154 rights against the entire world regardless of the existence of an agreement, andrights created by contract, the enforceability of which depend on proof of a contractual
agreement According to the Seventh Circuit, § 301 does not interfere with privatetransactions in intellectual property; thus, private parties are free to set up between
themselves controlling rights and restrictions that are not equivalent to any of the
exclusive rights within the scope of copyright.”
61 Heath, supra note 58, at 15-16.
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Different to those new licenses above, Creative Commons “Licenses” are used byauthors to actively release their work to public without royalties. In addition, thoselicensors do not want to circumvent the Doctrine of First Sale, and either are they
intended to reduce, limit, or restrict any uses free from copyright or rights arising fromlimitations or exceptions that are provided for in connection with the copyrightprotection under copyright law or other applicable laws.62 However, after Creative
Commons License version 2.0, taking into account of balance of royalties free andlicensors’ responsibilities, unless otherwise mutually agreed to by the parties inwriting, a licensor offers the work as-is and makes no representations or warranties ofany kind concerning the work, express, implied, statutory or otherwise, including,
without limitation, warranties of title, merchantability, fitness for a particular purpose,no infringement, or the absence of latent or other defects or errors, whether or notdiscoverable. 63
The proclaimed goal of Creative Commons is to change the default rule created bycopyright law. It provides a legal and technological infrastructure that arguably
overcomes the impediment to access to informational works. Creative Commons seeks
to expand the variety of defaults by facilitating new options for release of works underless restrictive terms: “some rights reserved” or sometimes “no rights reserved”. 64
Two more different characters that a shrink-wrap license or a click-wrap licensedoes not have are that (1) users (or licensees) are not required to do anything, such as
tearing shrink packages or clicking buttons, so there is no way to ascertain the users
and the time when the formation of license is; (2) the purpose of licensing to the public
is for public welfare, and to devote to create free culture, so Creative Commons
Licenses are royalty-free, worldwide, non-exclusive and this permission is perpetual(for the duration of the applicable copyright). 65
Creative Commons Licenses were born to struggle against “click-wrap” or“shrink-wrap” licensing. In those contexts, contracts are often used to get the consumer
62

See Creative Commons, at http://creativecommons.org/licenses/by/3.0/legalcode , §2(visited on 2010/5/30)
Id. §564 See Niva Elkin-Koren, supra note 49, at 383.
65 See Creative Commons, at http://creativecommons.org/licenses/by/3.0/legalcode , §3(visited on 2010/5/30)
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名古屋ロー・レビュー 第 2 号（2010 年 9 月）

to waive important consumer rights. These rights, established by the law as defaults,
are effectively modified by devices that condition access to important resources onwaiving these default rights. 66
Because of several differences between traditional licenses and Creative
Commons Licenses, and also between software licenses and Creative Commons
Licenses, it is necessary to consider the nature of Creative Commons Licenses much
more cautiously.
3.4 The Nature of Creative Commons Licenses
In the academia and practice, there are different sounds to explain the nature of
Creative Commons Licenses and Open Source Licenses. As Creative Commons
Licenses were modeled after General Public License (GPL), the literature written on
GPL is helpful when analyzing Creative Commons Licenses. 67 There are somescholars who regard Creative Commons Licenses and Open Source Licenses ascontracts 68; there are also other scholars who regard Creative Commons Licenses andOpen Source Licenses as pure licenses. 69 Besides, there is also other scholar’s suspect

See Lawrence Lessig, Re-Crafting A Public Domain, 18 YALE J.L. & HUMAN., at 56,
81 (2006).
67 Herkko Hietanen, A License or a Contract ; Analyzing the Nature of Creative
Commons Licenses, NIR, NORDIC INTELLECTUAL PROPERTY LAW REVIEW (2007),
available at SSRN: http://ssrn.com/abstract=1029366, at 2 (visited on 2010/5/30)
68 See Niva Elkin-Koren, supra note 49, at 74. Also see Christopher J. Falkowski, An
Innovation in Contract Drafting Open Source Licensing, 84-MAY MICH. B.J. 30, p.30;
See also Welte v Sitecom Deutschland GmbH, No. 21 O 6123/04(District Court ofMunich-LG MunchenI), at http://www.jbb.de/judgment_dc_munich_gpl.pdf > (visitedon 2010/5/30)
69 See Lawrence Lessig; supra note 66 “For again, a copyright license is not, at its core,a contract.”See also, James Boyle, Cultural Environmentalism and Beyond , 70 SPG
LAW & CONTEMP. PROBS. 5, 10. “There are the questions this raises about rules onalienability and the effect on third parties and the differences between contract andlicense.” See Eben Moglen, The GPL Is a License, not a Contract, at
http://lwn.net/Articles/61292/ (visited on 2010/5/30) “The word 'license' has, and has
had for hundreds of years, a specific technical meaning in the law of property. A license
is a unilateral permission to use someone else's property. The traditional example
given in the first-year law school Property course is an invitation to come to dinner at
my house. If, when you cross my threshold, I sue you for trespass, you plead my'license,' that is, my unilateral permission to enter on and use my property.” See New
report released by OAK Law Project and Legal Framework for e-Research Project, at
http://www.oaklaw.qut.edu.au/files/Data_Report_final_web.pdf (visited on 2010/5/30)
at 137-138 “A license can be contractual or non-contractual.” See also,Eben Moglen,
66

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of the nature of Creative Commons Licenses and Open Source Licenses instead ofaffirming that they are contracts or licenses. 70 Conditional licenses further blur theline between a pure license and a contract.71
3.4.1 Contract
Contract law has developed over the centuries as a means of facilitating economic
exchanges. It can help to reduce transaction costs by providing transactors withinformation on normal exchange conditions and on rules that reply. 72 However theformation of contract in common law system and civil law (continental law) system isdifferent as followings.

Freeing the Mind: Free Software And The Death Of Proprietary Culture, 56 ME. L. REV.

1, 6. “The GPL says: We construct a protected commons, in which by a trick, an irony,and the phenomena of commons are adduced through the phenomena of copyright,
restricted ownership is employed to create non-restricted self-protected commons. The
GPL, whose language you have been referred to, is not quite as elegant a license as I
would like but is pretty short; yet I can put it more simply for you. It says: “Take thissoftware; do what you want with it--copy, modify, redistribute. But if you distribute,modified or unmodified, do not attempt to give anybody to whom you distribute fewerrights than you had in the material with which you began. Have a nice day!” That is all.
It requires no acceptance. It requires no contractual obligation. It says you arepermitted to do, just don't try to reduce anybody else's rights. The result is a commonsthat protects itself: Appropriation may be made in an unlimited way, providing thateach modification of goods in commons is returned to commons. Anyone making
non-commons use of the material is infringing. Contract, on the other hand, is an
exchange of obligations, either of promises for promises or of promises of future
performance for present performance or payment. The idea that 'licenses' to use
patents or copyrights must be contracts is an artifact of twentieth-century practice, inwhich licensors offered an exchange of promises with users: 'We will give you a copy ofour copyrighted work,' in essence, 'if you pay us and promise to enter into certain
obligations concerning the work.' With respect to software, those obligations by users
include promises not to decompile or reverse-engineer the software, and not to transfer
the software.”70 See Herkko Hietanen, supra note 67, at 31-32; also see Christian H. Nadan, Open
Source Licensing: Virus or Virtue? 10 TEX. INTELL. PROP. L.J. at 349. (“Open source
licensing tries to make the license formation simpler for the licensor to implement.
Rather than requiring acceptance of a click wrap agreement for downloads from a
website, acceptance of a click wrap license that pops up during installation of the code,or acceptance of a shrink-wrap license included in the packaging, the open source
licenses just require that a notice about the license be provided in or with the code. No
manifestation of assent is required to prove the licensee agreed to the terms, andindeed the user can access the code without ever seeing the license, let alone agreeing
to it. This greatly increases the risk that no license agreement has been formed.”).
71 Id. at 32.
72 See WERNER Z. HIRSCH, LAW AND ECONOMICS: AN INTRODUCTORY ANALYSIS 130 (2nded. 1988).
44名古屋ロー・レビュー 第 2 号（2010 年 9 月）

3.4.1.1 Common Law
A contract in common law system is a promissory agreement for a future exchange
done freely and voluntarily. The core concept of contracts that are enforceable is“consideration,” and a legal term for the judicial inquiry of whether value has been
exchanged between parties. The doctrine does not test the fairness of the exchange or
the equality of the value exchanged. It seeks merely to ascertain whether an exchangeof value has occurred. The maxim is that the law only tests to see if consideration, thatis, exchange for value, exists. The parties to the exchange value their respective
contributions to the transaction autonomously, and the law only determines whether
an exchange has occurred. 73
Under the traditional consideration doctrine, a promise is only legally enforceable
if it is made in exchange for something of value. This doctrine lies at the heart ofcontract law, known as the consideration doctrine: the law will not enforce unilateralpromises, but promises exchanged for something of value become legally binding
contracts. There are many exceptions to this doctrine. Other rules such as “thedoctrine of promissory estoppel” can make a promise legally binding, and not all
promises backed by consideration are legally enforceable. Nevertheless, theconsideration doctrine remains the most important rule for distinguishing between
unenforceable promises and contracts backed by law. 74
3.4.1.2 Continental Law
Instead of consideration, “causa or reason” is needed in continental law
system.The eminent Roman jurist Labeo describes the contract of Roman law as being

ultrocitroque obligatio quod Graeci synal-lagma.vocanti. In conjunction herewith it is
helpful to consult a passage from Justinian's Digest of which a translation is as follows:“If there is a causa then, according to Ariosto's well-expressed reply to Celsus, there isan obligation formed.” 75

Id. at 129-130.
See David Gamage & Allon Kedem, Commodification and Contract Formation:
Placing the Consideration Doctrine on Stronger Foundations, 73 U. CHI. L. REV. at1299

73
74(2006).
75 See Melius de Villiers, The Roman Contract According to Labeo, 35 YALE L. J. at 292.
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The characteristic feature of a contract was thus that an obligation to do or to givesomething was called into being on the part of each of the parties to the contract. An
obligation on one side implies a corresponding right on the other side, and thus mutual
rights as well as mutual obligations were created. The feature of mutuality was thatwhich distinguished a contract from a donation. 76
One scholar has ever raised the suspicion that “[i]t has sometimes been thought
and said that in Roman law no consideration was required for the validity of a contract.
It is difficult to conceive how such an idea could ever have arisen in the face of Labeo's
language cited above.” And the scholar concluded that “Causa in its essential features
was thus but the English consideration.” 77
In Taiwan, generally speaking, when the parties have reciprocally declared theirconcordant intent, either expressly or impliedly, a contract shall be constituted. 78
However, in cases where according to customs or owing to the nature of the affair, a
notice of acceptance is not necessary, the contract shall be constituted when, within areasonable time, there is a fact, which may be considered as an acceptance of the offer.
Consequently, even though there is no mutually change of consent with each other, it
still can be regarded as contract if due to the custom or owing to the nature of the affair,the notice of acceptance is not necessary. Almost all of the scholars adopt this kind ofview, and therefore regard Creative Commons Licenses as Contracts. 79
3.4.2 Pure License“Pure licenses” and “unilateral licenses” are used to describe non-contractual
licenses, such as software license agreements 80 or open content licenses. 81
76
77

Id.
Id. at 293.

Taiwan’s Civil Code, Article §153
賴文智，自由軟體之著作權問題研究，智慧財 產權月刊第99 期，2007 年 3 月，頁 70-71;
陳人傑，開放原始碼授權條款之法律分析－以通用公共授權為中心（下），科技法律透析，
2002 年 7 月，頁 57-58; 盧文祥，著作財產權創新授權模式法律問題之研析，法令月刊第五十七卷第七期，頁 87；呂佩芳，開放性授權契約對著作利用之影響，國立臺灣大學法律學研
究所碩士論文，2006 年 7 月，頁 118-122。
80 See Niva Elkin-Koren, Copyright Policy and The Limits of Freedom of Contract, 12
BERKELEY TECH. L.J. 93, at 107 (1997). See also, Darren C. Baker, Procd V. Zeidenberg:
78
79

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According to explanation of a report released by OAK Law Project and Legal
Framework for e-Research Project in Australia, “[a] contractual license, as the nameimplies, operates like a standard contract. This allows the copyright owner to not only
give permission for use of the material, but also impose restrictions or additional
conditions on its use. However, a non-contractual license is essentially a barepermission to use the material for certain purpose. An increasingly common form of
non-contractual licensing is the open content license.” 82
According to Black's Law Dictionary, a “license” is “a revocable permission tocommit some act that would otherwise be unlawful.” A license places no conditions on
the licensee, but can be revoked by the licensor at any time.83
Under the non-contractual interpretation, Creative Commons Licenses areunilateral grant of rights, without users’ consent. However, Creative Commons grant
the users conditional permissions such as permission to copy, redistribute and modify
the work. These permissions are intended to protect a user from copyright
infringement if the work is used in accordance with the permissions. The permissions
are not intended to create contractual obligations on either party. But it is criticizedthat the nature of non-contractual has failed to account for the fact that licenses, bydefinition, are “a revocable permission.” 84

Commercial Reality, Flexibility In Contract Formation, and Notions of Manifested Assent
in The Arena of Shrink-wrap Licenses, 92 NW. U. L. REV. at 379, 389-390 (“Indeed, theface-to-face bargaining model has now become impossible for mass-marketed software. To
be useful in the mass market, software license agreements cannot be individuallynegotiated, but rather, must be standardized and concise. Thus, software manufacturers
resorted to unilateral license agreements to maintain control over the copy of the software
after its transfer to the consumer.”).

See New report released by OAK Law Project and Legal Framework for e-Research
Project, at http://www.oaklaw.qut.edu.au/files/Data_Report_final_web.pdf (visitedon2010/5/30) at 137-138.
81

Id.
See, Sapna Kumar, Enforcing the GNU GPL, 2006 U. ILL. J.L. TECH. & POL'Y 1, at
12. See also, Carson v. Dynegy, Inc., 344 F.3d, at 446, 452 (5th Cir. 2003) (“... that a82
83

nonexclusive license was created, whether such a license was irrevocable rests solely
with whether [the plaintiff] received consideration…”). See also I.A.E., Inc. v. Shaver,
74 F.3d, at 768, 775-76 (7th Cir. 1996) (discussing the existence of explicit and implied
non-exclusive non-contractual licenses).
84 See, Kumar, supra note 83, at 13.
47

A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

Even though the function of Creative Commons Licenses is to deal with the
problem of “a revocable permission” by stating that “Licensor hereby grants you aworldwide, royalty-free, non-exclusive, perpetual (for the duration of the applicable
copyright) license to exercise the rights in the Work,” 85 but merely stating that thelicense is irrevocable or perpetual does not make it so. Consequently, there are scholars
who discuss how “doctrine of estoppel, ” “ the principle of good faith” and “principle offorbidding abuse of right” could be used to bridge this gap.86
3.4.3 Conclusion
Because the lack of consideration in common law system, and probably also lackof causa in continental law system, Creative Commons Licenses can not be regarded ascontract, but they are regarded as unilateral permissions to let licensees to use
someone else's property. They do not require users and licensors to exchange mutuallythings of value. Besides, since the restrictions under Article 4 of Creative Commons
License are not out of the range of what copyright law originally sets for the users, it is
not necessary to regard Creative Commons Licenses as contracts (private ordering) to
expand authors’ rights out of the scope of copyright. In fact, authors limit their own
rights to give the public (everyone) the permission to use their work.
However, in Taiwan, this kind of conditional licenses can be regarded as contracts,
according the custom and the nature of the affair. In this paper, it is necessary toreview one more time what is the influence of regarding Creative Commons Licenses
as contracts or licenses, and whether the nature is contract or license can help to get tothe purpose of Creative Commons Licenses – “Free Culture.”
3.5 The Differences to be regarded as Contract or Pure License in Taiwan
3.5.1 The Timing of Contract and License to Be Constituted

See Creative Commons License version 3.0 unported §3. See also, Draft 2 of GPL v.3(attempting to deal with this possibility by stating that “[a]all rights granted under
this License are granted for the term of copyright on the Program, and are irrevocableprovided the stated conditions are met.”).
86 See Kumar, supra note 83, at 13. See also, ローレンス・レッシグ, 林紘一郎, 椙山敬士,若槻絵美, 上村圭介,土屋大洋, クリエイティブ・コモンズ:デジタル時代の知的財産権,
at 92-93 (2005).
85

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The timing of Creative Commons Licenses to be constituted influences whether
can the licensee make against the third parties or not. The following is the analysis of
the timing of contract and license to be constituted.
3.5.1.1 Contract
According to Article 153 of Taiwan’s Civil Code, “[w]hen the parties havereciprocally declared their concordant intent, either expressly or impliedly, a contract
shall be constituted.” And in special condition (due to customs or owing to the nature of
the affair), the contract shall be constituted when, within a reasonable time, there is a“fact”, which may be considered as an acceptance of the offer according to Article 161 of
Taiwan’s Civil Code.
If Creative Commons Licenses are regarded as contracts, the timing of contract tobe constituted is when the users comply to the license and use the licensed work, and itis the “fact” that may be considered as an acceptance of the offer.
3.5.1.2 License
If Creative Commons Licenses are regarded as pure licenses or unilateral licenses,
the timing of licenses to be constituted is when the authors release his work by
Creative Commons License to the public.
3.5.2 Formation
An author is automatically entitled to all copyrights in the work and to any
derivative works around the world. However, in America, there are some special andunique systems such as “evidentiary weight of notice”, “voluntary registration” and“recordation” which are not seen in copyright laws of Japan and Taiwan. This paper
will analyze what is the influence of these systems on Creative Commons Licenses.
3.5.2.1 Copyright in General
Under the Berne Convention, copyrights for creative works are automatically in49

A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

force upon their creation without being asserted or declared. An author does not needto "register" or "apply for" a copyright in countries adhering to the Convention. 87 In
Taiwan, the system of recordation for author to get copyright was abolished in 1998.
Now according to Article 10 of Taiwan’s Copyright Law, “the author of a work shallenjoy copyright upon completion of the work.” Also in Japan, it is the same according to
Article 17 (2) of Japanese Copyright Law which provides that “enjoyment of the moral
rights of author and copyrights shall not be subject to any formality.”
Copyright under the Berne Convention must be automatic, and it is prohibited torequire formal registration. However, even though the United States joined theConvention in 1988, it continued to have copyright notice, deposit and registration
system. For example, if a notice of copyright in the form and position specified in thelaw appears on the published copy or copies, “no weight shall be given to such adefendant’s interposition of a defense based on innocent infringement in mitigation of
actual or statutory damages” (17 U.S.C. §401(d)) Although it is not necessary toregister to get copyright, the American Copyright Act 88 provides some incentives foran author to register his or her copyright in a sense that (1) until registration of the
copyright claim has been made, action to infringement of the copyright in any
American work shall not be instituted; 89 (2) in any judicial proceedings the certificate
of a registration made before or within five years after first publication of the work
shall constitute prima facie evidence of the validity of the copyright and of the facts
stated in the certificate;90 and (3) attorney's fees and statutory damages are available

In some countries including the U.S., fixation is required for the protection of
copyright. Such a system is permitted under Article 2 (2) of the Berne Convention.
88 17 U.S.C. §401(d) “Evidentiary Weight of Notice.—If a notice of copyright in theform and position specified by this section appears on the published copy or copies towhich a defendant in a copyright infringement suit had access, then no weight shall begiven to such a defendant’s interposition of a defense based on innocent infringementin mitigation of actual or statutory damages, except as provided in the last sentence ofsection 504(c) (2).”89 17 U.S.C. §411(a) (“Except for an action brought for a violation of the rights of theauthor under section 106A(a), and subject to the provisions of subsection (b), no actionof infringement of the copyright in any United States work shall be instituted until
registration of the copyright claim has been made in accordance with this title.”).
90 17 U.S.C. §410(c) (“ In any judicial proceedings the certificate of a registration madebefore or within five years after first publication of the work shall constitute prima
facie evidence Of the validity of the copyright and of the facts stated in the certificate.
The evidentiary weight to be accorded the certificate of a registration made thereafter
shall be within the discretion of the court.”).
87

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only for registered works. 91
In the case of Creative Commons Licenses, it is very hard to confirm whether theCreative Commons licensor is the real author or not in Taiwan and Japan, so there ishigh possibility for licensees for being sued by the real copyright holder (author) if theCreative Commons licensor is not the real author. However, in the United States, if theauthors treasure their copyrighted work and worry about infringement in the future,
as long as they think the loss of infringement is higher than registration fee, they will
choose to register in advance. This may be a problem that licensees can not confirm
about who is the real right holder in Creative Commons Licensed work because there
is no system of registration provided in Taiwan and Japan.
3.5.2.2 The Formation of License or Contract
There are different requirements for the formation of license and contract in the
United States, Japan and Taiwan. The followings will discuss the offer and acceptance,
and the competency and capacity of both parties
3.5.2.2.1
1)

Offer and AcceptanceContract

A contract generally requires an offer and an acceptance. Both sides must agree tothe same terms. An offer is an indication by one person to another of his or her
willingness to contract on certain terms without further negotiations. A contract comes
into existence when an acceptance of an offer has been indicated to the offeror by theoffered. 92
17 U.S.C. §412 (“In any action under this title, other than an action brought for aviolation of the rights of the author under section 106A(a) or an action instituted under
section 411(b), no award of statutory damages or of attorney’s fees, as provided bysections 504 and 505, shall be made for—(1) any infringement of copyright in an unpublished work commenced before theeffective date of its registration; or(2) any infringement of copyright commenced after first publication of the work andbefore the effective date of its registration, unless such registration is made within
three months after the first publication of the work.”)
92 See Herkko Hietanen, supra note 67, at 9.
91

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A Legal Analysis of Creative Commons Licenses
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2)

LicenseIf licensing can be seen as a unilateral act, it does not require acceptance. A
licensor just creates an exception to his or her exclusive rights by giving a license(permission) to the licensee. In addition, because a licensee does not have any
obligation beyond copyright law, there is no need to accept the license.93
3.5.2.2.2
1)Competency and Capacity of Both Parties
Contract

Contracts require certain abilities from contracting parties. Both parties musthave the competency and capacity to understand the contract in order to form it. By
requiring competency and capacity from the parties, the legal system protects parties
that may not be capable of understanding the consequences of their actions. This is
why children and mentally disabled people have no or only a limited capability to form
contracts. 94
For example, in Taiwan, majority is attained upon reaching the twentieth year ofage 95. The minor, who has not reached their seventh year of age, has no capacity tomake juridical acts; the minor, who is over seven years of age, has a limited capacity tomake juridical acts. 96 The expression of intent which is made by a person who has nocapacity is void.97 Consequently, a person who has no capacity to make juridical acts
shall be represented by his or her guardian for making or receiving an expression of
intent. 98 Besides, the making or receiving of an expression of intent of a person who islimited in capacity to make juridical acts must be approved by his or her guardian,
except when the expression of intent relates to the pure acquisition of a legal
advantage, or to the necessaries of life according to his or her age and status. 99

93
94

Id.
Id.

Taiwan’s Civil Code §12.
Taiwan’s Civil Code §13 (1) and (2).
97 Taiwan’s Civil Code §75.
98 Taiwan’s Civil Code §76.
99 Taiwan’s Civil Code §77.
95
96

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名古屋ロー・レビュー 第 2 号（2010 年 9 月）

From above, minors who have not reached their seventh year of age have nocapacity to be Creative Commons licensors and licensees except when they are
represented by their guardians for making the offer or receiving the acceptance. Thoseminors, who are over seven but have not reached the twentieth year of age, must be
approved by their guardians to be Creative Commons licensors and licensees. From theviewpoint of protecting minors, it is reasonable to restrict the qualification of being alicensor (although it still leaves the problem of instability for the Creative Commonslicensees), but it does not seem to make sense to restrict the qualification of being alicensee. According to the usage of internet, more and more teenagers spend a lot oftime to surf the internet and use the materials they find on the internet. If every action
to use the Creative Commons licensed work needs to be represented or approved byteenagers’ guardians, the purpose of Creative Commons – free culture – would leave
one exception to teenagers, and this paper does not agree with this kind of conclusion.
2)

LicenseGranting a license usually requires the same competency and capacity as forming
a contract does. However, because licensors give permission to the public, licensees do
not need to afford any obligation, so licensors need to have competency and capability
to limit their rights and create liabilities. On the contrary, there is no need for licensees
to have competency and capability. Consequently, even children can be Creative
Commons licensees. This is a much more reasonable treatment for achieving the
purpose of free culture.
3.5.3 Priority between Conflicting Transfer of Ownership and Nonexclusive
License
3.5.3.1 Registration and Written
1)

The United States

In the United States, any transfer of copyright ownership or other document
pertaining to a copyright may be recorded in the Copyright Office if the document filed
for recordation. In other words, it is not a compulsory obligation or formation for53

A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

recordation of the transfers and other documents. However, as between two conflicting
transfers, the one executed first prevails if it is recorded, in the manner required togive constructive notice. 100 This kind of notice can be in conformity with the principleof public announcement.
In the case between conflicting transfer of ownership and nonexclusive license, anonexclusive license, whether recorded or not, prevails over a conflicting transfer of
copyright ownership if the license is evidenced by a written instrument signed by theowner of the rights licensed or such owner’s duly authorized agent if (1) the license wastaken before execution of the transfer; or (2) the license was taken in good faith before
recordation of the transfer and without notice of it. 101
Under the circumstances of Creative Commons licenses as nonexclusive licenses,
there is no enough incentive for licensors and licensees to sign a written instrument.
For this reason, there is almost no possibility for having a written instrument of a
Creative Commons license in this real world, and it leads to inability for a Creative
Commons license to prevail over a conflicting transfer of copyright ownership, eventhough Creative Commons licenses are claimed perpetual and cannot be revoked.
2)

Japan

In the Japanese Copyright Act, there is a provision for transfer of copyrightstating that unless registered, the transfer (other than by inheritance or otheruniversal successions) of the copyright may not be asserted against a third party. 102
17 U.S.C§205(d) (“Priority between Conflicting Transfers.—As between two
conflicting transfers, the one executed first prevails if it is recorded, in the mannerrequired to give constructive notice under subsection (c), within one month after its
execution in the United States or within two months after its execution outside theUnited States, or at any time before recordation in such manner of the later transfer.
Otherwise the later transfer prevails if recorded first in such manner, and if taken ingood faith, for valuable consideration or on the basis of a binding promise to pay
royalties, and without notice of the earlier transfer.”).
101 17 U.S.C§205(e).
102 JCP §77 (“Unless registered, the matters set forth in the following items may not be
asserted against a third party: (i) the transfer (other than by inheritance or otheruniversal successions; the same shall apply in the next item) of the copyright or a
restriction on the disposal of the copyright; (ii) the establishment, transfer,modification or termination of the pledge on a copyright (other than termination byreason of merger or by reason of the termination of the copyright or the claim secured
100

54名古屋ロー・レビュー 第 2 号（2010 年 9 月）

However there is no provision for registration of nonexclusive license or exclusive
license.
Consequently, in Japan, there is no possibility for Creative Commons licensees to
be claimed against a third party (conflicting transfer of copyright ownership) byregistration.
3)

TaiwanIn Taiwan, the basic concept law originates from the civil law, especially from
German law. The juristic acts are called “Rechtsgeschäft”, which can be divided to“Verpflichtungsgeschäft” (“the Act of Right in Personam” or “Juristic Act of Claim”) 103
and “Verfügungsgeschäft” (”the Act of Right in Rem” or “Juristic Act of Real Right”). 104
However, in common law, it is well-known to distinguish between a “property
right,” a right in rem which is good against all over the world (including the grantor)
and a “contract,” a right in personam which is good against the person of thepromissory. 105 The concepts of property and contract in common law are not totallyequal to “Verpflichtungsgeschäft”(the Act of Right in Personam or Juristic Act ofClaim) and “Verfügungsgeschäft”(the Act of Right in Rem or Juristic Act of Real
Right) in civil law.
There is an issue about the nature of transfer of copyright and a license of
copyright in Taiwan. According to one judgment, it is thought that transfer of copyrightbelongs to “Verpflichtungsgeschäft”(the Act of Right in Personam or Juristic Act ofClaim) and “Verfügungsgeschäft” (the Act of Right in Rem or Juristic Act of Real Right)
at the same time, but a license of copyright belongs only to “Verpflichtungsgeschäft”(the Act of Right in Personam or Juristic Act of Claim).106 On the contrary, somescholars oppose to the above view by the judgment, and advocate that it is necessary toby the pledge), or a restriction on the disposal of a pledge established on the
copyright.”).
103 In Taiwan, it is called “債權行為” or “負擔行為”.
104 In Taiwan, it is called “物權行為” or “處分行為”.
105 See John V. Orth, “A Frequent Recurrence to Fundamental Principles”: A Tribute to
Jim Ely, 16 WM. & MARY BILL RTS. J., at 841, 844.
106 臺灣高等法院 85 年度上易字第 3316 號刑事判決、臺灣高等法院 90 年上更（二）字第391 號刑事判決。
55

A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

regard that transfer of copyright and a license of copyright have the same nature inlaw: when a license has been constituted, both Verpflichtungsgeschäft”(the Act ofRight in Personam or Juristic Act of Claim) and “Verfügungsgeschäft” (the Act of Rightin Rem or Juristic Act of Real Right) happen at the same time 107 to make sure that theprotection of licensees against third parties just like the successor of property.
On July 9th, 2003, Article 37 of the Taiwan’s Copyright Law was amended asfollows: “[t]he economic rights holder may license others to exploit the work…The
license referred to in the preceding paragraph shall not be affected by subsequentassignment or further licensing of economic rights by the economic rights holder.”Consequently, in certain extent, a license of copyright can be regarded as “quasi juristic
act of real right” in Taiwan. In addition, there is no need to register the copyrightlicense, nor it to form in writing in order to make it claimable to against third parties. .
licensetransfer

nonexclusive

exclusive

UnitedOOOStated(if(if recordation is made)

(if

the

licenseisevidencedbyawrittenrecordation

is

made)

instrument

signed by the ownerof the rights licensed
or such owner’s duly
authorized agent)

Japan

X

X

O
(

if

transferisregistered)TaiwanO

O

O(base on the nature(base on the nature of(base on the natureof TCP §37(2), no

TCP §37(2), no need toof “transfer”, no need

need to do anything)

do anything)

to do anything)

Enforceable (O) or Not (X) Against a Third Party, and Conditions to Claim toAgainst a Third Party
107

謝銘洋，從相關案例探討智慧財產權與民法之關係，臺灣大學法學論叢第三十三卷第二期，頁 216-221；賴文智，智慧財產權與民法的互動－以專利授權契約為主，國立臺灣大學
法律學研究所碩士論文，2000 年 6 月，100-103。
56

名古屋ロー・レビュー 第 2 号（2010 年 9 月）

3.5.3.2 Enforceability Against Third Parties－Stability of CC
In common law, property and contracts are two distinct legal mechanisms thattogether constitute the market. Copyright law is responsible for allocating the initialentitlements, while contract law governs their transfer; copyright law creates rights
against the world (in rem), whereas contract law applies only to the parties (inpersonam). Property rights differ from contract rights in that a property right “runswith the asset,” namely; it can be enforced against subsequent transferees of theasset. 108
However, there are some systems, for example, recordation and written
instrument in the United States, which help licensees to claim against the conflicting
transfer of ownership or exclusive licensees. In Taiwan, there are no requirements forlicensees in order to be effective against the subsequent assignment or further
licensing of economic rights. The following is an analysis of enforceability against third
parties with the view of Creative Commons License as a contract or a license,
especially in Taiwan.
3.5.3.2.1 Contract- in personam
1) Criticism by Scholars
Although Creative Commons Licenses provide that the license is perpetual (forthe duration of the applicable copyright), it is criticized by scholars that it is still
unclear to what extent this license binds successors of the copyrights in the licensed
works under the view of seeing Creative Commons as contracts.109 And also relianceon revocable licenses is particularly acute when ownership changes hands, as inbankruptcy, death, or transfer as part of a settlement dispute. Similar issues may arise
when rights are purchased and voluntarily transferred to someone else. The new rights
holder could deny access to works that were previously authorized and incorporated

See Niva Elkin-Koren, supra note 49, at 407; see also Henry Hansmann & Reinier
Kraakman, Property, Contract, and Verification: The Numerus Clauses Problem andthe Divisibility of Rights, 31 J. LEGAL STUD. 373, 378-379 (2002); Niva Elkin-Koren,supra note 80, at 102-104.
109 See Niva Elkin-Koren, supra note 49, at 417-418.
108

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A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

into derivative works. In some cases, revoking a license to use a work may constitute a
breach of contract, or invoke a reliance interest, entitling the immediate licensee todamages. Revoking the contract may allow the right holder to enforce the copyrightagainst third parties. 110 Enforcing standard licenses against third parties blurs thedistinction between property and contracts. It allows distributors, right holders, andpossibly others to establish rights in rem through contracts. 111
2) The Problem in Taiwan
As described above, according to article 37 of Copyright Law, “[t]he economic
rights holder may license others to exploit the work”, and “[t]he license ... shall not beaffected by subsequent assignment or further licensing of economic rights by the
economic rights holder.”For example, if one author A released his work under a Creative Commons
License on October 1, 2007, later there is a user B who used the licensed work on
October 5, 2007. However the author A changed his mind and transferred his economic
rights to C on October 10, 2007 112, finally there is another user D used the licensed
work on October 15, 2007. According to Taiwan’s Copyright Act, who can enforce
against C? According to the literal explanation of article 37 of Copyright Law, it seems
that B can enforce against C, but D can’t enforce against C.
Consequently, if someone who accepts Creative Commons Licenses and also use
the CC licensed work before October 10, 2007, he or she can against the subsequentassignment or further licensing of economic rights by the economic rights holder. Thereis no worry for the users who use the CC licensed work before October 10, 2007,
because every “contract is constituted between every users and author, and the timingof contract which is constituted by users who comply with the license and use thelicensed work. However, the users who use the CC licensed work after October 10,
2007 will get trouble because they cannot claim against the subsequent assignment or
further licensing of economic rights by the economic rights holder according to article
110
111

Id. at 417-418.
Id. at 407.

The same as this situation of transferring the economic rights, the author may
probably sign an exclusive licensee to others. (It is no effect to Creative Commonslicensees if the licensor sign a non-exclusive licensee to others.)
112

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名古屋ロー・レビュー 第 2 号（2010 年 9 月）

37 of Copyright Law.
To distinguish the users who use the CC licensed work before October 10, 2007
from those who use it after that date is very difficult, because there is no registration
nor is recordation system in Taiwan. Even the subsequent successor or further
exclusive licensees take litigation toward Creative Commons licensees; it is still very
hard for the licensees to bring the evidence of using the CC licensed work before
October 10, 2007 to the court. This result will lead to instability of Creative Commons.
3) The Solution of Difficulties in Taiwan
From the viewpoint of regarding Creative Commons Licenses as contracts and aliteral explanation of article 37 of Taiwan’s Copyright Law, it seems that thesubsequent Creative Commons licensees can not enforce against the successor andexclusive licensees before. However it is a lawful and technical dilemma which occurs
when one author releases his or her work wih a Creative Commons License, and thensigns an assignment contract or exclusive license to others. As the legislative policy,
there are some questions that need to be resolved: (1) is it permitted for those authors
who already released his or her work with a Creative Commons License to further sign
an assignment contract or exclusive license to others? (2) Even if it is permitted for
those authors who already released their work with a Creative Commons License tofurther sign an assignment contract or exclusive license to others, how can thosesuccessors and licensees tell to the public this situation? (3) Even if there is a
publication for successors and licensees to tell to the public this situation, it is notcorrespondent to the purpose of a Creative Commons License that everyone can bevery safe to use the Creative Commons Work under the “perpetual” clause. (4) In atechnical field, if it is permitted for those authors who already released their work witha Creative Commons License to further sign an assignment contract or exclusive
license to others, how should the “attribution” be dealt with?
This

paper

tries

to

resolvetheproblembytheGermany“Zweckübertragungstheorie” and the principle of abusing of right as followings.
(A) German Theory of “Zweckübertragungstheorie”

59

theoryA Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

The German theory “Zweckübertragungstheorie” 113 was first advocated by aGermany scholar Wenzel Goldbaum in 1921, and accepted by the Supreme Court. In
January 1 th1965, the German theory “Zweckübertragungstheorie” was enacted in
Article 31 (5) of the German Copyright Law as follows. “If the types of use to which the
exploitation right extends have not been specifically designated when the right was
granted, the scope of the exploitation right shall be determined in accordance with the
purpose envisaged in making the grant.” 114
In

Taiwan,theSupreme

Court

also

acceptstheGermany

theory“Zweckübertragungstheorie.” 115 Consequently, if both contract parties’ intention isclearly stipulated in contract, there would be no argument; but if there are matterswhich are not clearly stipulated in contract, it becomes necessary to search for the real
intention of the parties that are explicitly stipulated or implied in the contract. Under
the circumstances of that the real intention cannot be clarified, the German theory“Zweckübertragungstheorie” is used to interpret the stipulation in the contract.
Because of the purpose of Creative Commons Licenses is to let everyone without
limitation to perpetually use Creative Commons licensed works and promote thecirculation of the free culture. Consequently, according to the German theory“Zweckübertragungstheorie,” even if an assignment contract or an exclusive license
has been made, the successors (the person “C” in the example illustrated in p.31-32)
can only ask for the compensation for damages of a breach of the contract from theauthors (the person “A” in the example illustrated in p.31-32). The successors can not
ask for the Creative Commons licensee (the person “D” in the example illustrated in
p.31-32) to stop the use of the Creative Commons Licensed work or compensation.
According to the German theory “Zweckübertragungstheorie,” it should be ensured
that the present and future users can use the Creative Commons licensed work.
(B) Principle of Abusing of Right
According to Taiwan’s Civil Code Article 148, “[a] right cannot be exercised for the
The Germany theory “Zweckübertragungstheorie” is translated to 「目的讓與理論」
in Chinese and 「讓渡目的論」 in Japanese.
114 See the German Copyright Law (Urheberrechtsgesetz, UrhG), at
http://www.iuscomp.org/gla/statutes/UrhG.htm#31 (visited on 2010/5/30 ).
115 台灣最高法院在八十六年度台上字第七六三號判決中即採目的讓與理論。
113

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名古屋ロー・レビュー 第 2 号（2010 年 9 月）

main purpose of violating public interests or damaging the others,” and “[a] right shallbe exercised and a duty shall be performed in accordance with the means of good faith.”This is the principle of abusing of right. There is an abuse of right when the
exploitation of an individual right injuriously affects the interests of the community.
If it is permitted for those authors who already released their work with Creative
Commons Licenses to change their mind or further sign an assignment contract or
exclusive license to others, it would cause a large amount of loss by the Creative
Commons licensees. Consequently, the action of changing their mind or further sign an
assignment contract or exclusive license to others is invalid as right abusing.
3.5.3.2.2 License- in rem
If Creative Commons Licenses are regarded as pure licenses or unilateral licenses,
the timing of licenses to be constituted is when the authors release their works with
Creative Commons Licenses to the public. Besides, according to Article 37 of the
Taiwan’s Copyright Law, the successor and exclusive licensees will be always
subsequent to the Creative Commons licensees, so the status of Creative Commonslicensees would be very stable under the view of Creative Commons Licenses as purelicenses.
3.5.4 Freedom of Contract and Real Right Legalization Principle
3.5.4.1 The freedom of contract
Freedom of contract is the idea that individuals should be free to bargain among
themselves the terms of their own contracts, without government interference. The
freedom of contract has its roots in economic liberalism. Adam Smith saw that
contracting parties value other party’s performance more than their own. This is why
reasonable individuals should have the means to trade. Freedom of contract can bedivided to the following three elements.116(1) The freedom to make contracts (including the freedom not to make116

See Herkko Hietanen, supra note 67, at 4.
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A Legal Analysis of Creative Commons Licenses
in Taiwan, Japan and the United States（王珮儀 Wang Pei-Yi）

contracts).
(2) The freedom to choose parties.
(3) The freedom to choose the content of the contract. Typically, this includes
the absence of formal requirements for contracts.
As the view of seeing Creative Commons Licenses as contracts, authors have thefreedom to choose to release their copyrighted work or not. However, Creative
Commons offers six kinds of customized licenses for authors to choose for release of
their work to the public. Also the licensing platform established by Creative Commons
provides an automated mechanism that may significantly reduce transaction.117 Only
when authors really understand all of the terms written in Creative Commons
Licenses, is it suggested for authors to use this kind of customized licenses. If authors
want to release their work with a Creative Commons License, they have to release
their work to the public without choosing the parties. Besides, if they do not agree theterms of a Creative Commons License, they cannot alter the content of the license. The
action of altering may lead to an infringement of Creative Commons’ copyright ortrademark, and also defraud the users who believe the Creative Commons License.
3.5.4.2 Real Right Legalization Principle
If Creative Commons Licenses are not contract, can they be seen as the act ofright in rem (juristic act of real right)? If the answer is yes, according to Taiwan’s Civil
Code Article 757, “[n]o rights in rem shall be created unless otherwise provided by thepresent Code or by other Acts.” This is the real right legalization principle (or doctrine),
which is considered as a basic principle in traditional real right law in continental law
system. This proposition is not only created by scholars of civil laws, but also depends
on several legislative patterns of real right. It will be very difficult for viewing Creative
Commons License as the act of right in rem (juristic act of real right) without
legislation.
4. Conclusion
This paper tries to introduce the basic elements and conditions of Creative

117

See Niva Elkin-Koren,supra note 49, at 414.
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Commons Licenses in Chapter 2, and also analyzes the nature of these licenses fromthe perspectives of contract agreement and pure license in Chapter 3. This analysis
starts from comparing the traditional license, Shrink-wrap, Click-wrap, Browse-wrap
Licenses and Creative Commons Licenses, based on different legal systems, i.e., thesystems of the United States, Japan and Taiwan. The analysis then touchs upon
individual issues such as formation of the offer and acceptance, the competency andcapacity of both parties of the licenses, timing of contract and license to be constituted,
and priority between conflicting transfer of ownership and nonexclusive license.
From the viewpoint of Taiwan whose legal system is based on the civil law system,
the following can be pointed out.
(1) As to the view which regards Creative Commons Licenses as contracts:(a) In Taiwan, conditional licenses can still be regarded as contracts, according to
the custom and the nature of the affair according to Article 161 of Taiwan’s
Civil Code.
(b) If Creative Commons Licenses are regarded as contracts, the timing ofcontract to be constituted is when the user complies to the license and uses
the licensed work, and it is the “fact” that may be considered as an acceptanceof the offer.
(c) In the status of protecting minors, it is reasonable that why that is necessary
to restrict for the qualification of being a licensor, but it leaves the problem of
instability for the Creative Commons licensees. For example, more and moreteenagers spend a lot of time to surf the internet and use materials they findon the internet. If every action to use the Creative Commons licensed workneeds to be represented or approved by teenagers’ guardians, the purpose of
Creative Commons – free culture - would leave one significant exception of
the uses by teenagers.
(d) According to Article 37 of Taiwan’s Copyright Law, a license of copyright canbe regarded as a “quasi juristic act of real right” in Taiwan. From literalexplanation of article 37 of Taiwan’s Copyright Law, it seems that thesubsequent Creative Commons licensees cannot enforce their right against
the successor who obtain the right before. This paper tries to resolve theproblem by the German theory “Zweckübertragungstheorie” and the principle
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of abusing of right.
(2) As to the view which regards Creative Commons Licenses as pure license:(a) The timing of licenses to be constituted is when the authors release theirwork with a Creative Commons License to the public. Besides, according to
Article 37 of Taiwan’s Copyright Law, the successor and exclusive licensees
will be always subsequent to the Creative Commons licensees, so the statusof Creative Commons licensees would be very stable under the view ofCreative Commons Licenses as pure licenses.
(b) Minors can be Creative Commons licensees. This is a much more reasonable
explanation for achieving the purpose of free culture.
(c) If Creative Commons Licenses can be seen as the act of right in rem (juristic
act of real right), according to Article 757 of Taiwan’s Civil Code which
provides for the real right legalization principle, it will be very difficult toregard Creative Commons License as the act of right in rem (juristic act ofreal right) without legislation.
This paper tries to analyze the nature of Creative Commons Licenses, and poses
affirmative attitude toward them as tools to create international commons. However,there are still questions that need to be resolved. The best way to answer thesequestions seems to be to enact special provisions in the copyright law to clarify therules concerning application of open content policies such as Creative Commons. Even
an international convention for that purpose would be worth considering.

64名古屋ロー・レビュー 第 2 号（2010 年 9 月）

（付記）
この論文の執筆者である王珮儀（Wang, Pei-yi）女史は、台湾の出身で、国立台湾大学の法学部及び法学研究科修士課程を修了後、2007 年 9 月から約１年、名古屋大学に短期留学され、現在は台北市で弁護士をされている。本稿は、名古屋大学留学中に私（鈴木）の指導のもとで執筆した論文を、要約・改訂したものである。
（名古屋大学大学院法学研究科教授 鈴木將文）

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