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IPR for the Creative Industries

Trainer’s GuideThis project has been funded with support from the European Commission

under the Lifelong Learning Programme.This publication [communication] reflects the views only of the author, and the

Commission cannot be held responsible for any use which may be made of the information contained therein

ContentsTiming Schedule

Learning Objectives

Trainers Notes

Timing Schedule

We have allocated a total of 120 minutes for this module.

The recommended schedule is as follows:

Introduction 5min

Case study: the making of a documentary

Copyright

Confidentiality

Total of 55min

Case study: clearing rights- Trademarks- Licensing- Collective Licensing Societies

Total of 40min

Enforcement 20min

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Learning ObjectivesOverall Module Aim

To raise understanding in Creative Businesses of the basic concepts and legalities of Intellectual Property Rights (IPR), such that they will know enough about IPR to be able to spot an IPR problem or opportunity .

Module Objectives

To raise understanding in Creative Businesses of the basic concepts and legalities of Copyright

To raise understanding in Creative Businesses of the basic concepts and legalities of Confidentiality

To raise understanding in Creative Businesses of the basic concepts and legalities of Trademarks

To raise understanding in Creative Businesses of the basic concepts and legalities of Licensing

To raise understanding in Creative Businesses of the basic concepts and legalities of Collective Licensing Societies

To raise understanding in Creative Businesses of the basic concepts and legalities of Enforcement

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Trainer’s NotesSlide 2

The need for the disclaimer is obvious.

A trainer can add a bit of humour here by saying:

"This seminar is not intended to make anyone into an IP expert. We are not training you to become patent attorneys! Rather, please think of this course as "intellectual property First Aid". And what is the purpose of First Aid? - "To keep the patient alive long enough for professional help to arrive." that is what we hope to achieve with you - to make you IP paramedics. When clients come to you with a business issue, we hope you will know enough about IP to be able to spot an IP problem or opportunity which the client has missed, and prevent them from making the situation worse, whilst referring them to appropriate legal advisors.

Slide 3

The recommended schedule is as follows:

Introduction 5min

Case study: the making of a documentary

Copyright

Confidentiality

Total of 55min

Case study: clearing rights- Trade marks- Licensing- Collective Licensing Societies

Total of 40min

Enforcement 20min

Slide 4

The creative industries refers to a range of economic activities which are concerned with the generation or exploitation of knowledge and information. They may variously also be referred to as cultural industriesor the creative economy. It’s widely debated, which sectors form the creative industries (please refer to Module 2A – part 1 for a UK definition) but there can be no doubt that it’s widely acknowledged that the sector is vital for the future of industrialised nations, whose economy is knowledge-based and driven by innovation as all

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EU member states increasingly are. (please refer to Wikipedia article on Creative Industries: http://en.wikipedia.org/wiki/Creative_industries)

Why is IP so important for this sector?

In 2007, a report for the UK’s Department of Culture Media and Sport (Staying Ahead: the economic performance of the UK's creative industries, The Work Foundation for Department of Culture, Media and Sport (DCMS), 2007) acknowledged that “activities, which have their origin in individual creativity, skill and talent […] have the potential for wealth and job creation through the generation and exploitation of intellectual property”.

The following presentation will give the audience an overview of IP rights and ways of exploitation using a case study, which will look XXX

Slide 5

The recommended schedule is as follows:

Introduction 5min

Case study: the making of a documentary

Copyright

Confidentiality

Total of 55min

Slide 6

Let’s assume that a film maker has an idea for a documentary exploring the history of ice cream in the 20th century. The film maker would like to explore the technical advancements necessary for the success of the product such as the arrivals of refrigerators but also the development of big brands such as Häagen-Dazs or Ben & Jerry’s.

The story of the film is also a journey through the various IP rights that need to be considered along the way. As there is only one hour allocated to this module, the presenter should refer to online material for a more in-depth exploration of the various IP rights.

This slide represents the relationships between the parties involved in the making of the documentary – there could be many more parties added such as a composer commissioned to write the sound track for the film, actors to stand in for historic figures or interviewees… However, we will keep the relationship graph as simple as possible to explore the basic principles. Although the example is based on the film industry, it can be applied to any other sector in the creative industry such as a client commissioning a web agency to develop a website. Here as in our example, the client as well as the web agency have to clear rights in the material they are using on the website and work out a license agreement between the parties clarifying what rights are used for what and how long. We have chosen to look at the following steps in the relationships of all parties in more detail:

- The film maker will write the concept for the film and pitch his/her idea to the production company.

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- The production company is in the centre of the graph as they form relationships with all the other parties once the production of the film has been agreed with the film maker.

- However, the film maker may directly work with the film archive or collective licensing societies to source relevant archive material or sound for the film, while the production company works with the film maker to ensure that all rights are cleared.

- The Production company tries to sell the film to broadcasters so will form a licensing agreement with them if successful.

- Either the Production company or the broadcaster will commission a PR agency to promote the documentary (depending on the business model), therefore needs to secure appropriate rights from the film maker.

- The production company in conjunction with the PR agency will come up with a branding strategy for the film. Part of this could be a range of merchandise to further grow the revenue in the film. They will commission a product designer to develop products.

Slide 7

Let’s first look at the relationship between the film maker and the production company. As we have mentioned before, the film maker has an idea and needs the help of the production company to realise the idea, i.e. finding distributors, finance the film.

The film maker may just have a written concept or may already have produced a short film exploring the subject. He/she is keen to share the idea with the production company but also protect the concept/idea should the deal not go ahead after the initial conversation.

Ask your audience, which IP rights may apply and what they would suggest to the film maker to do before meeting with the production company. They may suggest copyright and confidential information, which could be protected by a confidentiality agreement.

The most obvious choice would be copyright.

Slide 8

As we have already discussed in exercise 1, copyright is always automatic but there are still countries that have copyright registers such as the US and China. Both countries have signed the Berne convention, which doesn’t require copyright registration, but local regulations still give you a legal advantage if you have registered your right. In the US, you should register works originated in the US if you want to enforce copyright in the courts.

In China, it is advisable to register literary work (which includes software) in order to avoid disputes or make it easier to prove ownership in court.

A work can only be original if it is the result of independent creative effort. It will not be original if it has been copied from something that already exists. If it is similar to something that already exists but there has been no copying from the existing work either directly or indirectly, then it may be original.

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The term "original" also involves a test of substantiality - literary, dramatic, musical and artistic works will not be original if there has not been sufficient skill and labour expended in their creation. But, sometimes significant investment of resources without significant intellectual input can still count as sufficient skill and labour (i.e. a slide presentation about a company’s products).

Ultimately, only the courts can decide whether something is original.

Sound recordings, films and published editions do not have to be original but they will not be new copyright works if they have been copied from existing sound recordings, films and published editions.

Just imagine that ideas would be copyright protected nobody would be able to write another crime novel, in which the detective is an American woman living in Venice as Donna Leon would have an exclusive right to write about this topic. As you can see, it’s not in the interest of research or development of culture to copyright ideas. This is sometimes very confusing as many people think that somebody has infringed copyright if they have expressed the same idea in a different way. There is of course a fine line between copying and being inspired…

As only the copyright holder has the right to copy, distribute and adapt copyright work, it is only the copyright holder, who can grant others the right to do so on his/her behalf normally through licensing agreements for payment. The other option is to assign copyright – but only in writing.

In the case of the film maker discussing his/her idea with the production agency, it’s only the material, the text or the short film, which is copyright protected but not the concept itself. This means that the production agency has the right to just take the concept and develop this into a film without the input of the film maker as long as they don’t copy a substantial part of the material he/she has shared with them.

Moral rights were first recognized in France and Germany, before they were included in the Berne Convention for the Protection of Literary and Artistic Works in 1928. They are known in France as the ‘droit d’auteur’.

The basic principle is that the creative author or artist should retain certain rights in relation to his creation, even after s/he has sold the copyright to someone else. However, in reality, moral rights have slightly wider implications.

The moral rights are as follows:

- the right to be identified as author (‘paternity right’)

This applies only if the right has been asserted by the author (in writing). This is usually done in a copyright assignment (required for the sale of a right) or a licence allowing another to use the work. You only need to look into a book and you will find a notice by the author that she/he has asserted his/her rights to be named as the author of this book.

- the right to object to derogatory treatment (‘integrity right’)

For example, a novelist might object if his or her novel was abridged in a way that compromised its artistic integrity or an illustrator has the right that his/her illustration is not cropped in order to fit the cover design of a book.

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- the right against false attribution of a work:

A novel use of this right occurred in the UK where a well-known political figure successfully objected to a spoof political column in a London newspaper on the basis that some people might believe that he actually wrote it.

Moral rights are inalienable rights in that they cannot be assigned or sold to another. However, they can be waived. This can occur in many commercial situations (e.g. for advertising copy or for designs for use on products); however, it would be very unusual where someone has produced a real work of art to waive their moral rights.

And: the right to privacy in private photographs and films. The right to object to the use of commissioned photos is deemed to be a privacy right, as well as a moral one. In certain circumstances, this right extends to performers or celebrities that are in the public domain. In 2004, Princess Caroline of Monaco won a landmark ruling from the European Court of Human Rights, which confirmed that the publishing of paparazzi photographs taken of the Princess in a public place was a violation of her right to privacy and her right to control the use of her image.

With regards to the private video given to the video company by their employee, it would further complicate the case if it depicted people. They could also object that their images should be used in an advertising campaign unless they have signed a release form (very unlikely, if it’s a truly private video). A release form will grant the film maker the right to show their images in a certain context (as outlined in the release form).

Note: If the author still owns the copyright then he or she would not normally need to rely on these moral rights as he can control the copying of work. For example, he or she can insist on being credited as a condition of allowing the work to be used. The importance of moral rights occurs in situations where the author has assigned the copyright to someone else.

Moral rights only apply to literary, dramatic, musical and artistic works, and also to films (where the director enjoys moral rights).

The most important exceptions to be aware of are computer programs and employees. Moral rights do not apply where ownership of a work originally vested in an author's employer. This means that if a work is created in the course of employment – as described above – the author cannot object to derogatory treatment and cannot insist to be named as the author of the work.

In terms of duration, most of the moral rights will last as long as the copyright itself. The exception is the paternity right, which lasts for only 20 years after the death of the author in Europe.

Slide 9

Initially, copyright only applied to the copying of books and was over time extended to include other original works such as paintings, scores of music, sculptures, architecture, photographs, illustrations, maps (irrespective of artistic quality) etc.

Derivative works are works that are based on or derived from a pre-existent original work such as a painting based on a photograph, a collage, a musical work based on an existing piece or samples, a screenplay based on a book. Unless you are the copyright owner of

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the original work, you will probably need the permission of the copyright owner before creating a derivative work. For a derivate work to be itself original and therefore acquire new copyright, it must be sufficiently different from the pre-existing original work. In the case of a film or video, the material on which the film/video is based must have been altered substantially as otherwise, the creator would infringe somebody else’s copyright.

Typographical arrangements include for example the layout/cover of a book, presentation, letter, website design etc. The producer of a sound recording may have copyright in his/her sound recording. Performing artists (such as musicians and actors) have copyright in their performances and broadcasters have copyright in their TV and radio programmes.

Note: the above categories are important:

• if you can’t find a category for an item, copyright will not subsist in it. A good example of this is computer programs (software).

• the rules relating to the subsistence, duration, ownership and infringement of the copyright can vary greatly for the different types of work

• if there is more than one type of work in relation to an item, the different copyright may be owned by different people. For example: a film or TV production might need to take account of a large number of copyright owners.

The film script or the short film, which the film maker has produced to show the possible execution of the idea are clearly copyright works (namely literary or derivative work, a film) as long as they fulfill the requirements.

Slide 10

Copyright arises automatically, but businesses still need to invest considerable amount of time and effort in monitoring and protecting those rights. The following preventative steps should be taken:

1) Register/acquire/clear all available rights

Make sure that what you believe to be your copyright is actually your copyright.

2) Assert your right

Where the work has been published, ensure you mark it with a clear notice of ownership. Copyright notices typically read as follows:

"Copyright © [name of artist] [date]. All rights reserved“

Photographers, illustrators or other creators of graphic/visual work should post a watermark or copyright credit on their images to deter unauthorised use.

3) Keep a paper trail

It’s essential for a business to keep evidence of the evolution of the work. They can do this by including the © symbol, date and their signature on any preparatory work such as design sketches, documentation and research material. This log of the work’s development will be invaluable if they need to enforce their IP by proving that they own the

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copyright and a considerable amount of creativity and effort has been invested in its creation.

Tricks of the trade:

To help identify infringement when it occurs, businesses in certain industries have been known to purposefully include minor errors in their work. One of the most famous examples of this was am Ordnance Survey-Map copyright case in the UK. It was easily able to establish that its maps had been copied by the British Automobile Association because it included a map reference of a landmark that did not actually exist! Ordnance Survey received a £20m settlement from AA and AA agreed to license their maps in the future. See details of the case:

        http://news.bbc.co.uk/2/hi/business/1203480.stm         http://www.guardian.co.uk/uk/2001/mar/06/andrewclark         http://www.ordnancesurvey.co.uk/oswebsite/media/news/2001/march/centrica.html

But what can the film maker do to safe guard his/her idea when he speaks to the production company? The only way is to mark the information given as confidential. The following slides will deal with confidentiality before we move on to the next step in the process, the relationship between the film maker and the film archive/collective licensing society.

Slide 11

Notes

Good business practice involves being aware of the information you've produced that should be treated as confidential (for example, a new design or prototype, or in the case of the film maker, the concept for the documentary) and taking the right steps to protect it.

What can be protected?

Confidentiality gives protection to ideas and creations that are not yet in the public domain. It can be particularly useful during the development stages of new creative work, especially if it may later have a high commercial potential. This is because it can allow you to discuss ideas, designs or prototypes with others (such as potential business partners) while binding those people to total secrecy.

Note: If information has already been made public (such as in writing that has been published, software that has been awarded a patent or the release of a new music CD), other IP rights (such as copyright and patents) are the only methods that can offer legal protection.

No restrictions are placed on the subject matter that can be protected by confidentiality, except for what can be considered to be trivial, immoral or vague information.

However, the type of material protected may be of a technical, commercial or personal nature, and it does not have to be particularly special in any way. Even a compilation of already-known information, such as a list of customers, can, when taken as a whole, be regarded as confidential. What makes such information worth protecting is the fact that time and effort has been expended in gathering, selecting and arranging it.

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In addition, with confidentiality, you do not need to worry about the type of formats in which your information is stored. Confidentiality applies equally to information when embodied in writing, drawings, photographs, goods and products, or where it has been disclosed verbally (such as if it has been disclosed in a private meeting.) The information need not be fixed (such as a transcribed version of a conversation) or in a permanent form.

When does it apply? 

Confidentiality is expressed as an 'obligation'. This means that any people coming into contact with a protected idea must keep quiet about it or they will be acting unlawfully. An obligation of confidence can be imposed in a large number of situations. In some of these situations a 'confidentiality agreement' may be used. Additionally, confidentiality is implied within many other relationships which may not be contractual.

Note: The information must have been imparted in circumstances suggesting an obligation of confidence; for example, where you have emphasized that your information should be kept confidential. This can be done in an email before you meet with a potential partner where you stress that all information given must be treated under strict confidentiality.

 To determine whether information is confidential, an 'objective test' is applied. This means that a court of law will consider whether someone looking at the information and the circumstances of its disclosure would consider it to be confidential. As such, the belief of either party as to whether the information was confidential will largely be irrelevant, unless that belief was disclosed to the other party.

 Remember that simply marking a document with the words ‘PRIVATE AND CONFIDENTIAL’ is not enough if the contents are commonplace and already within the public domain.

How do I know if my work is in the public domain?

The public domain is a very wide category, and includes: trade fairs, exhibitions or conferences in which people from outside your design, research or development group (ie the people involved in the development of the information) are present, especially where commercial representatives are in attendance; abstracts, thesis, grant reports and various registers; meetings, formal or otherwise; and anything in print or on the web, no matter how trivial it might seem at the time.

However, when you disclose information (such as showing your work to prospective financiers or manufacturers) using the protection of a valid confidentiality agreement, this is not regarded as a public disclosure, and the information would not be regarded as being in the public domain.

Photo credit: http://www.flickr.com/photos/gi/127555697/

Slide 12

Notes

An obligation of confidentiality may arise by agreement (a ‘confidentiality agreement’) between two or more parties. It may also arise if you give prior notice to anyone you would like to discuss your information with and it may be imposed into certain relationships by law.

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Confidentiality by agreement

Parties to contracts are free to make whatever confidentiality provision is felt to be appropriate in relation to the information passing between them. In some cases, a person may be under a contractual obligation not to use or disclose information (confidentiality is sometimes stated in employee contracts if the employee is working with sensitive or commercially-valuable information); however, in many cases, the obligation of confidentiality will be implicit rather than explicitly stated, since many contracts can only operate if information passed under their arrangements remains confidential.

That said, all companies are advised to put confidentiality agreements in place with other parties before any work starts. This applies even where confidentiality is arguably implicit in the situation.

Implied by relationship

In some cases, an obligation of confidence arises as a result of the special relationship that exists between the parties. More specifically, an obligation of confidence might exist as part of what the law terms a 'fiduciary' relationship, in which one party has placed complete trust in the other. For example, the relationship between a lawyer and her/his client is a fiduciary relationship, as is the relationship between business partners, and company board directors and share holders. Confidentiality can be seen as giving rise to a fiduciary duty: this is the duty to act in good faith, and not to disclose or misuse confidential information.

Where a fiduciary relationship exists, it imposes a strong obligation on the recipient of confidential information to act in the interests of the person or people to whom she/he owes the duty, even where this conflicts with her/his own interests. An example often given is of a lawyer who discovers information about an investment opportunity because of work carried out for her/his client. In such a situation, the lawyer may not take advantage of this opportunity without the client’s consent.

A further example which is likely to be of great relevance to creative businesses is a situation in which sensitive information (such as unique designs or prototypes) is passed between the parties already in a close business relationship, such as in a meeting to discuss licensing or manufacturing. As such, information that is passed between the parties in such a relationship is likely to be regarded as confidential in the eyes of the law.

Implied by situation

In some cases, an obligation of confidence may arise from the way in which information is communicated between the parties. In these circumstances, the test for a duty of confidence is to ask whether the recipient could have been expected to have realised automatically that the information was given to them in confidence. Judging this depends on the specific facts of the case. Perhaps the most straightforward situation is where a party clearly expresses that the information is confidential. Such a statement makes it difficult for the recipient to argue to the contrary later on. While a spoken statement may achieve this, a written statement is preferable as you may need it as evidence.

 

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The fact that confidential information is made difficult to access (for example, releasing a digital document in encrypted form only) is enough to impose an obligation of confidence.

Why should I use a confidentiality agreement?

If you want to keep information confidential, you should use a contract which clearly stipulates that the information in question is not to be passed beyond the parameters stated in the contract. The best way to do this is to sign a 'confidentiality agreement' with anyone to whom any confidential information is disclosed.

A confidentiality agreement can act as a deterrent against unauthorised use or disclosure of your information. It imposes a legal obligation of confidence on the recipient of the information, and provides you with a basis for a legal action (such as an injunction) for breach of confidentiality should the recipient breach the agreement.

Confidentiality agreements are particularly useful in situations in which you need to disclose information in order to seek financial backing. Using a confidentiality agreement means that no-one present within such discussions can discuss your work and ideas with anyone else without gaining your consent.

How long does a confidentiality agreement last?

If you have used a confidentiality agreement, the length of time the duty of confidentiality lasts for can be included in the agreement. However, you should bear in mind that by creating an unnecessarily long term for the confidentiality to last, you may create an unfair contract term which the other party may later be able to dispute successfully in a court of law.

Are third parties bound by a confidentiality agreement?

The obligation of confidence binds the person to whom the information is confided (i.e. the recipient of confidential information). Difficulties may arise when a person who agrees to the terms of a confidentiality agreement passes confidential information to persons who did not sign the agreement (who would be called the 'third party'). In this situation, the existence of a duty of confidentiality will mostly depend on the relationship between the initial recipient and the third party. This can be difficult to assess. The best practice is to set out in the confidentiality agreement that any further disclosure of the information must be subject to a further confidentiality agreement. However, it is likely that a third-party recipient who knows that information is passed to him in breach of a duty of confidence would be held liable to keep the information secret.

When is duty of confidentiality breached?

The duty of confidentiality is broken if the recipient of confidential information, uses the information for her/his own benefit or discloses it to any other person without your consent. It is considered irrelevant if the recipient claims that the use or disclosure was innocently made, for example, if it is claimed that the information was given to the recipient in confidence.

Disclosure may be justified where it is in the public interest (for example to disclose a wrongdoing or injustice); however, commercial exploitation of the protected information can never be justified.

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What can I do if confidentiality is breached?

If you have passed information on in confidence following all the rules outlined about, but the recipient discloses the information, what can you do? In this case, a court of law may award you an injunction which forces the person who acts in breach of a duty of confidentiality to put a stop to a future breach of confidence. For example, this can be done by the court restraining publication or use of the information, or requiring that the person acting in breach of the duty returns the information (if it is in physical form) back to you. A court may also award you damages for losses caused by the disclosure of the information. Alternatively, you may be entitled to any profits the recipient has already made from your information.

Be careful: email and confidentiality

Email is not a confidential medium and sending confidential information via email should be discouraged. However, often this is not practical from a commercial standpoint. Therefore you should include a confidentiality statement in all your email messages. This is often found at the end of email messages (although from a legal perspective it is considered better practice to include it at the start of an email.)

A simple example of such a confidentiality statement is: ‘The information in this e-mail is confidential and is intended solely for the addressee. If you are not the intended recipient please contact [name, address and telephone number of the sender of the email message]’.

Photo credit: http://www.flickr.com/photos/37996594214@N01/51722696/

Slide 13

When is duty of confidentiality breached?

The duty of confidentiality is broken if the recipient of confidential information, uses the information for her/his own benefit or discloses it to any other person without your consent. It is considered irrelevant if the recipient claims that the use or disclosure was innocently made, for example, if it is claimed that the information was given to the recipient in confidence.

Disclosure may be justified where it is in the public interest (for example to disclose a wrongdoing or injustice); however, commercial exploitation of the protected information can never be justified.

 What can I do if confidentiality is breached?

If you have passed information on in confidence following all the rules outlined above, but the recipient discloses the information, what can you do? In this case, a court of law may award you an injunction which forces the person, who acts in breach of a duty of confidentiality to put a stop to a future breach of confidence. For example, this can be done by the court restraining publication or use of the information, or requiring that the person acting in breach of the duty returns the information (if it is in physical form) back to you. A court may also award you damages for losses caused by the disclosure of the

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information. Alternatively, you may be entitled to any profits the recipient has already made from your information.

The relationship between the film maker and the production company may suggest an obligation of confidence if the film maker has clearly stated that all information given might be regarded as confidential. Please note that it is normal business practice that production companies or broad casters don’t sign a confidentiality agreement as it quite frequently happens that their researchers are developing a similar idea or concept. There is not really a remedy of protection for any film maker when pitching an idea – it needs to be an act of faith supported by prior research into the reputation of the potential business partner.

Slide 14

Notes

Confidentiality agreements will need to be drafted to befit your exact purposes, but the following clauses are key:

Define the information

The most important part of any confidentiality agreement is the definition of the information that is to be kept confidential. Ideally, the contract should set the scope of information covered by the agreement using terms which are as specific as possible. For example, a designer should ensure that the description covers any disclosures made as part of the creation of the work, including the process through which the design was created, the materials used in making the design, and the finished design itself. In the case of software, the description should include relevant techniques, the source code, the object code, the finished program and any other information that the developer wants to protect.

Explain the purpose of the agreement

A confidentiality agreement should give the reason for the disclosure of your information (such as a meeting to discuss finance). It should also clearly state that the recipient is not permitted to use the confidential information for any purpose except the one(s) defined in the agreement. In addition, confidential information should only be revealed to the intended recipient for a specific purpose. The confidentiality agreement you use should clearly set forth what this purpose is. For example, it may be 'for the purposes of discussing appropriate marketing and distribution' for your product or design.

No (or non) disclosure

This means that the recipient must agree not to disclose any information to anyone else. The effectiveness and usefulness of your confidentiality agreement will be controlled to a great degree by the extent of the 'no disclosure' provision. Points to consider:

a) whether or not to include a clause stating that the recipient of the information will use their best efforts to ensure the information remains confidential (rather than making them responsible for the information being made available to the public in any circumstances);

b) whether to limit access of the confidential information to employees of the recipient who ‘need to know’ the information to carry out their jobs; and

c) whether the recipient should merely agree to protect your confidential information in a manner similar to the way the recipient protects her/his own confidential information.

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No use

This clause should state that the recipient will not use the information for any purpose other than that set forth in the agreement.

Limits on the information deemed confidential

Practically every confidentiality agreement puts some limits on the type of information that will be deemed confidential. For instance, if the recipient already knew the information before you revealed it to her/him, or if the information was revealed to the recipient by a third party, that information will not be treated as confidential under your agreement. Other possible limits include information that becomes publicly known, information that is requested by a government agency, or information that has been independently developed.

Term

This clause describes the length of time that the confidential information should be protected, and is often an extremely important element within a confidentiality agreement. The term must be long enough to protect your interests as the information holder. Nonetheless, it should not unduly burden the recipient, as covered in more detail below. A typical term would last one or five years; however, in theory, the term can last indefinitely.

Other provisions

Other provisions that are commonly found in confidentiality agreements include:

-a provision allowing the remainder of an agreement to stay in effect even if a portion of the agreement is found to be unenforceable;

-a provision stating that the agreement is binding on anyone who takes over the business;

-a provision calling for a return of confidential materials from the recipient;

-a provision specifically specifying that you own all confidential information disclosed;

-a provision specifying that disputes should be arbitrated; and

-a provision governing the controlling law for the contract, such as, for example, the laws of England and Wales.

The latter is particularly important if you are entering into business with another party who is not based in the same country (or legal jurisdiction) as you.

Photo credit: http://www.flickr.com/photos/10ch/3359721223/

Slide 15

The recommended schedule is as follows:

Case study: clearing rights- Trademarks- Licensing- Collective Licensing Societies

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Total of 40min

Slide 16

This is the second step in the process but could also be a step that has taken place prior to the conversation with the production company as part of the research. As the project is a documentary film about the history of the ice cream involving major brands, the film maker is very likely to include archive material such as films or photographs in his or her documentary and also discuss brands and very likely show their logos and packaging predominantly.

If the material used is part of a film archive, it can be assumed that the film archive will know the provenance of the films and who currently holds IP rights – in most cases, they may even have cleared them already and will charge a license fee to use them in the film. If a film clip is found on the internet, it’s sometimes not easy to find out about rights holders and you shouldn’t really trust blogs, who may publish films without ever asking for permission of the rights holders.

The following will give a short introduction into clearing rights covering copyright and trademarks as these are the most common IP rights relevant to the making of a documentary.

Slide 17

It is important that a film maker does not use other people’s creative work in a film without permission as this may result in an act of infringement of IP rights. Therefore, the film maker would need to identify all IP rights that apply to the material used and seek permission of the rights owner to use this material unless the right has expired or it may be a case of an exception where the film maker doesn’t need to seek permission. The following slides will give an introduction to the various IP rights relevant for our documentary film maker to consider for clearing purposes.

Slide 18

Ownership of copyright:

The commissioner of a copyright work pays the creator a fee for the labour but the creator still owns copyright in the work, he/she was commissioned to do. It is therefore necessary to either arrange for a licensing agreement with the creator outlining the specific usage, period of use, territory of the commissioned use or ask the author for an assignment (which is usually more expensive) in writing.

It is advisable to include in any contract of employment a clause that copyright of any material created in the course of the employment is owned by the employer to make employees aware of the fact. However, if an employee works on his/her artistic work at home and creates copyright work in his/her spare time then this is deemed work not created in the course of employment but for everything else created in the work space or during working hours the copyright is owned by the employer.

The length of copyright afforded to the creator depends on the type of work and the country.

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The duration of copyright for derivative works (films, sound recordings, published editions and broadcasts) is slightly more complex, and depends on the type of the work concerned:

Typographical arrangement: 25 years from first publication.

Sound recordings: 50 years from creation or being released (if this happens later)

Film: 70 years from the end of the life of the last to die of the principal director, author of screenplay, author of dialogue or composer of specifically written music.

Broadcast: 50 years from first broadcast.

A note on sound recordings:

The length of protection for performers’ rights is currently a thorny issue in Europe, as the first wave of rock 'n' roll recordings (starting with Elvis) are about to go out of copyright in Europe. Due to extensive pressure from a powerful US movie and music industry lobby, in 2009, the European Parliament approved a directive that extended the term of protection to 95 years, but it must still be approved by EU Member States before it can become law.

Anonymous works: works that are created by an author, who wishes to remain anonymous or has published the work under a pseudonym. Not knowing the real name of the author doesn’t mean copyright doesn’t exist. In fact, anonymous works are copyright protected for 70 years from the date of publication

Collective/Corporate works: are works that are created by employers or a group of employers in the course of their employment and belong to the company. If national legislation makes particular provision for collective works or for a legal person (i.e. a body corporate) to be a rights holder the term of protection is calculated in the same way as for anonymous or pseudonymous works, with the exception that if any natural persons who created the work are given credit in versions made available to the public, the term of protection is calculated according to the lives of those authors. Art. 1, Directive 93/98/EEC.

In the case of our film maker, this means that the copyright of the films s/he may want to include in the documentary will last from the end of the life to die of the principal director, author of screenplay, author of dialogue or composer of specifically written music. This will make it very difficult to clear rights if the provenance of archive material or material found on the internet is not known. Such works are known as Orphan Works and we will discuss the legal position at the end of this presentation.

Slide 19

Review of next section

Slide 20

Certain ‘fair dealing’ exceptions apply which allow others to use copyrighted material. One of the main ones of these is fair dealing. It operates under the principle that the minimal use of another’s content will not affect their commercial use of it and so would not generate damages should the rightful copyright holder take action. It is always better, however, to seek permission from the copyright holder for its use!

Fair dealing exemptions:

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The approach usually followed by the court is first to ascertain whether the defendant’s act falls within the following exceptions:

• research or private study

Allows for the taking of copies of pages of book in the course of non-commercial studying or researching (i.e. students, academics in universities etc.). Note that EC Directive on copyright and related rights in the information society has inserted the words ‘non-commercial’ into this defence in relation to research, thus restricting it severely.

• criticism and review

Allows for comment in an article on, say, a book, by allowing for copied extracts of the book to be used without the author’s permission. The question of whether this is fair dealing usually depends on: the purpose of the use of the quote (must be as a means of commentating on the book and not a means of sharing information in the book) and how much is quoted to fulfil this purpose. Sufficient acknowledgement of the author is required.

• reporting current events

This allows all works, other than photographs, to be used for reporting of current events (note: acknowledgement of the original source is generally required). Again, whether it’s fair dealing depends on: the purpose and how much is taken to fulfil the purpose. The purpose must be for reporting current events themselves and not simply using something that has become of interest because of a particular current event.

Others:

• Copyright works may be included incidentally in photographs, films, artistic works, broadcasts, sound recordings, i.e. when a documentary film maker is filming a scene in the street and accidentally includes a big advertising poster in the background of the scene. The advertising poster is surely copyright protected but as it’s not the focus of attention of such a scene but occurs ‘incidentally’, the film maker would not need to ask for permission.

However, if the film maker intends to use advertising of certain ice cream brands to discuss the history of ice cream production and consumption as in our case, the advertising is certainly the centre of attention and it would need to be seen if it can be shown under ‘criticism and review’ without the permission of the copyright holder. However, if the film is a commercial enterprise and merely shown for entertainment it’s very likely that the film maker or production company would need to clear copyright and obtain a license.

• Artistic works on public display

In general, photographers, illustrators or film makers don’t need the permission of a creator of an artistic work if the work is permanently sited in public spaces or premises open to the public [exceptions are museums and galleries, where it is often not permitted to take photographs with a flash and/or with a camera sitting on a tripod - this is mainly due to conservation and commercial considerations as many art galleries run their own image libraries and sell the photographs of their works]. Artistic works include buildings, sculptures, and models of buildings and works of artistic craftsmanship. However, in the USA, it’s not allowed to take photographs or make any other copies of copyrighted work on

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public display even when they are public art or buildings in public spaces. There, permission is required. Additionally, it has become increasingly difficult for professional photographers to take photographs in outside spaces as the boundaries between public and private spaces are often not clearly marked.

Slide 21

It is especially important for the film maker to identify and clear trademarks that appear in the documentary as it’s very likely that they are a dominant feature of the film if the history of brands are discussed in the film.

The following slides will explain trademarks and also discuss when it may be allowed to include them without seeking permission of the trade mark owner.

Slide 22

The function of a trade mark is to uniquely identify the commercial origin of goods and services. In this field, “distinctive” and ‘unique identification’ is anything that can distinguish them and their products or services from the competitors’ goods and services. Additionally, customers, who are buying products/services traded under the mark can assume that they receive goods and services of a certain standard invested in the mark/reputation of the company. Theoretically, virtually anything can work as a trade mark, as long as it has the quality of distinctiveness in this particular field of trading and can be graphically represented. Trademarks are a marketing tool used by companies to generate goodwill/reputation in the market. Goodwill assumes that informed consumers will prefer products or services provided with this mark as they can rely on the quality and standard of the good and services associated with the mark.

The above definition of a trade mark would encompass all sets of marks not only the traditional such as letters, numerals, words, logos, pictures, symbols, or combinations of one or more of these elements, but also the non-traditional, such as sound, taste, scent, colour, moving images, shape or appearance.

Theoretically, anything is possible, but the requirement of a trade mark to be graphically represented can make it difficult to register non-traditional trade marks (olfactory, texture, colour, sound or taste trade arks etc.). Professional advice from a trade mark attorney or lawyer specialising in branding/advertising may be required to deal with those marks.

However, there are legal and technical factors that the national Intellectual Property Offices, where you can register your trade arks, have to consider before allowing registration, and some elements might not be allowed, depending on each country’s regulations.

The following slides will discuss examples of registered trademarks.

Slide 23

This slide shows some of the traditional/conventional trade arks, which can be easily represented graphically:

- Apple: distinctive outline of an apple – with recognizable colour scheme. It’s likely that you would infringe Apple’s trademark if you use the outline of the apple with another

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colour. The brand name, Apple, is also registered as trademark under the category ‘computers, computer software, computer peripherals, etc.’

Please note that if Apple were an apple grower, registering the name ‘Apple’ as their brand name would be very likely refused as the term is generic in the field of apple trading and therefore, cannot be registered. In trade mark terms, a generic name is one that is not capable of distinguishing the goods or services of one particular trader from the other.

- Giorgio Armani: It’s possible to register your own name as a trade mark and so stop other people from using the same name for companies that are trading in the same area. It’s especially important to register your name as a trade mark if your name is common such as ‘Paul Smith’ now a very famous UK fashion house.

- Nestlé: A typical conventional trade mark – combination of image and brand name.

- Coca Cola: Not only the trade name, Coca Cola, is registered but also the design of the logo, the trade name written in the specific Coca Cola way, which everybody recognises. Please note, that ‘Coke’, which is still a registered trade mark of the Coca Cola company, is commonly used in the Southern states of America to describe other soft drinks including ‘Pepsi’. It seems that ‘Coke’ has become a generic term in these parts of the world rather than can fulfil its function as a trade mark that can distinguish one company’s goods and services from another. It’s therefore questionable if Coca Cola could enforce its trade mark if it were infringed in Southern USA.

- Turkish Airlines: Again, a conventional trade mark consisting of company name and image (logo). Please note that the trade mark also contains an adjective, which indicates the geographical origin of the service. It is very important, before you attempt to include such a geographical indicator in your trade mark, to check with your national IP office or seek legal advice regarding the use of such a ‘Geographical Indication’ (GI) as the law in this area is full of pitfalls and differs from country to country.

- Orangina: The trademark for a soft drink, which includes orange juice. Please note that they tried to keep ‘orange’ in the name of their trade mark but changed it to a more distinctive name for their company. A good example of avoiding the generic term but still including it in your branding. Another example is ‘i-phone’.

Slide 24

- Olfactory mark: Common trade mark (no 000428870) for tennis balls by Vennootschap onder Firma Senta Aromatic Marketing: The mark consists of the smell of fresh cut grass applied to the product.

- Sound mark: Common trade mark (no 001040955) filed by Nokia. What you see is the graphical representation of the tune registered as signature tune of Nokia Corporation.

- Another unconventional mark filed by Nokia, a motion mark filed as a common trade mark (no 3429909): What you see is the graphical representation of the trade mark. Description: The mark comprises an animation which consists of four images depicting hands coming together, shown in succession from left to right and from top to bottom.

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- Colour mark: Common trade mark (no 0001991) filed by BP Plc. What you see is the graphical representation of the trade mark: The mark consists of the colour green Pantone 348C as applied to the exterior surface of the premises used for the sale of the goods and services.

Other non-traditional trademarks include:

- Hologram mark

- Aroma mark

- Tactile mark

I have not included any more examples but please note that it is advisable to engage a specialist trade mark attorney or legal expert before you attempt to register an unconventional trade mark as it is very difficult to file such a mark as you would need a distinctive graphical representation or description of the mark, i.e. Chanel tried to file the scent of Chanel No. 5 as a communal trade mark with the following description ‘The scent of aldehydic-floral fragrance product, with and aldehydic top note from aldehydes, bergamot, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk. The scent also being known by the written brand name Chanel No 5 - and failed.

Slide 25

Registered trade mark:

• A registered trademark is a trade mark which has been registered with the government trademarks office. Essentially, a registered trade mark is a government granted monopoly to use that trade mark with your products and services.

• Trademarks are registered in different classes in accordance with the International Classification of Goods and services. The classification is divided into 45 different classes that sub-divide into Goods and 11 Service classes.

• The owner of a registered trade mark can prevent or stop the following types of competitive activity:

- The use of the same trade mark in relation to the same goods or classes, for which the trade mark is registered.

- The use of a similar trade mark in relation to the same goods provided the similar mark is likely to be confused with or associated with the registered mark.

- The use of the same trade mark in relation to similar goods, provided confusion or association is likely.

- Trade mark owner may also prevent or stop the use of a similar trade mark in relation to similar goods. Once again, however, the owner of the trade mark must show that confusion or association is likely.

- Where the registered trade mark has a reputation in the country, that is, it is widely known to the trade and/or consuming public, it is possible for the owner to prevent or stop

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the use of the same or a similar trade mark in relation to non-similar goods provided the competitor's mark takes advantage of or is detrimental to the registered mark's reputation. That means that the film maker needs to ensure that the use of trade marks in his/her film cannot be seen as endorsement of the film by the brand, whose mark he/she is using. And s/he also needs to be aware that any criticism of a brand that may damage the reputation needs to be backed up by strong facts and evidence in order to avoid legal action by the company. In this case, any broadcaster would probably get a lawyer involved before such films are broadcast.

• Trade mark owners should use “®” to show that the mark has been registered.

• Duration: The original right lasts for 10 years, but registration can be indefinite, so long as the right is renewed every 10 years (and used).

• Use it or lose it! Registered trademarks can be cancelled or not renewed if somebody else would like to use the mark and can prove that the owner of the registered trade mark has not used it.

Slide 26

Unregistered trade marks

Unregistered trademarks are a ‘common law’ right. In principle, they are protected by the general provisions of competition law. By virtue of competiton law’s provisions, anyone who issues incorrect or misleading information about their own personal situation, their own goods, work products, commercial activities or business relationships and thereby acquires a competitive advantage infringes the principles of good faith. These provisions focus on behaviour which is likely to mislead, deceive or cause confusion. According to these provisions, the intention to cause confusion with goods, work products, business or commercial operations of another constitutes unfair competition. This also applies to the use of the means of representation lawfully used by another, such as a name, title, trademark and brand in a manner that is capable of causing confusion. Thus, protection against unfair competition is available not only to unregistered trade marks but also to firm names and the names of commercial operations or businesses, unless otherwise provided for in special legislation. Thus if the trademark to which another is legally entitled or a name, abbreviation etc similar to the trademark is used as a domain name, with the result that there is a likehood of confusion, there is in accordance with the above principles a case of unfair competition.

That means that you are entitled to protect and defend the right, even though you haven’t registered it. Instead, such rights arise automatically on creation, much in the same way as copyright does. However, unlike copyright, national systems for protecting and recognising unregistered trademarks can differ dramatically; in fact, in some countries they are not even recognised at all! Please refer to Module 2A part 2 for further information on common law trademarks.

However, whatever the jurisdiction, it is important to note that unregistered marks enjoy far less legal protection than their registered equivalents.

Nonetheless, there are times when unregistered rights are more suited to protection; not least for those types of marks that are valuable to a company, but are not capable of being registered (for example, signs that are not possible to represent graphically, such as sounds). In such cases, unregistered trade mark rights can provide a valuable means to

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allow their owner to prevent or stop unfair trade practices, by his competitors, either when he has no registered rights or when his registered trade mark rights are unsuited to the task. To do so, he or she will need to prove the ownership and use of the unregistered mark (as opposed to a registered trade mark where registration is generally enough to prove ownership).

In order to prove ownership and use, he or she should clearly mark their ownership; for example, in the UK, it’s recommended to use the TM symbol to illustrate that a word, phrase, slogan, colour or other graphical representation is being used as a trade mark, even though it has not been registered as such.

What is protected?

As noted earlier, an unregistered trade mark does not have the same protection as a registered trade mark; however, in certain EU countries, there can be legal consequences for anyone who attempts to trade in goods or services using someone else's unregistered trade mark, provided that the unregistered mark has achieved a sufficient reputation. Even unintentional use of an unregistered trade mark can leave a person open to legal action.

However, trying to bring a claim for infringement of an unregistered trade mark can be both difficult and expensive. It is the 'goodwill' (i.e. the reputation) of the mark that is protected so new or recently created marks, which are not widely known are hard to protect in this way as the owner has to prove ‘goodwill’ or ‘reputation’ already vested in the mark when claiming infringement.

As the film maker is not trading in the same goods and services as an ice cream manufacturer it’s unlikely that a case of infringement will be brought against him/her. However, the same consideration applies as to registered trademarks in terms of damage to reputation of a well-known mark. If the content if the film is controversial it’s better to get a lawyer involved before showing it in public or better still – ask the company for permission to use their material in the film. They may even want to sponsor it if the film shows the company history to a wide audience.

Duration

Unregistered trademarks are not limited in protection, so long as they are clearly associated with the brand owner.

Slide 27

Previous slide continued

Slide 28

Once the film maker has identified the rights s/he needs to clear s/he needs to approach the rights holder to arrange a license agreement.

- IP rights can be traded like property as they are assets with a certain value in the market place. As any other property the owner can sell it, rent it out or grant a lease

- for others to rent it out or live in it, leave it in a will or give it away. The market value very much depends on the demand for the property in the market and the rights owner can consult an expert (normally an accountant specialising in IP evaluation) to find out about the value of the property if they don’t really have an idea

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themselves. You can find out more about IP evaluation on Wikipedia: http://en.wikipedia.org/wiki/Intellectual_property_valuation

- License agreements concern all kinds of IP rights (patents, trade arks, designs, copyright, etc.). They are a contract between the owner of the IP right or a party that is authorised to grant licences (the “licensor”) and the party that is granted user rights (the “licensee”) and set out the terms and conditions of use of the IP right.

Slide 29

Like any other contracts, license agreements can be verbal, written or implied.

Verbal contracts are of course the weakest form of a contract as terms and conditions can be misunderstood and such contracts cannot easily be enforced as details of the agreement cannot be proven (especially, when there are no independent witnesses).

Written contracts are the most reliable if terms and conditions are set out clearly. They also ensure that both parties are aware of terms and conditions as both parties have to sign or acknowlege such a contract. However, beware of the small print, never sign a contract if you have not understood every word. It is advisable to consult with a lawyer if you receive a contract, which you don’t understand. Most pitfalls are in the small print!

Implied: this is tricky as an agreement can be verbal but imply terms and conditions that arise out of the situation when a verbal agreement was entered into. I.e. an illustrator is commissioned on the phone by an advertising company to develop conceptual drawings for a campaign. The illustrator knows that they are using the conceptual drawings on their website to illustrate their projects. Although the illustrator hasn’t given them a permission to do so, it can be assumed that the advertising agency is allowed to extend the usage beyond their verbal agreement if the illustrator doesn’t object over a long time and is aware of the use. The situation means that the verbal contract implies that the advertising agency has the right to use the drawings on their website for promotional purposes – an implied license though not outspoken and not written.

Slide 30

Duration: Many licenses are valid for a particular length of time. This protects the licensor should the value of the license increase, or market conditions change. It also preserves enforceability by ensuring that no license extends beyond the term of IP ownership. It’s very important to keep the duration at a reasonable length and assess the business case before setting the period you would like to grant the license for. E.g., it may be appropriate to license a design for a dress to a retailer for only six months as fashion changes very fast and six months is quite a long time in the fashion retail business. However, if you grant a license for the application of a patented technology in a product, six months are probably not long enough for the product to be developed, marketed and sold in the market place. Careful consideration needs to be given to the length of time you grant the license for.

Exclusive/non-exclusive: A licensor can grant an exclusive or non-exclusive license to the licensee. An advertising agency will nearly always ask a commissioned artist to grant an exclusive license if the artwork is used for an advertising campaign to ensure that nobody else is using the artwork for another campaign – not even the artist is allowed to use the artwork for his/her own purposes if the license was granted as an exclusive license. Non-exclusive means that the licensor can use it for his/her own purposes and even grant other licenses to others.

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Territory: sets out the territory, for which the license is granted. For example, a license with a territory limited to "North America" (United States/Canada) would not permit a licensee any protection from actions for use in Japan. Territory doesn’t need to be limited to territory on earth. You will sometimes find clauses that refer to the universe as territory for the license.

Field of usage: The clearer this clause is worded the more reliable the agreement can protect both parties. Here it should clearly state the extend of the usage, e.g. Answer questions such as, can the licensee use the work to promote services on his/her website or is the use limited to the use on an A1 poster campaign. How many posters are there, for which the license is granted? Similar, if you want to license design rights, clearly state, how many pieces are manufactured under your license.

Payment: Sets out conditions of payment such as pre-payment followed by royalty payment, royalty payment only after a certain period (6 months or 1 year etc.). It also sets out how royalties are calculated, e.g. based on net profit or retail price etc. Be careful of the wording as to the calculation of royalties and also include a clause, which allows you as the licensor to examine their accounts if necessary.

Early termination clause: This is a very important clause in any licensing agreement as it will set out terms and conditions under which the agreement can be cancelled early. This can play an important part in quality control. Just imagine you have licensed the use of your brand name to a manufacturer in China and the produce sub-standard products under your name. In the long term, they will damage the goodwill in your goods and services and weaken the value of your IP (trade marks). Similarly, if you have licensed a design to a retailer to manufacture, market and sell the product using your design on your behalf (because you didn’t have the means to do this yourself), include what exactly they have to do for your product in terms of marketing, how many you expect them to sell within a certain period etc. If they don’t perform as you have expected, you can terminate the license and look for somebody else, who is more suited to get your product in the market place.

Slide 31

The purpose of a license is of course to avoid court action for infringement and give people, who want to use other people’s rights the means to use and pay for it (unless the license agreement states that payment is not necessary).

• In many EU Member States there is no corporate copyright and the copyright as a whole (moral and economic rights) cannot be assigned except by heritage. However, an exclusive exploitation right shall entitle the right holder to use the work, to the exclusion of all other persons, including the author, in the manner permitted to him, and to grant non-exclusive rights.

• Mass licensing of software: Mass distributed software is used by individuals on personal computers under license from the developer of that software. Such license is typically included in a more extensive end-user license agreement (EULA) entered into upon the installation of that software on a computer. Under a typical end-user license agreement, the user may install the software on a limited number of computers.

• Cross-licensing: A cross-licensing agreement is a contract between two or more parties where each party grants rights to their intellectual property to the other

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parties. (source: http://en.wikipedia.org/wiki/Cross-licensing). In patent law, a cross-licensing agreement is an agreement according to which two or more parties grant a license to each other for the exploitation of the subject-matter claimed in one or more of the patents each owns. Very often, the patents that each party owns covers different essential aspects of a given commercial product. Thus by cross licensing, each party maintains their freedom to bring the commercial product to market. The term "cross licensing" implies that neither party pays monetary royalties to the other party, however, this may be the case.For example, we could imagine that the product designer grants the production company a license to use already existing designs for their merchandising while the production company grants the product designer a license to use their trade marks on his/her designs – a cross licensing deal that suits both parties.

• Digital rights: Some EU member states extend the grant of licenses only to known uses (e.g. before the year 1995 the Internet was not known and licenses for that medium could not be granted). However, license agreements should now consider the use of e.g. trademarks and copyright work on the internet, on mobile phones and other digital media that may not yet been developed. Careful consideration should be given to such rights exploitation and its consequences for territorial limitation (as websites are accessible from any territory and even from outer space). If digital rights are an important income source, a lawyer should be consulted to draft the contract as digital rights management is constantly changing and so does the law in this area.

• In a compulsory license, a government forces the holder of a patent, copyright, or other exclusive right to grant use to the state or others. Usually, the holder does receive some royalties, either set by law or determined through some form of arbitration.

It is for example possible to manufacture high doses of drugs to prepare for an epidemic without the permission of the patent holder of this particular drug if the patent holder can’t manufacture the quantities needed themselves. See http://en.wikipedia.org/wiki/Compulsory_license

• Creative Commons is a licensing system that simplifies licensing enormously and allows users of other people’s IP rights to take out a license without the hassle of contacting the rights holder. This of course comes with certain obligations for the licensee such as always citing the author of the work, making a derivative work available under the same license, etc. It’s a great way of sharing IP and developing new work without infringing other people’s IP. However, as Creative Commons licensing hardly allows users to commercialise the derivative work, licensees need to find other ways of making money. Furthermore, a creative commons license was never tested in court so we don’t know how valid such a license really is... See http://creativecommons.org/ for further information.

Slide 32

Preview of next section

Slide 33

Many creative works can be licensed using a collective licensing societies. Therefore, if the film maker would like to use a piece of music, visual work etc. in the film, they should

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get in touch with the appropriate collective licensing society, that exist for the various sectors (visual, sound recordings, broadcast etc.). We will discuss in the following how collective licensing societies operate.

• Imagine that whenever a piece of music is played in a concert, during a festival on radio or TV - or a CD containing the piece lent by a library. It would be completely impractical for the user to ask the rights holder every time his/her piece is played or lent by a library. Anybody, who would like to get permission for this use in public can go to a licensing society and ask for a license. The fees you have to pay depend on the usage (non-commercial use may be cheaper than commercial use). The fact that not everybody, who takes a CD out of a library has to negotiate a fee is also down to the fact that collective licensing societies have agreements with public libraries and collect royalties from them on behalf of the rights holder.

• Similarly, it would be very time consuming if every rights holder would have to deal with individual users and grant licenses on a case-by-case basis. Collective licensing is therefore used in situations where it would be difficult or near impossible for a creator to license rights on an individual basis, for example, when an individual wishes to photocopy a page of a book which features a copyright work. A very useful system.

• However, the system has a major flare, collective licensing societies are territorial. VG Bildkunst (the German Collective Licensing Society representing visual creators of all kinds) can only collect fees for use of copyright work in Germany, while the equivalent in the UK, the Design and Artists Copyright Society, collects licensing fees for the UK. As online and mobile use is now much more common, collective licensing societies are trying to find a way to grant licenses for multi-territorial and digital use. So far, despite efforts by an umbrella organisation, (International Confederation of Authors and Composers Societies (CISAC) and several national collective licensing societies, there is no agreement, which would enable collective licensing societies allow to collect fees for digital or online use of copyright work. However, great efforts are made to overcome concerns from powerful rights holders (mainly the music industry) to develop a means of collecting licensing for multi-territorial/digital use.

(notes for this and the following slide)

Typically, multimedia products are made from a multitude of pre-existing works, owned by a multitude of copyright owners, exercising a multitude of - sometimes overlapping - rights. Adding to the producer's difficulties, right owners will belong to different segments of the entertainment and information industry (music, cinema, software and education), applying different licensing practises. Multimedia publishers wishing to acquire rights by the book might end up negotiating with hundreds or even thousands of right holders for one single multimedia product. The following is an inventory of the most pressing licensing problems currently encountered by multimedia publishers:

Multiplicity of rights

1Multimedia products are composed of multiple protected works. Moreover, multimedia exploitation involves a number of restrictive acts. The multimedia producer has a lot of rights to clear.

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Multiplicity of right owners

Copyrights and related rights are rarely owned by a single entity. In practice, rights are divided along vertical and horizontal lines, for different modes of exploitation and different territories. Moreover, some rights will be exercised by agents or collective licensing societies. The multimedia producer has a lot of right owners to search for. Individual right holders not represented by collecting societies, publishers, or agents may never be found.

Overlapping rights

Individual items incorporated in multimedia products may be subject to overlapping rights: copyrights, neighbouring rights, rights of publicity, etc. Even if copyrights have expired, multimedia producers must reckon with surviving rights of publicity or neighbouring rights.

Slide 34

Collective licensing societies provide another important income stream for creatives especially if they rely on royalties to subsidise their pensions!

Music and other copyright works are often used in public (e.g. radio stations, TV-stations, concerts, music productions, digital broadcasting). They are frequently played as background sounds in places like shopping centres, hotels, subways and are often integrated in products such as ring tones in mobile phones, melodies in toys etc.

It would be very difficult for individual copyright holders to keep control and set up licensing agreements for each of such usages themselves. However, it was agreed that authors, artists and performers, broadcasters and publishers shall benefit from the income generated by others through such usage. Not least as their copyright could be infringed by a public performance anywhere in the country. To overcome this problem, collecting societies exist to ensure that copyright holders obtain royalties where, for example, their songs are played on the radio or in nightclubs. They operate either as licensees of the relevant copyright or as agents acting on behalf of the copyright holders.

They also collect royalties on behalf of copyright holders from lending libraries and provide a steady income for example for authors and performing artists (CDs). Collecting societies exist for visual artists, designers, authors, performing artists, publishers, producers, broadcasters… Collective Licensing Societies exist in each country but have also agreements with other national societies to collect royalties on behalf of their members.

The graph shows how they operate. It is important especially for an individual creator to become a member to benefit from royalties generated by Collective Licensing Societies.

Slide 35

- They constantly control the use of copyright work on behalf of rights holders, try to negotiate new contracts with users and take legal action if royalties are not paid.

- They are powerful bodies and speak on behalf of rights holders e.g. when government asks for consultation on matters such as digital rights management.

- Authors can generate a secure and steady income through collective licensing royalties, which will sustain their business.

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- Compulsory levies: only in some countries (e.g. France) but not in some others (e.g. UK)

Slide 36

As a company, if they would like to

- use music, pictures or comics on promotional material

- produce music for audio and video carriers, multimedia data carriers or for mobile phones

- provide music online

- play/perform music, show movies at a public event

As a copyright holder, if

• A work of art e. g. painting has been resold by the buyer(many collective societies also deal with Artist Resale Right, which gives them the right to collect a percentage of the resale price on behalf of the artist (conditions can vary within the EC)

• Somebody makes copies or trades with copies without paying for a license (“infringement surveillance”)

• a book has become a bestseller (“better remuneration”)

Slide 37

International umbrella organisations of collective licensing societies relevant for harmonisation in the European market.

Slide 38

Preview of next section

Slide 39

When seeking permission to use other copyright holders’ works, you may also have come across the so called orphan works problem.

According to the European Commission, orphan works are works which are in copyright and whose rights holders are unknown, or works where the rights holder is known, but cannot be traced or reached to get permission to use the work.

Orphan works are an international phenomenon and pose quite a problem as these works cannot be used by others and cannot be made available to the public while they are in copyright. All governments are therefore trying to find solutions to this issue and the EU has encouraged Member State governments to find solutions on a national level.

Until such a solution has been found, however, best practice would be to search as diligently as possible for the rights holder of a copyright-protected work. If you are still

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unable to determine who the rights holder is or if you fail to establish contact with the rights holder, the safest option is not to use that work.

Slide 40

Once the film is made, the film maker will have a license agreement with the production company (or assign his/her rights entirely for an agreed sum – in writing) while the production company will try to sell/license the documentary to various distributors (broadcasting houses). We have already outlined the principles of license agreements in the previous slides so I will only mention the importance of digital rights to be included in any license agreements for creative content.

As digital distribution involving the use of a computer, mobile devices or the internet becomes more and more important and traditional distribution models such as telecommunication or cinema will decrease, licenses that outline digital distribution of creative content such as films become more common.

As territories for digital rights can be difficult to define and distribution ranges from mobile phones to streaming for just one week after broadcast – it’s necessary to be aware of the value such rights may have for the film maker or production company and therefore, to involve a specialist media lawyer in the drafting of such contracts.

As with the clearing of rights, it’s necessary to consider any such rights when drafting license agreements – and ensure that the film maker or production company have cleared any rights or are the rightful owners of the rights they would like to exploit. If they don’t have the right or don’t have permission they can’t make such rights subject of a license agreement with somebody else.

Another issue to consider is the registration and exploitation of other rights that may be connected with the film such as trade arks or design rights to develop merchandising.

The documentary may have a very distinctive title or may be part of a series with a very distinctive title. Such titles could be protected through trade arks and/or if the film is very successful, certain aspects of the film such as a character could be turned into merchandise…

The final step is therefore, to look into the rights they may have in the film and related rights and how they could exploit them when for example developing a brand strategy and promotion with a PR agency.

Slide 41

The recommended schedule is as follows:

Designs

Total of 10min

Slide 42

Once the film is made, the production company and/or broadcaster will commission a PR agency to promote the film. The money and effort spent on promotion should also be part of the license agreement between the partners. It is good business practice to go through a tender process and invite several agencies to pitch for the commission.

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Initially, various PR agencies will meet with the potential client and present and perhaps already develop some concepts for poster design or viral marketing.

As we have seen at the beginning of the presentation, ideas and concepts cannot be protected – only expressed ideas can, such as typographical arrangements, which fall under copyright. It’s common for a PR agency to ask the client to keep such ideas and concepts confidential and not use it for commercial purposes should they not be commissioned. However, it can still happen that ideas of agencies that didn’t win the contract will be implemented in the final PR campaign and it’s very difficult to prove that confidence was breached when somebody else claims that they came up with similar concepts … However, making it clear that the information, which was shared during the meeting is shared under confidentiality is quite a strong preventative measure and signals to the client that they cannot develop these concepts without further consideration of the consequences.

Once the PR agency has won the contract and starts to work on the campaign for the film, they will be given material to use for the campaign such as photographs, film stills etc. All IP in these materials must be cleared for offline and online use in the campaign before it can be made available for promotion. It is also common practice to include an indemnity clause in the contract with the PR agency, which protects the client from damages through claims of copyright and other IP rights infringements. The PR agency therefore must ensure that all material even when provided by their client and any material they are sourcing themselves is cleared and appropriate licenses or written assignments of copyright are in place.

As copyright is owned by the author of the work if the work is not created in the course of employment, the client should either seek assignments of rights in all material developed by the PR agency or an exclusive license, which gives the client the exclusive right to use the materials for their campaign for a set period of time. Under an exclusive license, not even the PR agency has the right to use the material without permission of the client while the license is valid.

However, part of the commission for the PR agency could be the development of a brand strategy and merchandising for the film and the following slides are dedicated to IP issues relevant to those.

Slide 43

We have already discussed trademarks, what’s required and how you can defend your marks. However, if you think you have a distinctive sign that distinguishes your services or products from a competitor’s services and products and you would like to build a brand around your services and products, which can of course include a film project, you first need to do

Research! It is crucial that you find out if the signs you would like to register have rights that are owned by other people. It’s very expensive to base an advertising campaign and a company’s branding on the use of design, names etc. that infringe other people’s rights as they may insist that the whole campaign is scrapped and relating material destroyed. You would need to start from scratch.

It’s not only trademarks you have to be aware of but also copyright, design right, domain names.

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Start with a quick online search and see what comes up. Try variations of your company name but don’t only rely on an internet search but look through Companies House (UK government register for UK companies) or other national company registers such as the Handelsregisterauszug in Germany.

Your client should be as thorough with the search as possible especially if they have plans to operate in an international market, which is very likely if it’s a film that may be distributed internationally and digitally.

If they have finally found a name, which has not been used in their field of trade, and now consider registering the company name and related signs as trademarks, they need to do a search for existing identical or similar trademarks hereby avoiding infringing other people’s trademarks.

Examination for conflict:

Examination of trademarks means that marks are refused if they are the same or similar to existing marks or previous applications in the same or similar classes of goods or services.

They are examined and compared by sight (same or similar word, same or similar image, shape, colour...) and also by sound (different words, but having a similar sound or referring to another mark). If the perception of a mark is confusingly similar to that of another mark belonging to the same class of products, it may be refused.

For example, when Easyjet considered entering the mobile phone market (easyphone), they faced a law suit by the telecommunications company, Orange, whose orange colour was distinctive in the telecommunications market and recognisable by their costumers for the goods and services they provide. Similarly, Easyjet’s colour orange has gained high level of recognition within the air travel industry and beyond but registering the colour as a trade mark in the field of telecommunications, which is occupied by Orange, would have been difficult. As they have withdrawn their expansion in the market we will never know how the courts would have decided the case.

Depending on the complexity of the search it is advisable to engage a specialist trade mark attorney or lawyer to do the search and subsequent registration for you – or try searching yourself if the sign is fairly traditional. OHIM has such a search tool on their website (http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic) and so have the various national Intellectual Property Offices, where you can register trademarks. You can do the same for registered design rights.

Copyright is more complicated as it is automatic and therefore, registration is not necessary for it to exist. There are however registers of copyright in several countries (i.e. in China and US, where you have to register your copyright in order to bring an infringement case to court).

In order to use other people’s music tracks or other copyright work, you need to clear rights first with the various copyright holders, which can be complicated and full of pitfalls. You should seek legal advice if i.e. the copyright holder of the music chosen for the branding cannot be identified. In this case, it’s better to commission a new piece or look for something else than use a work that is not fully cleared.

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Once you are sure that you are not infringing other people’s rights or have fully cleared all rights, you should consider appropriate protection of all marketing elements you would like to use for the branding of your company.

Registration vs. non registration: In general, registration provides better protection against infringement and it’s easier to enforce registered rights than unregistered rights. But again, the business case needs to be considered. However, if there are certain design elements that are related to the branding of a company and distinctive such as the stitching on Levi’s pockets or Burberry’s colour combinations, they should be registered as trademarks. In the case of the film, it could even be a character in the film…

Slide 44

If the film is thought to be a big success, the production company should consider developing a range of products to generate additional revenue from the film (that’s for example, Disney’s way of exploiting the success of their films). Again, if merchandising was not part of the licensing agreement in the first place, a new license agreement needs to be agreed to secure rights such as copyright in animated characters or the use of trademarks with whoever is the rights holder.

Working with a designer on your merchandise: If your client commissions a designer to develop packaging/display etc. for your products it is important to know that any design rights are owned by the creator unless the work is developed by an employee in the execution of his/her duties or following the instructions of the employer (UCD – Unregistered Community Design).

Please note that in the UK, the commissioner owns design right not the creator of the commissioned work. In the UK, this is a major difference to copyright, where the commissioner has to have a written assignment from the commissioned party in order to own copyright. In the UK, surface decoration/patterns are not protected by unregistered design right while they are under unregistered and registered community design right.

Therefore, it’s important to seek advice from a legal expert or your national intellectual property office about details of national design right legislation as it varies from country to country.

In any case, if your client would like to commission a designer it’s important to have a written contract, in which various IP rights are identified and if necessary, assigned to the client. If assignment is not appropriate, your client should seek an exclusive or non-exclusive license to use the design for a certain purpose, territory, time period. The terms and conditions of such a license will depend on the opportunity of the business to exploit the rights in the future.

The following slides will explain design right in more detail.

Slide 45

What is protected?

Design right protects the external shape of the whole or part of a product (3D) or surface pattern (2D), which are generally external features of a product that make it more attractive to consumers and invite them to choose one product over another despite them having the same functionality. For example, the pen manufacturer, Mont Blanc, has managed to build

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a very strong brand and many people would choose one of their pens over others if they had the money to pay for them – they are items of luxury – not least because of the quality of their design.

It is not possible to protect a specific material through design right. As it is only the appearance of the product that is protected, the fact that a product is made of wood is not protectable. But if the fact that the specific texture/colour of the wood is specific to this particular design, it can be protected. Protecting such a design, doesn’t prevent competitors to manufacture similar products in wood if their design looks different and meets the requirements for protection. If they however attempt to imitate the specific appearance of the design using another material, they will be infringing the right of the owner of the design right.

Note, however, that designs (registered and unregistered) do not protect:

- a method or principle of construction;

- the shape/configuration which is required in order to enable the article to be connected to or placed against another article (for example, a plug or screw top of a bottle), or which is dependent on the appearance of another article which it is intended to form an integral part, e.g. a car door, which is dependent on the rest of the car; however, the side mirror of a car could be protected as it is an independent part of the car and an external feature.

Where the design or shape of a product has been branded to be synonymous with a company (e.g. a distinctive texture, shape, colour or contour), it becomes an asset with a monetary value. Design rights (particularly when registered) can stop others from benefiting from the creativity and budget invested in a design; however, a number of rules apply if you are to benefit from design protection.

The basis of protection is the same for both, namely it must:

• be novel; and• possess individual character.

A design is novel (new) if no identical design has been made available to the public before the date of filing. Individual character is a different overall impression on an user than what was produced by any previous design. [Made available to the public means; publication; exhibition; use and so on]

Generally, if your design increases a product’s appeal and commercial value, it can be protected from copying through registration.

Two forms of protection exist in the EU (national design rights exist parallel to community design rights):

1) Registered design right:

National and community-wide design rights (both must be registered)

Protects against copying – deliberate or not

Infringement does not have to be intentional – stronger form of protection

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Protection lasts for 25 years (for a registered community design)

2) Unregistered design right:

National and community-wide design rights

Arises automatically on creation – no formal steps necessary

Protection against deliberate copying only

Creator/owner has to prove that the design has been infringed and that she or he is the rightful owner

Duration of protection is relatively short: only three years in the EU for an unregistered community design

Slide 46

Enforcing your rights:

Enforcing ownership can differ by type of right and is much easier to establish for registered rights. For example, to show infringement of an UCD, the claimant must show copying which is akin to copyright infringement. This added hurdle is the main disadvantage to the unregistered right, but this is counterbalanced by the fact that the unregistered right is free and does not require registration.

Proof of design

Keep good records, original documentation, prototypes of when the design was first recorded and /or produced. All should be dated and signed by the creator and certified and corroborated by a third party. If appropriate produce artistic works such as concept drawings to assist with the scope and range of protection from a copyright perspective.

Who is the owner?Unless he or she was employed or commissioned to create the design, the designer (that is to say the person who created the design) is the first owner of a unregistered community design. Where a design is created in the course of employment, the employer will own the right. Unless otherwise stipulated in the contract, ownership of a design created on commission will stay with the designer, who has been commissioned. There are exceptions to this in some national laws (e.g. the UK) in which case the person, who commissioning the work, is the first owner of the right.

Design rights can be bought, sold or licensed in a similar manner to copyright.

InfringementAs with copyright, a distinction is drawn between primary and secondary infringement. Primary infringement is doing or authorising anything that is the exclusive right of the design right owner; for example, making articles to a design automatically means copying the design so as to produce articles exactly or substantially to the design. Secondary infringement includes importing into the UK for commercial purposes, possessing for commercial purposes or selling, letting for hire, offering or exposing for sale or hire in the course of a business, an article which is (and which the person doing that act knows, or has reason to believe to be) an infringing article.

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However, design rights exist independently of copyright, while copyright may protect documents detailing the design as well as any artistic or literary work incorporated within the finished product, the design right focuses more on the shape, configuration and construction of a product.

Slide 47

A registered design may be applied for to provide additional cover over and above any design right or copyright protection that may exist in an unregistered design. Registered designs are administered by the Office for Harmonization in the Internal Market (Trade Marks and Designs) in the EU, as well as national patent and trademark

What are the benefits of registering a design?

If registered, a design may enjoy prolonged protection from copying, although this protection would only be available in countries or territories where the application was made. Up to 25 years protection is available in the EC.

Registered designs are monopoly rights which gives greater protection. With unregistered designs, a right is only infringed if a third party produces an article by copying.

The right extend to designs which are substantially the same as that which is protected.

Commercial use

How can unregistered design right be used commercially?These rights are important commercial assets which can be used in a number of ways, including:

-as a means of stopping the copying and counterfeiting of goods;

-as part of a legal framework for the licensing of designs so that the design right owner can earn an income through royalties paid on licensed products;

-the rights can be traded as assets.

It is probably not necessary to register design right when the popularity of the film is short-lived. However, if it turns out that it’s a classic it’s worth considering registration. Inevitable, this is a commercial decision and depends what the production company expects in return for their investment in IP protection.

Slide 48

The recommended schedule is as follows: Enforcement 20min

Slide 49

If you go to the cinema, you will be exposed to a strong copyright notice making you aware of the rights of the owner to control copying of the film – however, without an effective means of enforcing your IP rights, innovation and creativity are effectively discouraged. After all, what’s the point of registering an IP right if you can’t actually afford to defend it should infringement occur?

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For major criminal activity (e.g. piracy and counterfeiting) the national bodies will join together with brand owners in order to help crack down on illegal activity; however, what about small creative businesses – what can they do?

Fortunately, there are other routes for creative business to pursue in order to defend their rights: litigation isn’t the only way. Consider the example pictured above for a case where a small company used social media in order to highlight the infringing actions of a larger company. The image relates to the Hidden Eloise claim of copyright infringement against the stationary chain Paperchase. US based artist Hidden Eloise initiated a Twitter campaign against Paperchase claiming that the design on various products (pictured right on a bag) would infringe her copyright in an artwork with the title ‘He says he can hear the Forest whisper'. She has previously written to them but they denied copying and said that they have bought the design in good faith from another company. However, her campaign created a lot of followers and drew attention to her case – and certainly had the potential to dent the image of the bigger company. We have asked a lawyer for their opinion and they conceded that the designs are so substantially different that it wouldn’t have been recognised as infringement even when she would have gone to court.

Source: http://www.own-it.org/news/twitter-campaign-sparked-against-paperchase-following-claims-of-copyright-infringement.

Other more traditional routes include the major alternative dispute resolution (ADR) systems, namely: negotiation, arbitration and mediation. ADR is a cheaper system for companies to pursue IP infringement claims (although it can still be costly).

Remedies

Where a more traditional route is pursued (e.g. litigation or arbitration), the law allows for relief for infringement of damages, injunctions (to stop further use) and an account of profit (essentially passing over to the original copyright holder any money made from the commercial use of their copyright).

This range of remedies is available to the copyright owner and, to the extent that licensed material is infringed, to any owner of an exclusive license to that work. (Non-exclusive licenses can also benefit from that range of remedies, but must be in writing to be eligible.)

Civil v criminal

Copyright infringement claims are mainly based on civil law where the special rights of criminal defendants you hear so much about don't apply (e.g. ‘innocent until proven guilty’ or ‘proof beyond a reasonable doubt’). This effectively means that you will get sued for damages etc. (see above), rather than charged with a crime. However, new laws are increasingly moving copyright violation into the criminal realm, so as to deter the worst cases (for example, counterfeiting).

Note: that doesn’t mean that copyright violation isn't a crime. Criminal action is possible, but it is generally only called upon in major (or test) cases. The courts have much better things to do than to pursue minor cases.

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Slide 50

Of course, the cheapest way to enforce your IP rights is by avoiding infringement in the first place. That is clearly easier said than done; nonetheless, there are certain techniques that a company can use in order to help protect these valuable assets:

Reducing the risk of infringement

In general, registered rights offer greater protection to the IP owner. Businesses should therefore consider putting this stronger form of protection in place for key assets (e.g. company brand names) and in key jurisdictions (particularly countries at risk of counterfeiting).

Once registered, you’ll need to monitor those rights to make sure that nobody else is seeking to piggyback on your existing IP. This cannot only infringe your rights (e.g. by selling products that appear to be linked to your brand name), but could also dilute the strength of these assets if you do not enforce them appropriately.

Once an alleged infringement has taken place, a company should always consult an IP adviser on the tactics regarding the specific case. Again – costs vs. benefits will be of primary importance for the company; however, some free services (e.g. Own-it, www.own-it.org) do exist to provide advice for companies in need of legal advice.

Mitigate the consequences

In order to successfully pursue an infringement action, you’ll first need to establish your ownership of the asset. This can be relatively simple when the asset has been registered (although that registration could be challenged); however, it’s much more complicated where the right is unregistered, e.g. a copyright.

In any cases, businesses are advised to keep a record of their creation, including clearly dating and stamping any designs, notes etc that are created as part of the development process – and clearly stamping their ownership (e.g. with a copyright symbol) once that IP is circulated into the wider public domain.

Slide 51

Mitigate the consequences

In order to successfully pursue an infringement action, you’ll first need to establish your ownership of the asset. This can be relatively simple when the asset has been registered (although that registration could be challenged); however, it’s much more complicated where the right is unregistered, e.g. a copyright.

In any cases, businesses are advised to keep a record of their creation, including clearly dating and stamping any designs, notes etc. that are created as part of the development process – and clearly stamping their ownership (e.g. with a copyright symbol) once that IP is circulated into the wider public domain.

Slide 52

The presenter can take additional questions now. 39