WIPO NATIONAL SEMINAR ON ENHANCING AWARENESS AND BUILDING CAPACITY OF SMES TO BENEFIT FROM THE INTELLECTUAL PROPERTY SYSTEM

Kuala Lumpur, Malaysia, Sept. 7 and 8, 2006

Companies as Owners and Users of Works Protected by

Copyright

&

Related Rights

Lien Verbauwhede Koglin

Consultant, SMEs Division World Intellectual Property Organization (WIPO)

This Presentation

• Copyright basics • Identify common situations in which copyright issues may arise • Learn how to resolve copyright issues • Significant damages can be available for infringement

PART 1 WHAT IS COPYRIGHT ?

My: Copyright Act 1987

What is Copyright



Grants authors, composers, and other creators legal protection for their creations

(‘

works

’ )

literary and artistic



Gives ‘bundle’ of exclusive rights , which allow owners to control the use of their original works in number of ways and to be remunerated



Also provides ‘moral rights’ which protect the author’s reputation and integrity.

Copyright Works

Films Literary Dramatic Photographic Music Artistic

Copyright and Business

•

Computer programs

• Content on

websites

+ ‘look and feel’ •

Graphic works

Copyright and Business

•Artwork and text on

labels, packaging

product literature and •

Marketing and advertising materials

(on paper, billboards, websites, accounting forms, product catalogs)

Copyright and Business

• Sales training program captured on videocassette • Newsletters • Instruction sheets, operating manuals for machines, maintenance manuals • Technical drawings, diagrams, maps, architectural plans • Some types of databases

What is not protected?

• Ideas, procedures, methods, systems, processes, concepts, discoveries, devices, anything purely functional • E.g. Instruction manual that describes system for brewing beer • E.g. Ideas embodied in desktop metaphor (idea to use windows to display multiple pages on computer screen) • May be protected by patent

What is not protected?

•

Facts or information

• Historical, news, scientific, biographical • E.g. biography •

Government works

• Statutes, judicial opinions, etc •

Works not fixed in tangible form of expression

• Non recorded words or songs

What is not protected?

•

Names, titles, slogans, short phrases

• But advertising slogan may be protected under TM or passing off • Artistic logo may be protected under copyright Nike

What is not protected?

• •

Works of applied art ?

 Clothing not protected, fabric design is  A belt may not be protected, its buckle can be  Jewelry which has elements that are original and not purely functional

What is not protected?

•

Works of applied art ?

 Protection differs greatly from country to country   Overlap with industrial designs In My: 1. No copyright protection if design is registered 2. No copyright protection if design is not registered, but filfills requirements for ID + is reproduced more than 50 items

A Bundle of Exclusive Rights

Economic Rights

– Reproduce or make copies – Distribute to public – Sell, rent

*

, lend* – Display or perform to public – Adapt and translate – Make available on the Internet

Assignment or License Moral Rights

– Right of authorship: acknowledgement – Right of integrity: object against mutilation and/or distortion

Moral Rights cannot be transferred

* Generally applies only to certain types of works: Cinematographic works, musical

works, or computer programs.

What are Related Rights?

Rights of performers

• • • • • actors musicians singers dancers or generally people who perform

Rights of producers of sound recordings

(phonograms)

Rights of broadcasting organizations

in their recordings ( cassette recordings, compact discs, etc.) in their radio and television programs and in Internet broadcasts such as ‘podcasts’

Example, in the case of a

song

by Barry White …

Copyright

protects the

music of the composer

and the

words of the writer

, and ...

Related rights

would apply to ..

the

performances

of the musicians and singers who perform the song the

sound recording

of the producer in which the song is included

Can't Get Enough/Just Another Way to Say...

(1973/75,IMS Records) the

broadcast program

of the organization that produces the program containing the song

Copyright

•

Term of protection

: Generally speaking: - Life author + 50y - Exceptions •

Automatic

• Copyright subsists

worldwide

: Berne Convention

heirs So why register?

But national law applies

• Sportman invents technology for better shock-absorption for running shoes. • Advertises on his website. Describes in text what the technology is about.

• Competitor sees website and makes running shoes with the same absorption technology.

PART 2 Why is Copyright Relevant to Your Business?

1. Control of Commercial Exploitation Exclusivity

over the use of copyright protected works helps business to gain and maintain

competitive edge

in the marketplace

– computer programs – advertisements – instruction manuals – musical compositions – photographs – catalogs – video games – multimedia – commercial databases – technical drawings – films – magazines – architectural works – websites – sound recordings – TV and radio programs

2. Generate Income



Copyright is a tradeable asset

that may be owned, bought and sold the same as other types of property  sell copies of the work  sell copyright in the work  permit others to use your copyrighted work  Can be an important

long-term value

for your business if the work is of quality or is a commercial success.

3. Raise Funds

•

Companies that own copyright assets may be able to borrow money from financial institution by using such a bundle of copyrights as a collateral.

• •

E.g., portfolio of distribution rights to movies In Malaysia: banks still reluctant to lend against IP

4. Take action against infringers Copyright law enables to take legal action against anyone encroaching on the exclusive rights Remedies/Sanctions: - Stop infringement - Obtain monetary relief (damages) - Destruction of infringing works - Criminal sanctions (fine 20.000 RM and more + imprisonment)

5. Use Works Owned by Others May enhance the value or efficiency of your business

- play music in restaurant, bar, retail shop - use computer software or databases created by others - illustrate your website or catalogs with photographs taken by others

Requires, in most cases, prior permission from the copyright owner

6. Effective Marketing and Advertising Enticing marketing or advertising materials requires use of creative text , artwork , logos , etc., which are all protected by copyright.

In the

digital environment

,

companies are turning to the Internet and use copyright protected works on their websites to get noticed , build loyalty and ultimately boost sales .

    

short movies online music interactive games contests other new marketing ploys

PART 3 How to Maximize your Copyright Protection in Your Business’ Creations?

1. Prove ownership



Copyright register (not Malaysia)



Deposit copy with bank / lawyer



Malaysia: Statutary Declaration / Affidavit (time, owner, copy)



Send yourself copy in sealed envelope



Copyright notice



Standard Identification Numbering Systems

-International Standard Book Number (ISBN) -International Standard Recording Code (ISRC)

1. Prove ownership



Keep records of circumstances in which the work was made

- name author - work: original drawings, draft manuscripts, etc - contracts: commissioning, employment, etc

2. Protect works in electronic form



Mouse-click contract



Mark with rights management information

- Label (copyright notice, warning label) - Digital Object Identifier - Time stamp - Digital watermark 

Technological protection measures

- Encryption - Access control or conditional access systems - Versions of lower quality

2. Protect works in electronic form In My: Circumventing

any effective technological measures that are used to restrict acts controlled by copyright =

Infringement

- remove or alter electronic rights management information - distribute works knowing that the electronig rights management information has been removed

3. Ascertain ownership



Author ≠ owner

- But moral rights...



Work created by employee in the course of employment

- My: Owner = employer (unless ≠ contract) Other countries: ≠ rules 

Commissioned work

My: Owner = commissioner (unless ≠ contract) - Re-use of commissioned material for the same or different purposes

CONTRACT

• You outsource creation of software to software developer • Who owns copyright?

PART 4 How to Get the Most out of Your Copyright in Your Business’ Creations?

Sell the work or sell copies of the work

Do you lose copyright?

Business’ activity Buyer’s interest Price License your economic rights

Exclusive Non-exclusive

Sell your copyright

‘assignment’

When should you consider licensing or selling your copyright over a work?

The exclusive rights

can be divided and subdivided and licensed or sold to others in just about any way you can imagine: — by territory — time — market segment — media — content, etc.

You can grant different licenses, to different persons or companies, at the same time.

Why should a business consider licensing?

•

Income

: Can generate lucrative fees and royalties •

New markets

: Allows business to enter into new product categories or in new geographical areas in a relatively risk-free and cost-effective way •

Marketing tool

: Increases the business’ exposure and recognition

Licensing Strategy



Define scope of activities permitted under the license as precisely as possible



Generally, better limited in scope

- To specific needs and interests of licensee - Non-exclusive license allows further opportunities 

Exclusive license or assignment

- If no alternative - If adequate price - Loss of all future income-earning potential

Licensing Strategy



Handle all aspects yourself

- standard terms and conditions - individually with every licensee 

Entrust administration of (some of) your rights to licensing agent/agency

- book publisher, record producer 

Collective Management Organization

Example of photographer Owner of copyright: has great power to define how his photos are used Important to consider range of possibilities to commercialize the photographs.

Possible to simultaneously grant various licenses for one photo: To different users For specific manners of exploitation For limited period of time In limited territory For specific purpose

CMOs

►

Per type of work and per country

- film, music, photography, reprography, television, visual arts ►

Core activities

• documentation of works of its members • licensing and collecting royalties • gathering reporting information on the use of the works • monitoring and auditing • distribution of royalties to its members

CMOs

►

Advantages

• intermediaries between users and owners • one-stop shop • collective bargaining • blanket license • license of material in digital form • cultural and social intiatives

COLLECTIVE MANAGEMENT SOCIETY INTERMEDIARY BETWEEN THE WORLD OF CREATION AND THE WORLD OF USERS AUTHOR USER

DOCUMENTATION

• The author joins the

authors’ society and becomes a

• WORKS

MEMBER

• He gives his

RIGHTS

• He provides the

authors’society with DECLARATION and

• PERSONAL DATA

Recording Industry Association of Malaysia (RIM)

• Set up a one-stop centre to license local music repertoire for digital distribution • To address the complex licensing issues associated with the digital distribution of music • For now the licensing is restricted to ringtones & truetones, as a test

Licenses needed to sell truetone (uses master version / actual recording of the song) •

Reproduction rights:

to make copies of the musical compositions and/or sound recordings for sale. •

Broadcast right:

for transmitting ringtone signals via SMS to customer’s handset • – – – Licenses needed from (or on behalf of) Songwriter (composer or publisher) Singer Recording company

PART 5 Using Works Owned by Others

When do you need permission? 1. Work is covered by copyright / related rights 2. Work is not in the public domain

Copyright protection period expired Work cannot be protected (e.g. Title) Owner has explicitly abandoned his rights

3. Planned exploitation implies use of rights granted by copyright / related rights 4.

Intended use is not covered by ‘fair use’, ‘fair dealing’, limitation, exception

Free uses or limitations

• personal use • quotations • parodies • criticism • use for teaching purposes • news reporting • scientific research • libraries • certain cases of reproduction

• You buy software for your office. Can you – Make a back-up copy for office use?

– Make a copy for home use?

– Adapt the software to your business needs?

– Use the software on multiple workstations?

How reduce risk of infringement? 1. Educate employees 2. Obtain written licenses/assignments, where needed, and ensure that staff are familiar with their scope 3. Mark apparatus that could be used to infringe copyright with a notice

Photocopiers CD and DVD burners Computers

4. Prohibit staff from downloading copyright protected material from the Internet on office computers without authorization

Conclusions

• • • •

Maximize your copyright protection Ascertain copyright ownership Avoid infringement Get the most out of your copyright

Thank You!

WIPO’s website for SMEs : www.wipo.int/sme

[email protected]