WIPO NATIONAL SEMINAR ON ENHANCING AWARENESS

AND BUILDING CAPACITYOF SMES TO BENEFIT FROM THE

INTELLECTUAL PROPERTY SYSTEM

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

Companies asOwners and Users of Works Protected by Copyright & Related

Rights

Lien Verbauwhede KoglinLien Verbauwhede KoglinConsultant,Consultant, SMEs Division

World Intellectual Property Organization (WIPO)

This PresentationThis Presentation

• Copyright basics

• Identify common situations in which copyright issues may arise

• Learn how to resolve copyright issues

• Significant damages can be available for infringement

PART 1PART 1

WHAT IS COPYRIGHT ?WHAT IS COPYRIGHT ?

My: Copyright Act 1987My: Copyright Act 1987

What is Copyright

Grants authors, composers, and other creators legal protection for their literary and artistic creations (‘works’)

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

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

LiteraryLiteraryFilms

Dramatic

Music

Photographic

Artistic

Copyright Works

Copyright and Business

• Computer programs

• Content on websites

+ ‘look and feel’

• Graphic works

Copyright and Business

•Artwork and text on labels, packaging and product literature

• Marketing and advertising materials

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

Copyright and Business

• Sales training program captured on videocassette

• Newsletters

• Instruction sheets, operating manuals for machines, maintenance manuals

• Technical drawings, diagrams, maps, architectural plans

• Some types of databases

What is not protected?

• Ideas, procedures, methods, systems, Ideas, procedures, methods, systems, processes, concepts, discoveries, devices, processes, concepts, discoveries, devices, anything purely functionalanything purely functional

• E.g. Instruction manual that describes system for brewing beer

• E.g. Ideas embodied in desktop metaphor (idea to use windows to display multiple pages on computer screen)

• May be protected by patent

What is not protected?

• Facts or information

• Historical, news, scientific, biographical

• E.g. biography

• Government works

• Statutes, judicial opinions, etc

• Works not fixed in tangible form of expression

• Non recorded words or songs

What is not protected?

• Names, titles, slogans, short phrases

• But advertising slogan may be protected under TM or passing off

• Artistic logo may be protected under copyright

Nike

What is not protected?

•

• Works of applied art ?

Clothing not protected, fabric design isClothing not protected, fabric design is

A belt may not be protected, its buckle can be A belt may not be protected, its buckle can be

Jewelry which has elements that are original Jewelry which has elements that are original and not purely functionaland not purely functional

What is not protected?

• Works of applied art ?

Protection differs greatly from country to country

Overlap with industrial designs

In My:

1. No copyright protection if design is registered

2. No copyright protection if design is not registered, but filfills requirements for ID + is reproduced more than 50 items

A Bundle of Exclusive Rights

Economic Rights

– Reproduce or make copies

– Distribute to public

– Sell, rent*, lend*

– Display or perform to public

– Adapt and translate

– Make available on the Internet

Moral Rights

– Right of authorship: acknowledgement

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

* Generally applies only to certain types of works: Cinematographic works, musical works, or computer programs.

Assignment or License

Moral Rights cannot be transferred

What are Related Rights?

Rights of broadcasting organizations

in their radio and television programs and in Internet broadcasts such as ‘podcasts’

Rights of producers of

sound recordings

(phonograms)

in their recordings (cassette recordings, compact discs, etc.)

Rights of

performers

• actors• musicians• singers • dancers

• or generally people who perform

Example, in the case of a songsong by Barry WhiteBarry White …

CopyrightCopyright protects the music of the composer and the words of the writer, and ...

Related rightsRelated rights would apply to ..

Can't Get Enough/Just Another Way to Say...(1973/75,IMS Records)

the performances of the musicians and singers who perform the song

the sound recording of the producer in which the song is included

the broadcast program of the organization that produces the program containing the song

Copyright

• Term of protection: Generally speaking: - Life author + 50y - Exceptions

• Automatic

• Copyright subsists worldwide: Berne Convention

heirs

So why register?

But national law applies

• Sportman invents technology for better shock-absorption for running shoes.

• Advertises on his website. Describes in text what the technology is about.

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

PART 2PART 2

Why is Copyright Relevant Why is Copyright Relevant to Your Business?to Your Business?

1. Control of Commercial Exploitation

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

in the marketplace

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

– multimedia – TV and radio programs

Copyright is a tradeable asset that may be owned, bought and sold the same as other types of property

sell copies of the work sell copyright in the work permit others to use your copyrighted work

Can be an important long-term value for your business if the work is of quality or is a commercial success.

2. Generate Income

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

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

3. Raise Funds

Copyright law enables to take legal action against anyone encroaching on the exclusive rights

Remedies/Sanctions:

- Stop infringement- Obtain monetary relief (damages)- Destruction of infringing works- Criminal sanctions (fine 20.000 RM and more

+ imprisonment)

4. Take action against infringers

May enhance the value or efficiency of your business

- play music in restaurant, bar, retail shop- use computer software or databases created by

others- illustrate your website or catalogs with photographs taken by others

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

5. Use Works Owned by Others

6. Effective Marketing and Advertising

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

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

short movies online music interactive games contests other new marketing ploys

PART 3PART 3

How to Maximize your How to Maximize your Copyright Protection Copyright Protection

in Your Business’ in Your Business’ Creations?Creations?

1. Prove ownership

Copyright register (not Malaysia)

Deposit copy with bank / lawyer

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

Send yourself copy in sealed envelope

Copyright notice

Standard Identification Numbering Systems-International Standard Book Number (ISBN)-International Standard Recording Code (ISRC)

1. Prove ownership

Keep records of circumstances in which the work was made

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

2. Protect works in electronic form

Mouse-click contract

Mark with rights management information

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

Technological protection measures

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

2. Protect works in electronic form

In My:

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

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

3. Ascertain ownership

Author ≠ owner- But moral rights...

Work created by employee in the course of employment

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

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

CONTRACT

• You outsource creation of software to software developer

• Who owns copyright?

PART 4PART 4

How to Get the Most out of How to Get the Most out of Your Copyright Your Copyright

in Your Business’ in Your Business’ Creations?Creations?

Sell the work or sell copies of the work

Do you lose copyright?

License your economic rights

Exclusive

Non-exclusive

Sell your copyright

‘assignment’

Business’ activity

Buyer’s interest

Price

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

The exclusive rights can be divided and subdivided and licensed or sold to others in just about any way you can imagine:

— by territory — time — market segment — media — content, etc.

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

• Income: Can generate lucrative fees and royalties

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

• Marketing tool: Increases the business’ exposure and recognition

Why should a business consider licensing?

Licensing Strategy

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

Generally, better limited in scope

- To specific needs and interests of licensee

- Non-exclusive license allows further opportunities

Exclusive license or assignment- If no alternative

- If adequate price

- Loss of all future income-earning potential

Licensing Strategy

Handle all aspects yourself

- standard terms and conditions - individually with every licensee

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

- book publisher, record producer

Collective Management Organization

Owner of copyright: has great power to define how his photos are used

Important to consider range of possibilities to commercialize the photographs.

Example of photographer

Possible to simultaneously grant various licenses for one photo:

To different

usersFor specific manners of exploitation

For limited period of time

For specific purpose

In limited

territory

CMOs

►Per type of work and per country

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

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

CMOs

►Advantages

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

AUTHOR

SOCIETY

USER

COLLECTIVE MANAGEMENT

INTERMEDIARYBETWEEN

THE WORLD OF CREATION

ANDTHE WORLD OF

USERS

DOCUMENTATIONDOCUMENTATION

• The author joins the authors’ society and becomes a MEMBER

• He gives his RIGHTS• He provides the

authors’society with • WORKS

DECLARATION and• PERSONAL DATA

Recording Industry Association of Malaysia (RIM)

• Set up a one-stop centre to license local music repertoire for digital distribution

• To address the complex licensing issues associated with the digital distribution of music

• For now the licensing is restricted to ringtones & truetones, as a test

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

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

• Broadcast right: for transmitting ringtone signals via SMS to customer’s handset

• Licenses needed from (or on behalf of)– Songwriter (composer or publisher)– Singer – Recording company

PART 5PART 5

Using Works Using Works Owned by OthersOwned by Others

When do you need permission?

1. Work is covered by copyright / related rights

2. Work is not in the public domain- Copyright protection period expired- Work cannot be protected (e.g. Title)- Owner has explicitly abandoned his rights

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

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

Free uses or limitations

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

• You buy software for your office. Can you

– Make a back-up copy for office use?– Make a copy for home use?– Adapt the software to your business needs?– Use the software on multiple workstations?

How reduce risk of infringement?

1. Educate employees

2. Obtain written licenses/assignments, where needed, and ensure that staff are familiar with their scope

3. Mark apparatus that could be used to infringe copyright with a notice

- Photocopiers- CD and DVD burners- Computers

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

ConclusionsConclusions

• Maximize your copyright protection

• Ascertain copyright ownership

• Avoid infringement

• Get the most out of your copyright

Thank You!

WIPO’s website for SMEs :

www.wipo.int/sme

Lien.verbauwhede@wipo.int