Transcript WIPO-NIFT “TRAINING THE TRAINERS” WORKSHOP ON INTELLECTUAL PROPERTY RIGHTS New Delhi, June 20 to 24, 2005

WIPO-NIFT
“TRAINING THE TRAINERS” WORKSHOP
ON INTELLECTUAL PROPERTY RIGHTS
New Delhi, June 20 to 24, 2005
Benefiting From
Your Copyright
Lien Verbauwhede
Consultant, SMEs Division
World Intellectual Property Organization (WIPO)
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This Presentation
1.
2.
3.
4.
5.
Introduction: Copyright vs. industrial
design
Generating income from creations
Licensing
Merchandising
Conclusions
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1.
Introduction
Copyright vs Industrial Designs
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Copyright
• Original works
– painting, drawing, photograph,
sculpture, engraving,
illustrations, etc
Ind. Design
• Ornamental/aesthetic
aspect of an article
– shape, configuration, pattern,
ornament, composition of
lines or colors
• Applied to article by
industrial process or means
• No formalities
• Registration + fees
• Longer term
• Max. 15y in India
• Automatic all Bern countries
• Territorial
• Not goods related
• Only prevents actual copying
• For goods registered
• Monopoly
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Copyright and designs protection are
essentially different in nature and scope
Amrita Shergill
Wine bottle holder
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Occasionally, the subject matter of an
industrial design may appear to coincide
with the subject matter of artistic copyright
Carpet
Pottery
vase
Monopoly game
Table mat
 Start of life as an “artistic work”
 Are capable of reproduction as products
entitled to design protection
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In principle...
The application of an artistic work to an
article as a design
will infringe copyright in that work
because it’s a reproduction of that work
in the absence of any statutory
provisions preventing this.
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Possible scenarios
• Copyright + design
• Either copyright or design
• Lose copyright when ‘industrial use’
– reproduced in products
• Copyright not available during industrial use
• Loose copyright when you register design
• Loose copyright + design right if no registration
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No dual protection in India !
Art 15 Indian Copyright Act
Design registered
under the Designs
Act
No copyright
Design capable of being
registered, but not been
so registered
Copyright ceases as
soon as article to which
the design has been
applied has been
reproduced >50 times
by an industrial process
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When do you need to consider registering
your art as a design?
• If you start making multiples of an artwork
• If you incorporate artwork in an article
In India:
Overseas:
Consider
registering your art
as an industrial
design
Obtain separate advice. The
interaction between design
and copyright law varies from
country to country
Register a design BEFORE articles made
are sold or published!
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2.
How can you generate income
from your creations protected by
copyright?
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(a) Commercialize your works yourself
– Exploit your works individually :
• Simply sell the products
• Make copies of the products and sell them
• Reproduce the works on t-shirts, posters, etc.
• Exhibit the works in museums, craft exhibitions, fairs, etc.
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If you sell your work, do you lose your
IPRs over it?
• Mere sale of a copy of a work protected by
copyright does not automatically transfer
copyright to the buyer
• Idem:
– Mere sale of a work that incorporates an industrial
design does not automatically transfer design rights to
the buyer
– Mere sale of a patented work does not transfer patent
rights to the buyer
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• The property rights over a physical object
(work) are completely independent from
the IP rights of the creator.
• The buyer of a work acquires the physical
object, but not the copyright, design rights,
etc. over the work
– pigments, canvas, frame, stretcher
• IP rights in the work remain with the
creator unless he expressly assigns it by
written agreement to the buyer
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Selling an article
does not mean
loosing copyright
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Example.
Artist sells his sculpture ...
 Buyer cannot make copies and sell
them (reproduction right)
 Buyer cannot print the sculpture on
postcards and sell them
(reproduction right)

Buyer cannot exhibit the sculpture
in art gallery or other public place
(exclusive right to show the work in
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public)
 Buyer cannot alter the work in a way
that is prejudicial to the honour or
reputation of the author (moral right to
object to derogatory treatment)
• Ex. Geese in Canada
• Ex. Painting burned in chimney after dispute with wife
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(b) Sell your IP rights
– You can transfer all or part of your exclusive
rights to someone else
• “Assignment”
• Irrevocable transfer of the owner’s entire interest in all or
some part of the intellectual property
• In writing + signed
• May be partial (type of right / time)
– Buyer becomes the new owner of the
transferred rights (trademark, design, copyright)
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• Example.
Artist sells copyright in his sculpture ...

Buyer can exhibit the sculpture, reproduce it on
postcards, take a photograph of it, etc.

Artist cannot reproduce it on postcards, etc.
without explicit authorization from the copyright
owner

BUT: Moral rights remain with the artist
• No derogatory treatment
• Right to be identified as author
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(c) Authorize someone else to
reproduce or use your work
– Artist can authorize someone else to
exploit his IP rights, against payment
– Authorized person (licensee) can only use
the rights in the specific form and under
the specific conditions allowed by the
license
• E.g. only one reproduction, in specific
magazine, in color, with a biography of the
artist, etc.
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– License  Transfer of rights
 Artist (licensor) retains the IP rights
– Artist can authorize several people to exploit the works
simultaneously
– Exclusive vs. non-exclusive licenses
 Licensee does not acquire any ownership of
the IP rights
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3.
Licensing
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(a) What is licensing?
•
License is an agreement between the
owner of the IP right (licensor) and another
person (licensee) in which the licensor
permits the licensee to use the IP right in
the manner and for the time period
specified in the agreement.
 only right to use (not own) the rights
 only in a specific manner
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(b) Examples of licensing
Trademark…
- Word + figurative element
- Spain  CTM (registered with the OHIM)
- For toys, especially “maquettes” (sailing
boats, wooden cars, teddy bears, etc.)
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Industrial designs…
• Owner of industrial
design grants to someone
else certain rights related
to the design.
• This may include such
things as the right to use,
manufacture and sell the
design.
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Consider licensing
Copyright…
•You are an artist/designer
and don’t want to be
involved in manufacturing
•You don’t have capacity to
produce more items
•You don’t want to produce
elsewhere (in India/abroad)
•You don’t have capacity to
distribute elsewhere
•You want to benefit from a
better reputation of a partner
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Copyright…
Embroidery Stock design:
•Library of designs for commercial
embroidery companies to sew on
garments for sale
•Download online
•License agreements to use design
•Allows embroiders to choose
according to their preferences and
project needs
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(c) Why should artist/artisan consider
licensing?
• Income: Can generate lucrative fees
and royalties
• New markets: Allows to enter into new
product categories or in new
geographical areas in a relatively riskfree and cost-effective way
• Marketing tool: Increases the artist’s /
artisan’s exposure and recognition
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(e) How to develop a proper licensing
strategy ?
1. Protect your IP rights
– Deposit and register, if possible
– Keep confidential information secret
– Place notice on the works
• ©, Lien Verbauwhede, 2005
• "Protected Design”, Lien Verbauwhede, 2005
• Lienky®
• Other logos/notices
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2. Find right licensee
– Look for potential users
– Internet, licensing organizations, specialized
merchandising companies, etc.
• E.g. International Licensing Industry
Merchandisers’ Association (LIMA)
– Trustworthy and diligent partner
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3. Assess foreign markets
– Usually, the licensee will be
responsible for local manufacture,
localization, logistics and distribution
– Protect your IP in the relevant markets
• IP rights are territorial (but copyright ...)
• International treaties
• Differences in national IP laws (term, etc)
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4. Preserve control over the commercial
use of your works
– Licensee must place IP notice
– Require samples of the products  QUALITY
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5. Tailor scope of license to actual
needs of licensee
– Avoid assignment of rights
– Prefer non-exclusive licenses
– Limit the scope to the specific needs and
interests of the licensee (intended business
goal)
If assignment or exclusive license 
negotiate fair compensation
Once you assign your rights, you loose all
its future income earning potential
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6. Draft a solid license agreement
– Content
– In written + signed
– In many countries: must be registered with
Copyright Office in order to be able to
enforce rights against others (unlike India)
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7. Negotiate fair compensation
– Fee
– Royalty
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8. Take action against infringements
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(f) What should be mentioned in a
licensing contract?
skip
– Parties: Who bill be bound by it
– Subject matter: What exactly is being
licensed
– Goods: Types of products/services the IP
right will be used for
– Targeted Use:
• manufacture and/or distribution of the goods
• sale of those goods
• use on corresponding packaging and advertising
materials
• use for advertising campaign, Internet
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– Territory:
• Countries where the goods will be sold or
manufactured
– Term:
• Number of months/years; or number of units; or
time to achieve the intended business goal
• Can the agreement be prolonged after that period?
• Can the agreement be terminated before that period
under certain conditions?
• Consequences of such early termination
– Conditions after termination
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– Compensation
• One-time payment (flat fee); periodic payments
(royalties); combination
• Basis of calculation of royalties (sales, hits)
• Timing of payment
– Exclusive or non-exclusive?
– Sub-licenses?
• If allowed  prior agreement?
– Materials to be provided to the licensee
• E.g. mould of sculpture
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– Requirements as to the use of the work
• Size, placement, format, quality, resolution
• Attribution (copyright notice, trademark notice, etc)
• Prior approval (reproduction proof)
– Requirements as to the commercialization
of the products:
• Selling points
• Minimum production
• Obligation to inform about the number of products
manufactured, distributed or sold, etc.
• Marketing duties
– Requirements as to publicity and promotion
• In television, newspaper, radio, etc.
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– Third party infringements
• Obligation for the licensee to keep you informed
about any infringements of your IP rights by third
parties of which he becomes aware
– Indemnification clause
• Licensee will protect you from any lawsuit that
might arise from licensing activities
– General clauses
• Applicable law
• Jurisdiction
• Dispute resolution
• Confidentiality, etc
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4.
Merchandising
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(a) What is merchandising?
•
Merchandising is a form of marketing
whereby IP rights (typically trademarks,
industrial designs and copyright) are used
upon corresponding goods
•
Generally through licensing : No
assignment of rights, only an authorization
to use the work in a specific manner
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(b) Examples of merchandising
Paintings…
Botero
Picasso
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Drawings and cartoons …
• Panda from the WWF
• Fido Dido < Joanna Ferrone and Susan Rose
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Architectural works …
Taj Mahal, India
Eiffel Tower, Paris
Atomium, Brussels
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Photographs …
• “Guerrillero Heroico” < Alberto Korda (1960)
• Key rings, agendas, hats, socks, bed linen,
kitchenware, etc.
• However, Alberto Korda received only very little
financial remuneration for the use of his
photograph
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– For the artist:
• His work is promoted, and will gain recognition and
value in the market
• Receives additional and continuing remuneration
(+ heirs)
• Maintains ownership over his rights and controls the
uses of his works
– For the merchandisor:
• Can use the attractiveness of a work to promote the
sale of his products
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Case Study:
Mary Engelbreit
• Mary Engelbreit is known
throughout the world for her colorful
and intricate designs, and has
become a pioneer for art licensing.
• Beginning: "drawing to order" for
free-lance clients.
• Wanted to be a children's book
illustrator.
• Went to New York  "mild
reception" from publishers
• Suggestion: illustrating greeting
cards
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• Several well-known card companies
bought her designs, and sales were brisk.
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• Other companies were anxious to
merchandise Mary's distinctive artwork
on a wide range of products including
calendars, T-shirts, mugs, gift books,
rubber stamps, ceramic figurines and
more.
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• 1986: Mary Engelbreit greeting cards had blossomed
into a million-dollar-a-year business. She decided to
license her cards to Sunrise Publications to free up
more time for her art and to grow her business in other
areas.
• Mary Engelbreit Studios now has contracts with
dozens of manufacturers who have produced more
than 6,500 products in all.
• Mary takes extreme care in choosing only the best
companies to work with and goes to great lengths to
make certain that her artwork is reproduced as
faithfully to her original work as possible.
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• 2001: Mary saw her original dream come true when
she signed a contract to illustrate children's books for
publishing giant HarperCollins.
When Mary was young, people told her that
being an artist was not a realistic way to make a living,
but Mary Engelbreit was never one
to be easily discouraged.
"I believed in myself," she says, "and now I'm living my
dream."
Source: www.maryengelbreit.com
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5.
Conclusions
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• Owners of copyright have great power to define
how their works are used.
• Important to consider a range of possibilities to
commercialize your works.
Possible to simultaneously grant various licenses for one
single work:
– To different users
– For specific manners of exploitation
– For limited period of time
– In limited territory
– For specific purpose
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•Protect your IP
•Choose the right protection
•Beware of overlap provisions
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Thank you !
Lien Verbauwhede
www.wipo.int/sme/
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