Copyright 2018 4Th Edition a Practical Cross-Border Insight Into Copyright Law

Published by Global Legal Group, in association with Bird & Bird LLP

With contributions from: Anderson Mōri & Tomotsune KISCH IP Arnold & Porter Kaye Scholer LLP LexOrbis Bereskin & Parr LLP LPS L@w Bird & Bird LLP MinterEllison BROSS & PARTNERS PEREZ CORREA & ASOCIADOS, SC Daniel Legal & IP Strategy S. P. A. Ajibade & Co Deep & Far Attorneys-at-Law Seow & Associates FRORIEP Legal SA SyCip Salazar Hernandez & Gatmaitan Gorodissky & Partners (Ukraine) Vash Patent LLC Güzeldere & Balkan Law Firm Weisselberg Avocat HOYNG ROKH MONEGIER ZY Partners JIPYONG The International Comparative Legal Guide to: Copyright 2018

General Chapter:

1 Communication to the Public: the Only Right Worth Talking About? – Will Smith & Phil Sherrell, Bird & Bird LLP 1

Contributing Editor Country Question and Answer Chapters: Phil Sherrell, Bird & Bird LLP 2 Australia MinterEllison: John Fairbairn & Emily Hawcroft 7 Sales Director Florjan Osmani 3 Brazil Daniel Legal & IP Strategy: Giovanna M. Sgaria de Morais Moulin & Account Director Hannah Vitória M. Fernandes 14 Oliver Smith

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WWW.ICLG.COM Chapter 1

Communication to the Public: the Only Right Will Smith Worth Talking About?

Bird & Bird LLP Phil Sherrell

owners of copyright works and the revenue generated by websites Introduction involved in the exploitation of those copyright works. The gap is said to arise in part due to the widespread online presence of The past 12 months have seen significant further development in unlicensed content. European Copyright law as the European Commission and the Court of Justice of the European Union (“CJEU”) continue to On websites which host user-uploaded content, unlicensed user grapple with the thorny issue of copyright in the online environment. uploads often compete directly with content authorised by rights Against a wider background of new content-sharing technology, holders. Generally, the host continues to generate revenue, in ever increasing user-generated content, and a perceived lack of particular through advertising to visitors of the site, regardless of fair remuneration for the creative industries, the exclusive right to whether the content viewed is authorised or not. However, rights communicate a work to the public has taken on a pivotal role. holders lose out because traffic to their authorised content is diluted and royalties are typically calculated on the basis of the number of The ways in which content is disseminated and consumed in the times content is accessed (or streamed). online environment have changed significantly in recent years with a 3 general move away from downloads, which engage the reproduction In a report published in April 2017, the International Federation of right as a local copy of the work is made, to streaming where users the Phonographic Industry quantified the “value gap” as follows: merely access the work without making any permanent copy. user upload video streaming services (which comprise the world’s largest on-demand music audience) were estimated to have more This shift in consumer behaviour is reflected in the more recent than 900 million users returning a revenue of US$553 million in decisions of the CJEU. In recent cases, including GS Media,1 2016, i.e. US$0.61 per user; in contrast, audio subscription services which we discuss below, the Court has held that merely making a had a user base of 212 million users generating licence fees of work available (as many online service providers do) was capable US$3.9 billion, i.e. US$18.39 per user. of being an act of communication, rather than requiring an active transmission of the work. The scope of the communication to the The problem is then said to be compounded as websites which are public right appears to have been widened further by the subsequent able to offer content for free force licensed content providers to cut decisions in Filmspeler and Ziggo.2 their own subscription fees with a knock-on effect for authors. This has led some rights holders to pull their content from subscription At the same time as the CJEU continues to address the issue of what services altogether in protest at what they see as unfair royalty amounts to a communication to the public, the European Commission rates.4 Many rights holders see the protections for intermediaries is in the process of steering the draft Directive on Copyright in the under the E-Commerce Directive5 as giving platforms an unjustified Digital Single Market (the “Copyright Directive”) through the advantage in negotiations regarding content licensing and wish to legislative process. One key objective of the Copyright Directive see these defences restricted. is to address areas where changes in technology are causing the traditional copyright framework to become less effective, such that On the other hand, platforms which provide access to content reform is needed. Central to the proposed reform are the obligations argue that without the technical advances they have introduced to of online services providers who store and communicate copyright distribute content cheaply and directly to consumers, whilst at the works to the public. That is to say, in what circumstances should same time passing royalties on to the rights holders, the creative an online service which provides access to content require a licence media industries would be in a much worse position. For example, from the rights holder? Google announced last year that YouTube alone has generated over US$2 billion to rights holders by licensing uploaded content through This article will analyse the key provisions of the Copyright its automated rights management service, Content ID.6 Directive and consider how these might interact with the recent CJEU decisions relating to communication to the public. Addressing the “value gap” is one of the aims of the Copyright Directive. One of the issues discussed in this article will be how changes to copyright law, both judicial and legislative, will affect The “Value Gap” the intermediary liability regime.

In order to place the proposed reforms under the Copyright Directive in context, it is necessary first to understand the so-called “value The Copyright Directive gap”. The “value gap” is the name given by rights holders (and others) to the gap between the royalties generated for creators and The Copyright Directive was published in September 2016 with broad objectives to further harmonise copyright law across the EU

and to allow for wider online access to works. The explanatory (whether or not they also store the works). What will be interesting memorandum highlights three important goals of the Copyright to see, is how this fits with the understanding of communication to Directive: the public under CJEU case law and whether the nature of entities (i) to enhance cross-border access to copyright-protected content which may be subject to this provision changes as the interpretation services; of communication to the public by the CJEU continues to evolve (as (ii) to facilitate new uses in the fields of research and education; to which, see below). and The second paragraph is potentially more significant. The provision (iii) to clarify the role of online services in the distribution of is limited to information society service providers storing or works and other subject matter. providing access to large amounts of copyright protected works. It is the third of these goals that we will focus on in this article. Whilst this is at present far from a precise definition, the intention is clearly for major platforms such as YouTube and Facebook to The role of online services is clearly central to the dissemination and be caught. There will need to be clarity over the point at which an exploitation of content in the digital environment. This provides information society service provider becomes a big enough player, both opportunities for rights holders, as there are ever more in terms of the amount of content hosted, for this provision to apply. innovative ways to reach and engage consumers, and also risks, as ways to access unauthorised content also continue to develop. This can be seen from the different kinds of online services which are the The Articles subject of references to national courts and the CJEU.7 The key operative provision of the Copyright Directive designed The Explanatory Memorandum to give effect to the two goals identified above is Article 13, which has arguably been the most controversial part of the Copyright Directive. It applies to information society service providers that Against this background, the Explanatory Memorandum of the store and provide access to large amounts of works uploaded by Copyright Directive explains that the proposal seeks on the one hand their users (repeating the requirement for the amount of content to to “clarify the role of online services”, i.e. to recast the obligations be “large”). Those providers must take measures either: of online service providers, whilst at the same time guaranteeing “that authors and rights holders receive a fair share of the value that (i) to ensure the functioning of agreements concluded with rights holders for the use of their works; or is generated by the use of their works”. (ii) to prevent the availability on their services of works or The Explanatory Memorandum also states that the Copyright other subject-matter identified by rights holders through Directive “includes new obligations on some online services”. cooperation with service providers. These obligations will apply to “information society services storing At first blush this does not look particularly unusual. Useof and giving access to large amounts of copyright-protected content content must be licensed (i.e. pursuant to an agreement with the uploaded by their users”. rights holder) and providers must operate a notice and take down Of course, online service providers have been quick to remind procedure (such as is already required in order to benefit from the the Commission of the hosting defence under Article 14 of the hosting defence). E-Commerce Directive. Quite how the reforms proposed by the However, the devil is in the detail. Firstly, the requirement is for Copyright Directive may fit with this protection will be discussed providers to “take measures”, this suggests a need for providers to below. be more proactive. Secondly, Article 13 goes on to state “[t]hose measures, such as the use of effective content recognition technologies, The Recitals shall be appropriate and proportionate”. This is a clear indication that the onus is shifting towards service providers, rather than rights Some clues to the possible erosion of the hosting defence may holders, to take the initiative in policing infringing content. be found in Recital 38 of the Copyright Directive which refers When this provision is read in conjunction with Recital 38, it explicitly to Article 14 of the E-Commerce Directive. seems that there has been a narrowing of the hosting defence and The first paragraph of Recital 38 states that information society the imposition of a monitoring obligation. Quite how that sits with service providers that store and provide access to the public Article 15 of the E-Commerce Directive, however, is not explained. to copyright protected works uploaded by their users, thereby Article 1 of the Copyright Directive lists a number of Directives performing an act of communication to the public, are obliged to which are not to be affected by the Copyright Directive with the conclude licensing agreements with rights holders unless they are notable absence of the E-Commerce Directive from this list. exempt under Article 14 of the E-Commerce Directive. In this The precise final scope of Article 13 of the Copyright Directive regard, the Recital also explains some circumstances in which this remains unclear at present (both in terms of application and either will or will not be the case. obligations); however, it seems clear that the landscape for In contrast, the final paragraph of Recital 38 states that information platforms hosting content will change at least in part. Given the society service providers storing and providing access to the public increasing number of online services who are considered by the to “large amounts of” copyright protected works uploaded by their CJEU to “provide access” to content, that is to communicate it to users should take appropriate and effective measures to ensure the public (as discussed below), the application of the new measures protection of works or other subject matter, such as implementing could extend well beyond the main players which are the obvious effective technologies. Recital 38 makes it clear that this obligation targets of the reforms. should apply even when the service provider is eligible for exemption from liability under the hosting defence. Interpretation of the InfoSoc Directive The first paragraph of Recital 38 is not a controversial statement. Anyone who communicates a work to the public should be authorised The harmonisation of the communication to the public right has its to do so by the rights holder unless they benefit from an exception origin in Article 3(1) of the InfoSoc Directive8 which provides that:

“Member States shall provide authors with the exclusive right Before considering the CJEU’s decision, it is worth pausing to to authorise or prohibit any communication to the public of consider the opinion of the Advocate General. In his opinion, AG their works…” Wathelet stated at (paragraph 54): The term ‘communication to the public’ was not defined by the “I consider that hyperlinks which lead, even directly, to InfoSoc Directive; however, as a measure of European Union law, protected works do not ‘make available’ those works to a it must be given a common interpretation across Member States. public where the works are already freely accessible on another Therefore, any issue as to whether an allegedly infringing act website, but merely facilitate the finding of those works.” actually amounts to a communication to the public is a question for This was a departure from Svensson and would (had it been followed) the CJEU, a question which has now been asked around 20 times in have caused many of the questions arising from that case (for example, relation to various different technological means of communicating how does one know if the original communication was authorised by copyright works, with more cases pending. the rights holder?) to fall away. Central to the Advocate General’s The CJEU case law establishes that the concept of a communication reasoning was the notion that the intervention of the linking party to the public comprises two criteria (both of which must be met): (i) must be vital or indispensable in order to allow access to the work. an ‘act of communication’; and (ii) a ‘public’.9 If the work could be accessed regardless of the activity of the linking party, there should not be an act of communication. This approach The first key case to consider the meaning of communication to relates the notion of the intervention being indispensable to the action the public was Rafael Hoteles, which concerned the installation of communication itself, in contrast to Svensson where it effectively and use of televisions in hotel rooms. An important factor in the formed part of the analysis of whether there was a new public. It is judgment of the Court was that the act of communication was to a notable that, as in Svensson, the European Commission stated in its ‘new public’, i.e. a different public to those to whom the original act observations in GS Media that there could be no act of communication of communication was directed. The reasoning of the Court was in the absence of a transmission or retransmission of the work. that absent the intervention by the hotel (by installing televisions) its customers would not have been able to view the broadcast work.10 The CJEU, however, took a different view. This requirement for a new public has now taken on a key role in The CJEU’s judgment focuses on other factors relating to the establishing whether a communication to the public takes place. As identification of an act of communication and notes thatan will be discussed below, defining a new public in relation to online “individualised assessment”, taking account of “complementary communication presents particular challenges. criteria” should be undertaken. Paragraph 35 of the judgment states: The other key component in establishing a communication to the “The user makes an act of communication when it intervenes, public is that there must be an ‘act of communication’. Following in full knowledge of the consequences of its action, to give Svensson and Filmspeler, it is now clear that it is sufficient that the access to a protected work to its customers, and does so, work is merely made available to the public such that they may in particular, where, in the absence of that intervention, access it (even if they do not in fact do so). This element of the its customer would not, in principle, be able to enjoy the broadcast work.” decision in Svensson was contrary to the European Commission’s submissions who had argued that an act of communication had to be That is, the intervention of the linking party had to be indispensable limited to a ‘transmission’ or ‘retransmission’, which would not be to the user being able to access the work. In addition, the CJEU the case for hyperlinking to a work. placed weight on the knowledge of the intervening party. Based on this analysis, the CJEU held that posting a hyperlink to a work which is freely available but without the rights holder’s consent is an act Recent Cases on the Scope of of communication, provided the poster knew or should reasonably “Communication to the Public” have known that the original communication was unauthorised. In circumstances where the link is posted for financial gain, such knowledge is to be presumed. GS Media This requirement for knowledge in establishing whether or not an act of communication has occurred has been met with significant The decision of the CJEU in September 2016 in GS Media was criticism. Communication to the public, like all primary acts of long awaited as it addressed one of the key unanswered questions infringement, has hitherto been regarded as a question of strict following the decision in Svensson11 in 2014. To recap, in Svensson liability i.e. an act either is or is not an act of communication, it was held that providing a hyperlink to a work which was already regardless of a person’s state of mind. Following GS Media, linking freely available online with the rights holder’s consent was not a now may or may not be an act of communication, depending on the communication to the public because there was no new public. By particular circumstances. publishing the work online without restriction, the rights holder was deemed to have communicated the work to all Internet users. Secondly, the presumption of knowledge where the linking is for profit is now a key consideration in linking cases (despite not even A key unanswered question was what happens in the situation where having been mentioned in Svensson). The requirement has been the original communication of the work was without the rights viewed as vague and potentially very onerous. It is not clear what holder’s consent? the profit making activity should apply to, i.e. whether to the link GS Media concerned photographs of Britt Dekker, a Dutch alone or to the rest of the website on which the link is displayed. If television presenter, taken during a shoot for Playboy magazine. The the latter view is correct (and this is the view that national courts photographs were uploaded, without permission, to an Australian applying GS Media have taken in Sweden and Germany) this would data-storage website. GS Media, which operates a website called require the poster of a link on virtually any site connected to a GeenStijl, published an online article which contained a hyperlink business or containing adverts (and therefore operating for profit) to the data-storage site from which the photographs could be to check the rights holder’s consent before linking to his content. downloaded. This has arguably been the case since Svensson, but the burden has The question for the CJEU was whether the provision of the now definitively shifted away from the rights holder and on to the hyperlink was a communication to the public. linking party.

This rebuttable presumption could clearly create a tension with the E-Commerce Directive if the communicating party could be Ziggo considered an information society service provider within the protection of Article 15. Requiring an online intermediary to check The case of Ziggo concerned a request against Ziggo and another in each case whether the content communicated is lawful would internet service provider to block access to the well-known peer- seem to amount to a de facto monitoring obligation, the imposition to-peer file sharing site, The Pirate Bay. The question arose as to of which is prohibited by Article 15. whether there was a communication to the public in circumstances where The Pirate Bay did not host any infringing content itself but merely provided a means for its customers to access unauthorised Filmspeler content on the computers of other customers (i.e. peer-to-peer) (AG Szpunar described the .torrent files provided by The Pirate Bay as The CJEU’s judgment in Filmspeler came in April 2017, after GS a “treasure map”). Importantly, whilst it is theoretically possible to Media. find files offered on a peer-to-peer network without using a site like The case concerned a multimedia player (the ‘filmspeler’) upon The Pirate Bay, in practice any search for such files would generally which the defendant, Mr. Wullems, installed open source software lead to an aggregation site such as The Pirate Bay. which allowed users to play files through a user-friendly interface. The CJEU held that, although The Pirate Bay did not host content Integrated into the interface were add-ons, created by third parties, itself, by making available and managing an online sharing platform, some of which linked to a website on which protected works were the operators of The Pirate Bay intervene, in full knowledge of made available to internet users without the consent of the rights the consequences of their conduct, in order to provide access to holder. Activating the links through the remote control of the protected works. The Pirate Bay therefore performed an essential filmspeler connected the user to a stream of the content. Although the role in the making available of the works in question and there was links were freely available online, they were not readily identifiable an “act of communication”. As with GS Media and Filmspeler, the by the public and the majority of them changed frequently. knowledge requirement was therefore of particular importance. Therefore, like in GS Media, the online content was unauthorised, In considering whether there was a “new public”, the CJEU noted and Mr. Wullems was aware of this (indeed, he advertised the that the communication in issue is, at the very least, to all of the multimedia player as a way to watch online content without the platform’s users. This amounted to tens of millions of users, consent of rights holders). sufficient to be considered a “public”. The evidence also showed In its observations, the European Commission again argued for a that a very large number of the torrent files on The Pirate Bay related narrow construction of the concept of an act of communication. The to works published without the consent of the rights holders. There opinion of AG Campos Sánchez-Bordona states at paragraph 48: was therefore a communication to a public not originally taken into “Moreover the Commission states that there must be some account by the rights holders and thus a “new public”. The CJEU’s limit to the widening of the definition of ‘communication to analysis of the new public requirement also refers to the operators the public’.” of The Pirate Bay being aware that the works communicated were In this vein, the Commission noted that the case concerned the sale unauthorised. It is unclear whether this means that knowledge is also of a multi-media player and not the provision of hyperlinks and that a requirement for the new public analysis as well as in establishing the intervention of the filmspeler was not crucial in order for users whether there has been an act of communication. to access the content, nor an essential part of the process connecting Whilst Filmspeler seems to approve of the presumption of the content on the website to the end user. knowledge set out in GS Media (albeit it is not material to the AG Campos Sánchez-Bordona was not persuaded by this argument decision because actual knowledge was already apparent), in and his opinion suggested that the fact that the hyperlinks on the Ziggo the analysis of knowledge instead appears to be relevant to filmspeler increased the range of potential users was significant establishing the “new public” requirement. in establishing a communication to the public. Accordingly, the filmspeler could not be considered as a mere physical facility. Analysis In its judgment, the CJEU agreed with the Advocate General and held that the provision of the filmspeler was an act of communication The Copyright Directive appears deliberately to be broadly drafted. because it enabled a direct link to the unlawful content without Unlike the evolving definition of communication to the public which the end users would find it difficult to access those works. provided by the CJEU, it does not require the intervention by In both Filmspeler and GS Media it was accepted that the initial the provider to be indispensable, nor for the provider to have full communication of the content linked to (or at least some of the knowledge of the consequences of its action. Instead, the effect content in the case of Filmspeler) was not authorised by the rights is that any making available will trigger the obligations under holder. There is perhaps a slight linguistic difficulty in applying Article 13 (provided the storage and quantity requirements are also the ‘new public’ requirement to cases where no communication to satisfied). Of course, liability for copyright infringement where the public has been authorised (i.e. there was no original authorised works are communicated to the public without the permission of the communication by the rights holder to an ‘original’ public). rights holder could still be avoided under the hosting defence, but it However, following GS Media, any unauthorised communication is seems that the “obligation to monitor” cannot be. effectively deemed not to have been made to any public. Therefore, This flows from the absence of a “new public” criterion under Article in Filmspeler, there was a new public because in many cases the 13 of the Copyright Directive. As discussed above, if an authorised rights holder had not authorised the initial communication. The work is freely available online with the rights holder’s consent, Court did not explore the implications of the fact that certain of the hyperlinking to this work is not a communication to the public filmspeler links resolved to authorised content, a feature which one (following Svensson) and it appears that lining to other copies also might have expected would be material to the analysis. falls outside the right. The Article 13 protections would continue, however, regardless of any previously authorised communications.

This demonstrates that the obligations under Article 13 of Copyright Taken together, the CJEU’s decisions and the proposals of the Directive are additional to the existing copyright framework Copyright Directive would seem to suggest that entities performing and are intended to apply to any making available regardless of different roles in the content distribution chain (i.e. whether hosts whether such an act is in fact a communication to the public. These or linking sites) will continue to come under increasing pressure to distinctions could be important where there is uncertainty as to limit the communication of unlicensed content in the future. whether or not the communicating party falls within the protections of the E-Commerce Directive. Endnotes At the same time as the Copyright Directive seeks to impose additional obligations on traditional “hosts” to address the perceived 1. C-160/15. “value gap”, the decisions of the CJEU are also de facto addressing 2. C-527/15 and C-610/15. the same issue by imposing liability on a range of other online intermediaries who appear not to benefit from the E-Commerce 3. Accessed at http://www.ifpi.org/news/IFPI-GLOBAL- MUSIC-REPORT-2017 on 31 May 2017. Directive. In the cases discussed in this article, the findings in relation to the communication to the public right were conclusive 4. Perhaps the most notable example was Taylor Swift who in establishing liability because the protections of the E-Commerce removed her content from Spotify between 2014 and June 2017 as a boycott. Directive were not available (or at least were not argued). 5. Directive 2001/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information Conclusion society services, in particular electronic commerce, in the Internal Market (Directive on electronic commerce). Article 13 of the Copyright Directive proposes ambitious reforms to 6. Accessed at https://www.blog.google/topics/public-policy/ the legislative regime applicable to online platforms and it may be continuing-to-create-value-while/ on 4 July 2017. that the new obligations are in fact better understood as standalone 7. For example, the services considered in: Twentieth Century requirements which are separate from the existing communication Fox Film corporation and Others vs Sky UK Limited to the public right as it is ordinarily understood. and Others [2015] EWHC 1082 (Ch) (“Popcorn Time”), Filmspeler (C-527/15) and Ziggo (C-610/15). Given the overall objectives of the Copyright Directive, and the widely acknowledged problems with online infringement, including 8. Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain the “value gap”, it seems likely that at least some limitation of the aspects of copyright and related rights in the information hosting defence and the introduction of monitoring requirements is society. inevitable. However, the provisions which seem to contradict the 9. See, for example C-160/15 at paragraph 32 (GS Media). E-Commerce Directive and in particular the apparent imposition of monitoring obligations on hosts of content will continue to be the 10. C-306/05 (at paragraphs 40–41). subject of fierce lobbying from the major online platforms and the 11. C-466/12. content industries alike.

Will Smith Phil Sherrell Bird & Bird LLP Bird & Bird LLP 12 New Fetter Lane 12 New Fetter Lane London, EC4A 1JP London, EC4A 1JP United Kingdom United Kingdom

Tel: +44 20 7415 6000 Tel: +44 20 7415 6000 Email: [email protected] Email: [email protected] URL: www.twobirds.com URL: www.twobirds.com

Will is an associate in Bird & Bird’s Intellectual Property Group based Phil is a partner at Bird & Bird specialising in IP/media litigation, and in London. He graduated with a first class degree in Chemistry from heads the firm’s Media, Entertainment & Sports sector. He hasa the University of Oxford before qualifying as a solicitor in 2013. Will particular focus on copyright work. achieved a distinction on the Oxford Intellectual Property Law and Phil has handled several Copyright Tribunal cases in relation to the Practice Diploma in 2015. licensing of music and newspaper content, including representing Will’s work covers a broad range of intellectual property rights, the media monitoring industry in the well-known Meltwater dispute. including patents, copyright, design rights and confidential information. He also advises a wide range of clients on other copyright law He has recently advised on copyright issues arising across a range related issues, including content owners and licensees in the music, of sectors including media, architecture and consumer products. Will publishing, broadcast and advertising industries. has advised both rights holders and alleged infringers involved in Phil is ranked as a leading individual for Media & Entertainment in the copyright disputes, as well as advising businesses on the copyright law Chambers UK 2017 Guide. implications for new products, particularly in the online environment.

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Australia John Fairbairn

MinterEllison Emily Hawcroft

(c) names, slogans, headlines and titles in most circumstances, as 1 Copyright Subsistence they are likely to be too insubstantial to qualify for copyright protection (see Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd (2010) 189 FCR 109). 1.1 What are the requirements for copyright to subsist in a work? 1.3 Is there a system for registration of copyright and if Copyright subsists in a “work” if it is: so what is the effect of registration? (a) a literary (including computer programs), dramatic, musical or artistic work (s32(1) and (2)); No, there is no system for registering copyright. Copyright (b) “original” (s32(1) and (2)) in the sense that it originates from protection arises automatically if the requisite criteria are met. the author as the result of the author’s intellectual effort and is not copied; 1.4 What is the duration of copyright protection? Does (c) reduced to writing or some other “material form” (s22(1)); this vary depending on the type of work? and (d) created by an author who was a “qualified person” (an Generally, copyright subsists until the expiration of 70 years after Australian citizen or a person resident in Australia) when the the end of the calendar year in which the author died (s33). work was made (s32(4)) or from another country recognised under the Copyright Act 1968 (Cth) (Act) (discussed below). The following variations apply, namely, copyright subsists for: (a) 70 years after the end of the calendar year in which the work Copyright also subsists in “subject matter other than works” (i.e. was first published for: sound recordings, cinematograph films, television and sound broadcasts and published editions) (ss89 to 92) (discussed further (i) literary works (other than a computer program), or dramatic or musical works, that have not been published below). (s33(3)); The Copyright (International Protection) Regulations 1969 (Cth) (ii) engravings where the author died before the engraving provides copyright protection to works and subject matter other than was published (s33(5)); works made or first published in a foreign country. Subject to certain (iii) pseudonymous and anonymous works (s34); exceptions, member countries of the Berne Convention, Universal (iv) sound recordings (s93); and Copyright Convention, Rome Convention, WIPO Copyright Treaty, WIPO Performances and Phonograms Treaty and the World Trade (v) cinematograph films (s94). Organisation are afforded this protection. (b) 50 years after the end of the calendar year in which the television or sound broadcast was made (s95); and (c) 25 years after the end of the calendar year in which the 1.2 On the presumption that copyright can arise in published edition was first published (s96). literary, artistic and musical works, are there any other works in which copyright can subsist and are The Copyright Amendment (Disability Access and Other Measures) there any works which are excluded from copyright Act 2017 contains changes to copyright duration for unpublished protection? works, which come into effect on 1 January 2019.

Copyright also subsists in “dramatic works”, which include a 1.5 Is there any overlap between copyright and other choreographic show or other dumb show and a scenario or script for intellectual property rights such as design rights and a cinematograph film (ss10(1) and 32(1)) and “subject matter other database rights? than works” (i.e. sound recordings, cinematograph films, television and sound broadcasts and published editions) (ss89 to 92). Yes, there are overlaps with other intellectual property rights. Copyright does not protect: Designs (a) ideas and information, but rather particular forms of their expression that have been reduced to material form; For registered designs, it is not an infringement of copyright in an artistic work to reproduce that work by embodying the (b) data generated solely by computers; and corresponding design in a product (ss74 to 75). For designs that have not been registered, it is not an infringement of the copyright in

the artistic work (other than a building, model of a building or work work is made in pursuance of that agreement. Here the of artistic craftsmanship) to reproduce that work by embodying the commissioner will own the copyright, but the author can corresponding design in a product, where: restrain the doing of an act otherwise for a private or domestic purpose (s35(5)); and (a) the corresponding design has been applied industrially by or with the licence of the copyright owner and has been sold or (b) making a sound recording or a cinematograph film, in which offered for sale; or case the person who commissioned the recording or film will own the copyright (s97(3) and s98(3)). (b) a complete specification or design application is published in Australia that shows a product made to the corresponding Works, sound recordings or cinematograph films made by or under design (s77). the direction or control of the Commonwealth or the State are Patents generally owned by the Commonwealth or the State as the case may

Australia be (s176(2) and s178(2)). Copyright subsists in literary works (including computer programs and compilations of computer programs) (ss10(1), 32). Computer programs can also be the subject of patents (see RPL Central v 2.3 Where a work is created by an employee, how is Commissioner of Patents [2013] FCA 871 cf. Research Affiliates ownership of the copyright determined between the LLC v Commissioner of Patents (2014) 227 FCR 378). employee and the employer? Trade mark An employer will usually own copyright in any literary, dramatic, Works, particularly artistic works that form part of logos, may also artistic or musical work or cinematograph film made by an employee be registered as trade marks under the Trade Marks Act 1995 (Cth). in pursuance of the terms of his or her employment under a contract Databases for service or apprenticeship (s35(6) and s98(5)). An exception arises There are no separate database rights in Australia; databases may where the author is employed by a newspaper, magazine or similar be protected as a literary work, being a compilation (s10(1)). periodical, in which case the author will own the copyright only However, there may be difficulty establishing that copyright insofar as it relates to the reproduction of a literary, dramatic or artistic subsists in a database as a compilation either due to an inability to work in a book or in the form of a hard copy facsimile (s35(4)(c)). identify individual authors (for computer-automated databases) or demonstrating sufficient intellectual effort in relation to the form 2.4 Is there a concept of joint ownership and, if so, what of expression. Copyright protection may also be limited to the rules apply to dealings with a jointly owned work? particular selection and presentation of the data. Yes, a “work of joint authorship” means a work that has been 1.6 Are there any restrictions on the protection for produced by the collaboration of two or more authors and in which copyright works which are made by an industrial the contribution of each author is not separate from the contribution process? of the other author or the contributions of the other authors (s10(1)). In this case, the authors will be co-owners as tenants in common Yes, as set out in question 1.5 above, there are limited exceptions to and neither is entitled to do or authorise an act comprised in the copyright infringement where products have been applied industrially. copyright without the consent of the other owner.

2 Ownership 3 Exploitation

2.1 Who is the first owner of copyright in each of the 3.1 Are there any formalities which apply to the transfer/ works protected (other than where questions 2.2 or assignment of ownership? 2.3 apply)? An assignment of copyright (whether total or partial) must be in Subject to certain exceptions: writing and signed by or on behalf of the assignor (s196(3)). A (a) the author will be the first owner of copyright in a literary, partial assignment of copyright is an assignment of copyright that is dramatic, musical or artistic work (ss35(2)); limited in any way (ss16 and 196(2)). (b) the maker will be the first owner of copyright in a sound recording (s97), cinematograph film (s98), television or 3.2 Are there any formalities required for a copyright sound broadcast (s99); and licence? (c) the publisher will be the first owner of copyright in the published edition of a work (s100). An exclusive licence must be in writing, signed by or on behalf The “maker” can include a performer in relation to sound recordings of the owner or prospective owner of copyright, authorising the and a director in relation to films in some circumstances. licensee, to the exclusion of all other persons, to do an act that the copyright owner would, but for the licence, have the exclusive right to do (s10(1)). 2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the commissioner? 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in The authors of commissioned works or subject matter other than questions 3.4 to 3.6)? works will own copyright in it, except where a person makes, for valuable consideration an agreement for the: The Competition and Consumer Act 2010 (Cth) (CCA) may limit the (a) taking of a photograph for a private or domestic purpose, licence or assignment terms insofar as the CCA prohibits the misuse a painting or drawing of a portrait or an engraving and the of market power and resale price maintenance (which includes

price fixing) (ss46 and 48). Section 51(3) of the CCA provides a on a licence. The Tribunal has the power to make orders as to limited exception from some of the other restrictive trade practices the charges and licence conditions it considers “reasonable in the prohibitions of the CCA for conditions in copyright licences relating circumstances”. to the work or other subject matter in which copyright subsists. Contract law principles can also restrict the enforceability of licence terms, for example, due to illegality. 4 Owners’ Rights

3.4 Which types of copyright work have collective 4.1 What acts involving a copyright work are capable of licensing bodies (please name the relevant bodies)? being restricted by the rights holder?

The main collective licensing bodies in Australia include: The copyright owner of literary, dramatic or musical work has the Australia (a) The Australasian Performing Right Association (APRA): exclusive right to: licenses the public performance and communication to the (a) reproduce the work; public of musical works and lyrics. APRA also manages (b) publish the work; the Australasian Mechanical Copyright Owners’ Society (AMCOS), which licenses the reproduction of musical works (c) perform the work in public; and lyrics. (d) communicate the work to the public; (b) The Australian Record Industry Association (ARIA): licenses (e) make an adaptation of the work; and some reproduction rights for sound recordings. (f) in relation to a work that is an adaptation of the work, any of (c) The Copyright Agency (CAL): administers statutory licences the acts above (s31(1)(a)). for use by educational institutions and government copying. The copyright owner of an artistic work has the exclusive right to: It also offers voluntary licences for text and images (via (a) reproduce the work; Viscopy, the collecting society for the visual arts). (b) publish the work; and (d) The Phonographic Performance Company of Australia (PPCA): licenses public performance and communication to (c) communicate the work to the public (s31(1)(b)). the public of its members’ sound recordings and music videos. The copyright owner of a literary work (other than a computer (e) Screenrights administers statutory licences in broadcasts and program) or a musical or dramatic work can enter into a commercial audiovisual items to educational institutions and governments rental arrangement in respect of the work reproduced in a sound and the retransmission of free-to-air broadcasts. recording (s31(1)(c)). The copyright owner in relation to a computer program has the 3.5 Where there are collective licensing bodies, how are exclusive right to enter into a commercial rental arrangement in they regulated? respect of the program (s31(1)(d)). The copyright owner of a sound recording has the exclusive right to: Collective licensing bodies are regulated by the Australian (a) make a copy of the sound recording; Competition and Consumer Commission (ACCC), which amongst (b) cause the recording to be heard in public; other things, regulates anti-competitive and potential anti- competitive conduct in Australia. Collective licensing bodies, such (c) communicate the recording to the public; and as APRA, Viscopy and CAL have applied for authorisation from the (d) enter into a commercial rental arrangement in respect of the ACCC for their collective licensing arrangements. Authorisation is recording (s85). a process whereby the ACCC may grant protection from legal action The copyright owner of a cinematograph film has the exclusive for conduct that might otherwise breach the CCA. An authorisation right to: can be subject to certain conditions, such as the collective (a) make a copy of the film; licensing body having to implement alternative dispute resolution (b) cause the film, insofar as it consists of visual images, to be procedures. Collective licensing bodies also report annually under seen in public, or insofar as it consists of sounds, to be heard the Collecting Societies Code of Conduct to the Code Reviewer. in public; and Further constraints are placed on their operation by the Copyright (c) communicate the film to the public (s86). Tribunal of Australia (Tribunal) (see question 3.6 below). The copyright owner of a television or sound broadcast has the exclusive right to: 3.6 On what grounds can licence terms offered by a (a) in the case of a television broadcast insofar as it consists collective licensing body be challenged? of visual images – to make a cinematograph film of the broadcast or a copy of such a film; Licence terms offered by a collective licensing body can be (b) in the case of a television or sound broadcast insofar as it challenged in the Tribunal, an independent body established under consists of sounds – to make a sound recording of the s138. The Tribunal has jurisdiction over the terms of statutory broadcast, or a copy of such a recording; and licences under Parts III, IV, VA, VB, VII, VC, VD (including (c) in the case of a television or sound broadcast – to re- determining the amount it consider to be “equitable remuneration”) broadcast it or communicate it to the public otherwise than and voluntary licence schemes offered by collecting societies. by broadcasting it (s87). Sections 154 to 156 contain provisions for the reference by a Further, a copyright owner’s rights can be infringed by other acts licensor or would be licensee (or representative organisation) such as importation for sale or hire (ss37 and 102) or sale and other of licence scheme to the Tribunal. The Tribunal has jurisdiction dealings (ss38 and 103) of infringing works and other subject matter. to make orders confirming or varying the scheme or substituting There are also provisions prohibiting the circumvention of an access another scheme proposed by the parties, as it considers “reasonable control technological protection measure (s132APC) and removing in the circumstances”. Section 157 provides for various applications or altering electronic rights management information (s132AQ). to be made the Tribunal, where there has been a failure to agree

copyright. In determining whether someone is liable for secondary 4.2 Are there any ancillary rights related to copyright, infringement, the following matters must be taken into account: such as moral rights, and if so what do they protect, (a) the extent (if any), of the person’s power to prevent the doing and can they be waived or assigned? of the act; (b) the nature of any relationship existing between the person Authors and performers of literary, dramatic, musical or artistic and the person who did the act concerned; and works and cinematograph films also have moral rights (Part IX), which entitle them to: (c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person (a) be attributed as the author or performer; (Divisions 2 and 2A complied with any relevant industry codes of practice (ss36 of Part IX); and 101).

Australia (b) not have their authorship or performership of a work falsely attributed (Divisions 3 and 3A of Part IX); and 5.4 Are there any general or specific exceptions which can (c) not have their work or performance subjected to derogatory be relied upon as a defence to a claim of infringement? treatment in a way that is prejudicial to the author’s or performer’s reputation (Divisions 4 and 4A of Part IX). There are no general “fair use” style exceptions in Australia Authors (ss195AW and 195AWA) and performers (s195AXJ) can presently. However, specific “fair dealing” exceptions exist for consent to acts or omissions in writing in relation to specified works dealings with works and other subject matter for the following or performances or present or future works or performances. purposes: Part XIA sets out performers’ protections under which performers (a) research or study (ss40 and 103C); can take action for the unauthorised use of their performances (b) criticism or review (ss41 and 103A); (s248J). (c) parody or satire (ss41A and 103AA); (d) reporting news (ss42 and 103B); 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works (e) judicial proceedings or professional advice (ss43 and 4); and which have been put on the market with his consent? (f) access by persons with a disability (s113E). There are also other specific exceptions to doing certain acts in The circumstances in which a copyright owner is unable to restrain relation to certain works or other subject matter, such as reproducing subsequent dealings and works put on the market with his or her works in books, newspapers and periodical publications in a consent include the importation of sound recordings (s112D), the different form for private use (s43C), copying sound recordings for importation and sale of books in limited circumstances (ss112A and private and domestic use (s109A), use by organisations assisting 44A), non-infringing accessories (e.g. labels, packaging and written a person with a disability (s113F) and preservation or research by or audio-visual instructions) to articles (s44C) and the importation library or archives (s113H). and sale of copies of computer programs (s44E).

5.5 Are interim or permanent injunctions available? 5 Copyright Enforcement Yes, injunctions (subject to such terms, if any, as the court thinks fit) are available under the Act (s115(2)). 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative The Federal Court of Australia and Federal Circuit Court of Australia to civil actions? can order interim and/or permanent injunctions as a remedy to copyright infringement (s23 Federal Court of Australia Act 1976 No, with the exception of the Commonwealth Director of Public (Cth) and s15 Federal Circuit Court of Australia Act 1999). State Prosecutions, supported by the Australian Federal Police, which and Territory Supreme Courts exercising federal jurisdiction is responsible for prosecuting criminal offences under the Act. (s131A) have similar powers under their enabling Acts. Notices of Objection can be lodged allowing Customs, under certain circumstances, to seize goods that infringe copyright. 5.6 On what basis are damages or an account of profits calculated? 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? Applicants (except in the case where innocent infringement is made out under s115(3)) can elect between damages or an account of Except as against the copyright owner, an exclusive licensee has profits (s115(2)). the same rights of action as he or she would have, and is entitled Damages are calculated to compensate the copyright owner for to the same remedies, as if the licence had been an assignment, and the infringement or to put them in the position they would have those rights and remedies are concurrent with those of the copyright been had there been no infringement. The measure of damages is owner (s119(a) and (b)). expressed as the depreciation of the value of the copyright as a chose in action. In practice, two common methods for assessing damages are used (see TS & B Retail Systems Pty Ltd v 3fold Resources Pty 5.3 Can an action be brought against ‘secondary’ Ltd (No 3) [2007] 158 FCR 444). The first being the licence fee (or infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary royalty) method, whereby the applicant recovers an amount equal to infringement? the fee that would have been reasonably charged for the use of the copyright work. The second method is the lost net profit method, An action can be brought against a “secondary” infringer who where the applicant can demonstrate lost sales to the respondent as a has authorised the doing in Australia of any act comprised in the result of the infringement and quantify the loss suffered.

In contrast, an account of profits is calculated based on the profit the infringer has made from the infringement. 6.2 What is the threshold for criminal liability and what are the potential sanctions? Courts also have a discretion to award additional damages having regard to specified factors under s115(4). These factors include The threshold for criminal liability depends on the tier of the offence the flagrancy of the infringement and the need to deter similar and was drafted to be consistent with the fault element terminology infringements of copyright. used in the Criminal Code Act 1995 (Cth) and reflect the moral culpability of a particular offence (see the Explanatory Memorandum 5.7 What are the typical costs of infringement to the Copyright Amendment Bill 2006 (Cth)). For indictable proceedings and how long do they take? offences, the highest fault threshold applies. For summary offences,

fault elements of negligence or recklessness are usually included. For Australia Typical costs of infringement proceedings will vary according to strict liability offences, no fault elements need to be proven. the complexity of the case, whether any expert evidence is required, For indictable offences, depending on the offence, potential the fees of the legal representatives engaged (both solicitors and sanctions up to 850 penalty units ($178,500) for an aggravated barristers), and any document production permitted by the Court. offence under s132AK (or five times that amount for a corporation) Such costs may range from the tens to hundreds of thousands to or imprisonment up to five years, or both, and for summary offences millions. Infringement proceedings may take more than a year to be depending on the offence, up to 120 penalty units ($25,200) or heard, depending on the availability of the judicial officers, as well imprisonment for up to two years, or both, and for strict liability as the legal representatives of the parties involved. offences, 60 penalty units ($12,600).

5.8 Is there a right of appeal from a first instance judgment and if so what are the grounds on which an 7 Current Developments appeal may be brought?

7.1 Have there been, or are there anticipated, any significant For proceedings commenced in the Federal Court of Australia, a legislative changes or case law developments? first instance judgment may be appealed to the Full Court (s25(1) Federal Court of Australia Act 1976 (Cth)) on the basis of an error The Copyright Amendment (Disability Access and Other Measures) of law. If the proceedings are brought in the Federal Circuit Court, Act 2017 comes into effect in stages. Parts that were in effect from which deals with shorter and simpler matters in federal jurisdictions, 30 June 2017 include changes to statutory licences for educational a right of appeal exists from the first instance judgment to a single institutions and copyright exceptions to streamline the copyright judge of the Federal Court of Australia (s25(1AA) Federal Court of regime for people with a disability, educational institutions and Australia Act 1976 (Cth)), which can be brought on the grounds of libraries. Changes in relation to copyright duration come into effect an error law. For State and Territory Supreme Courts, an appeal may on 1 January 2019. be brought to the Federal Court of Australia or by special leave of the High Court of Australia, to the High Court of Australia (s131B). Site blocking legislation was introduced in 2015. Section 115A enables the Federal Court of Australia, on application by a copyright owner, to grant an injunction requiring a carriage service provider to 5.9 What is the period in which an action must be take reasonable steps to disable access to an online location where: commenced? (a) the carriage service provider provides access to the online location outside Australia; An action must be commenced within six years from the time the (b) the online location infringes, or facilitates the infringement infringement took place, the relevant act was done or the infringing of, the copyright; and copy or device was made (s134). (c) the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright (whether or not in 6 Criminal Offences Australia). The Federal Court of Australia has granted injunctions in three site blocking applications in 2017 requiring the major Australian ISPs to 6.1 Are there any criminal offences relating to copyright block numerous torrent sites. infringement? The Department of Communications and the Arts commissioned an economic analysis of certain recommendations made by the Yes. In Part V, Division 5 of the Act, there are indictable, summary Australian Law Reform Commission in its 2013 report Copyright and strict liability criminal offences for substantial infringement and the Digital Economy, namely the financial effect on both on a commercial scale, making and dealing with infringing copies Australian copyright rights holders and copyright user groups of the commercially, making or possessing devices for making infringing options to either introduce a “fair use” exception or, alternatively, copies, airing of works, sound recordings and films publicly, to consolidate and expand the current fair dealing exceptions. The circumventing access control technological protection measures, report was favourable to the adoption of a “fair use” exception. manufacturing and providing circumvention devices and removing or altering electronic rights management information. Part VAA, The Productivity Commission (PC) published its final report after Division 3 contains offences relating to unauthorised access to and a 12-month public inquiry examining Australia’s entire intellectual dealing with encoded broadcasts. Part XIA, Division 3 contains property system and its effect on investment, competition, trade, indictable, summary and strict liability criminal offences for innovation and consumer welfare. The PC’s final report made a unauthorised recording, copying and dealing with unauthorised number of recommendations, including the introduction of a broad recordings of performances. and open-ended “fair use” exception, the repeal of parallel import restrictions for books, strengthening the governance, reporting and transparency arrangements for collecting societies, enhancing

the role of the Federal Circuit Court by introducing a dedicated and competitively-priced access to copyright works is the most IP list with caps on costs and damages, and repealing the s51(3) efficient and effective way to reduce online copyright infringement, restrictive trade practices exception in the CCA. “Fair use” remains including that: a controversial subject and there is no proposed amendment to (a) the safe harbour scheme be expanded to cover all providers of the Act at the time of writing. On 25 August 2017, the Australian online services (such as cloud computing firms) and not just Government published its response to the PC’s final report, which carriage service providers. The Government has announced included noting the “fair use” recommendation and that it will that supports this recommendation in principle and is publicly consult on more flexible copyright exceptions in early undertaking further consultation; 2018. (b) consumers be permitted to circumvent technological protection measures (TPM) for legitimate uses of copyright

Australia material. The Government has announced that it supports 7.2 Are there any particularly noteworthy issues around this recommendation in principle; and the application and enforcement of copyright in relation to digital content (for example, when a work (c) it be made clear that it is not an infringement for consumers is deemed to be made available to the public online, to circumvent geoblocking technology. The Government hyperlinking, etc.)? has noted this recommendation and will review whether new TPM exceptions should be created to prescribe particular uses of copyright material prevented by geoblocking. The PC’s final report also made several recommendations in relation to greater access to digital content under the Act, finding that timely The PC’s recommendations are also controversial in Australia.

John Fairbairn Emily Hawcroft MinterEllison MinterEllison Governor Macquarie Tower 1 Farrer Place Governor Macquarie Tower 1 Farrer Place Sydney NSW 2000 Sydney NSW 2000 Australia Australia

Tel: +61 2 9921 4590 Tel: +61 2 9921 4269 Fax: +61 2 9921 8123 Fax: +61 2 9921 8123 Email: [email protected] Email: [email protected] URL: www.minterellison.com URL: www.minterellison.com

John is a partner in MinterEllison’s intellectual property team. He Emily is a senior associate in MinterEllison’s intellectual property Australia specialises in resolving complex intellectual property (IP) disputes, team specialising in intellectual property, media, entertainment and particularly in the media and telecommunications sector. This often technology law. brings him in contact with IP and regulatory issues arising out of Emily has over 10 years’ experience advising and representing clients new media platforms; online copyright piracy; and industry licensing in contentious and non-contentious intellectual property matters schemes and disputes. involving clients in the broadcasting, fashion, music, film, publishing, John’s work also involves handling matters involving privacy; biotech consumer goods, technology and pharmaceutical industries. Emily and computer technology; copy clearance and Australian Consumer has also assisted clients with advice on intellectual property licensing Law disputes; and trademarks, including portfolio management and and protection (anti-counterfeiting), pharmaceutical regulation, media enforcement. regulation and classification, particularly in relation to newer platforms such as online and mobile content services. John has: Emily passed the Californian Bar Exam in February 2017 and ■■ appeared in recent test cases in the Federal Court of Australia, has completed a Masters of Laws at the University of New South aiming to block internet pirate websites; Wales with a specialisation in Media & Technology Law (placed on ■■ represented a number of industries – including subscription 2013 Dean’s List of Excellence for Intellectual Property Law and for television, free-to-air television, online radio, internet video on Intellectual Property Licensing and Commercialisation in 2015). Emily demand and digital download services – in negotiations and was also a runner-up for the Intellectual Property Society of Australia disputes with collecting societies; and New Zealand Prize 2011 and a winner of the Arts Law Centre Pro Bono Print Commission Award for 2010 and 2013. ■■ successfully acted for various organisations, including pharmaceutical and telecommunications companies, in misleading and deceptive conduct disputes in the Federal Court of Australia; ■■ managed a number of significant global trademark portfolios, including acquiring and protecting trademark rights in Australia; and ■■ provided pro bono assistance to a number of organisations, including referrals from the Arts Law Centre of Australia.

MinterEllison is an international law firm, headquartered in Australia and regarded as one of the Asia-Pacific’s premier law firms. Ourteams collaborate across Australia, New Zealand, Asia and the UK to deliver exceptional outcomes. We have a clear goal – to be our clients’ best partner. We put the client at the centre of everything we do and partner with them to deliver truly innovative solutions. We also think beyond the law, offering clients advisers who are multi-disciplinary and industry-facing to help them realise their strategic goals, grasp business opportunities and create value for their stakeholders.

Brazil Giovanna M. Sgaria de Morais Moulin

Daniel Legal & IP Strategy Hannah Vitória M. Fernandes

carry out mental acts, games or businesses, (iii) blank forms to be 1 Copyright Subsistence completed with any kind of information, whether scientific or not, as well as their instructions, (iv) texts of treaties and conventions, 1.1 What are the requirements for copyright to subsist in laws, decrees, regulations, court decisions and other official acts, (v) a work? information of common use such as calendars, agendas, registries or captions, (vi) isolated names and titles, and (vii) the industrial or First of all, it is important to clarify that Brazil is a civil law country, commercial use of ideas contained in the works. so protection is given both to author’s rights and the neighbouring rights such as defined in article 1srt of Brazilian Copyright Law 1.3 Is there a system for registration of copyright and if (Law nº 9,610). so what is the effect of registration? Copyright protects works of literature, art and computer programs. Only works representing a certain individuality and which contain a Copyright protection is inherent to the creation of the work. Hence, certain degree of creativity may be protected by copyright law; such the registration of the work is optional, and can be done before the requirement is referred to in the legal text as a “creation from the public offices as set forth in article 19 of the Copyright Law. spirit”, which is a vague legal concept where boundaries cannot be With the exception of computer programs, which can be registered clearly determined. Thus, once a work attains the necessary level of at the BPTO (Brazilian Patent and Trademark Office), intellectual creativity, it is protected by copyright. works can be registered before public offices, such as the National Library (“Biblioteca Nacional”), School of Arts (“Escola de Belas 1.2 On the presumption that copyright can arise in Artes”) and the School of Music (“Escola de Música”), each literary, artistic and musical works, are there any institution has its own procedure and related costs. It is common to other works in which copyright can subsist and are proceed with the filing of the work before the National Library, and there any works which are excluded from copyright for this purpose, a few documents are required, as well as payment protection? of official fees. Regarding computer programs, the owner must present sufficient Brazilian Copyright Law states that copyright can arise in data that demonstrates that the software is an independent work. works such as (i) texts of literary, artistic or scientific works, (ii) lectures, speeches, sermons and other works of the same nature, (iii) dramatic works with or without accompanying music, (iv) 1.4 What is the duration of copyright protection? Does choreographic works and pantomimes, if their scenic performance this vary depending on the type of work? can be fixed in writing or any other form, (v) musical compositions with or without accompanying words, (vi) audiovisual works, Copyright is vested on moral and property rights, which both arise with or without accompanying sound, including cinematographic from the creation of the work. The term of such rights may vary. works, (vii) photographic works and works produced by a In this regard, it is important to highlight that the moral rights of process similar to photography, (viii) works of drawing, painting, the author are permanent and some of them are transmitted to the engraving, sculpture, lithography and kinetic arts, (ix) illustrations, successors under the terms of article 24, paragraph 1 of the Brazilian geographical maps and other works of the same nature, (x) plans, Copyright Law. sketches, and works of fine arts concerning geography, engineering, On the other hand, property rights, including posthumous works, topography, architecture, landscaping, scenography and science, will have a duration of seventy (70) years counted from January (xi) adaptations, translations and other transformations of original 1st of the year subsequent to the year of the author’s death. In the works presented as new intellectual creations, (xii) computer case of indivisible co-authored works, such period will be counted programs, and (xiii) collections or compilations, anthologies, as from the death of the last surviving co-author. The rights of the encyclopaedias, dictionaries, databases and other works which, in joint author who dies without heirs shall be added to the rights of the view of the selection, organisation or arrangement of their contents, surviving authors, as set forth in article 42 of the abovementioned constitute intellectual creations. law. On the other hand, there are a number of exclusions, which are: Anonymous works or works published under pseudonyms will also (i) ideas, normative procedures, systems, methods, projects or be protected for seventy (70) years counted as of January 1st of the mathematical concepts as such, (ii) schemes, plans or rules to year subsequent to the first publication of the work.

Regarding audiovisual and photographic works, term is similar as that of anonymous works; the term of protection is counted from 2.3 Where a work is created by an employee, how is January 1st of the subsequent year to that of the first disclosure ownership of the copyright determined between the employee and the employer? (Article 44 of the same law). Therefore, after expiry of the protection term of the property rights of the authorthe intellectual works will fall into public domain and may be freely used by third parties. There are no express rules in Brazilian Copyright Law addressing employees’ creations. While the issue is controversial, it is Finally, works from authors who have left no successors, as well understood that there is no automatic assignment of rights except as those of unknown authors, will automatically fall into public for copyright for computer programs. Employers may establish domain, as determined by article 45 of the Copyright Law. copyright assignment both by means of employment contract or Brazil separate assignment. 1.5 Is there any overlap between copyright and other intellectual property rights such as design rights and database rights? 2.4 Is there a concept of joint ownership and, if so, what rules apply to dealings with a jointly owned work?

Copyright cannot be used to restrict the work’s functionality. Yes, joint ownership is possible. Any co-author has the right to Works that can be protected by copyright may express an idea, challenge the indication or mention of his/her name on a collective a feeling or a concept free from a function matter. In this sense, work, without any prejudice of his/her right to receive the agreed copyright frequently overlaps with other intellectual property rights, remuneration. especially with trademarks and registered industrial design rights. It is common that a work is both protected as a trademark and as Moreover, unless otherwise agreed, the property rights of the a work, i.e., depending on what is intended to be protected, the collective work will belong to its organiser. purpose and scope of the protection available under these different The general rules of co-ownership shall be stated in a specific sets of rules may differ significantly. contract between the organiser and the participant, and include the time for delivery of the work, the remuneration and/or any other specific matters. 1.6 Are there any restrictions on the protection for copyright works which are made by an industrial process? 3 Exploitation The issue is still somewhat controversial in our courts, but case law has in general terms afforded copyright protection for products 3.1 Are there any formalities which apply to the transfer/ made by an industrial process, such as bags and purses, under the assignment of ownership? argument that the means of reproduction of the work does not affect in any way the protection granted by copyright. The author’s property rights can be transferable or inheritable. In accordance with article 50, total or partial assignment of authors’ rights must be executed in writing and shall be presumed onerous. 2 Ownership Moreover, the assignment must indicate the essential elements, such as, subject matter, conditions of exploitation, its terms, place, 2.1 Who is the first owner of copyright in each of the works etc. protected (other than where questions 2.2 or 2.3 apply)? 3.2 Are there any formalities required for a copyright The first owner of copyright is the individual who created the work. licence? The copyright may be divided into two rights (i) moral rights, and (ii) property rights. Property rights can be assigned to third parties, As indicated above, considering the wording of article 50 of including companies. Moral rights will always be inherent to the Brazilian Copyright Law, licence agreements must be executed in author. writing in clear language and must detail the rights and obligations between the parties. Form of disclosure, extension of adaptation, 2.2 Where a work is commissioned, how is ownership of publication and use, as well as the respective conditions of time, the copyright determined between the author and the place and price, are some of the subjects that should be covered in commissioner? the agreement.

Although there is no legal provision in this regard in Brazilian 3.3 Are there any laws which limit the licence terms Copyright Law, the parties can execute an agreement in order to parties may agree (other than as addressed in establish that property rights are transferred to the commissioner. questions 3.4 to 3.6)? The moral rights, however, will always remain with the author. In computer programs, there is an important reversal of this Moral rights are inalienable and cannot be subject of an agreement. presumption, whereby if the computer program is created by an employee in the exercise of his functions, the rights therein 3.4 Which types of copyright work have collective shall belong to the intended commissioner, unless it is stipulated licensing bodies (please name the relevant bodies)? otherwise in a contract between the parties. In Brazil, the most important collective licensing body is the Central Collection and Distribution Office (“ECAD”), which is a private

non-profit institution. Its purpose is to centralise the collection and Moral rights are non-transferable, cannot be renounced and do not distribution of public musical execution rights. This institution is lapse. After the death of the author, they can be claimed by the sustained by seven non-profit associations mostly connected with author’s heir until the work enters the public domain. Furthermore, musicians and performers. the author is entitled to be named and credited as the author for as long as he/she wants.

3.5 Where there are collective licensing bodies, how are they regulated? 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works The collective licensing bodies are regulated by Laws 9,610/98 and which have been put on the market with his consent? Brazil 12,853/13. The “ECAD”, mentioned above, was established by Law n. 5,988/73. Although not expressly recognised under Brazilian Law, the doctrine recognises the principle of exhaustion of rights as applicable in such case. In this sense, after the sale of the creation, the author transfers 3.6 On what grounds can licence terms offered by a its property rights, so that he/she lost his/her rights related to the collective licensing body be challenged? “mechanichum corpus” and, thereafter, are unable to stop any usage in this regard. The licence terms can be challenged in court under a few circumstances, especially if the events and the terms are not consistent with the law and/or with the agreement executed between the parties. 5 Copyright Enforcement

4 Owners’ Rights 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to civil actions? 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? In Brazil, there are currently two police departments specialised in IP crimes (located in the cities of Rio de Janeiro and Recife). In terms of property, copyright protection provides the author with Copyright violation is a crime foreseen in the Brazilian Criminal the exclusive right to use, benefit and dispose of his/her work. Code and, depending on the type of infringement, criminal action Furthermore, his/her prior and express consent is required: against the infringer is in the public interest. This means that (i) to reproduce (partial or total, by writing, drawing and/or criminal action may be filed by the Public Prosecutor Office even if other means); no prior complaint is filed by the IP rights holder. (ii) to publish; In addition, the Brazilian Customs Regulation provides that customs (iii) for adaptation, musical arrangement or any other authorities may seize suspicious products (that may infringe third transformation; parties’ copyrights and/or trademarks) at ports and airports ex- (iv) to translate into any language; officio. However, for these products to remain seized and be (v) to incorporate in a phonogram or audiovisual production; subsequently destroyed, the IP owner has to submit an affidavit to customs confirming that the goods are counterfeit (some customs (vi) to broadcast; units require a court order to this end). (vii) to distribute, when this is not part of an agreement signed between the author and third parties for the use or exploitation of the work; 5.2 Other than the copyright owner, can anyone else bring (viii) to direct or indirect use of the literary, artistic and scientific a claim for infringement of the copyright in a work? works (such as performance, recitals, etc.); and (ix) to use as a whole or in part, including “the power to disclose, Other than the owner, the “collective management bodies” publish and economically exploit it in any manner, either mentioned in the answers to questions 3.4 and 3.5 also have directly or indirectly”. legal capacity and legitimacy to intervene in the enforcement of Moral rights can be enforced by the intellectual creator of the work copyright, especially in the civil field. (whether or not he or she is also the owner of the property rights). In the criminal sphere, depending on the type of copyright infringement (basically if the infringer has the aim to gain profit), anyone can file a complaint at the police department as the criminal 4.2 Are there any ancillary rights related to copyright, action is in the public interest. such as moral rights, and if so what do they protect, and can they be waived or assigned? 5.3 Can an action be brought against ‘secondary’ Yes. Moral rights arise from the materialisation of the work and infringers as well as primary infringers and, if so, last throughout the existence thereof. Such rights can also be on what basis can someone be liable for secondary transmitted to his/her successors. These moral rights are destined to infringement? protect the author’s personality among other rights listed in article 24 of the Copyright Law. In accordance with Brazilian Law, ‘secondary infringers’ can also be civilly and penally liable by infringing copyright or neighbouring In this regard, even if the author has assigned his/her property rights, rights. he/she will always have the right to claim against third parties who violate their moral rights. This includes any modification on his/ In the civil sphere, secondary liability could exist if you can prove her creation that may affect the honour and reputation of the author. a strong link between the violation of the right and those additional individuals, as well as the existence of negligence or fault.

The Brazilian Criminal Code expressly provides that it is a crime to import, distribute, commercialise and/or maintain in stock products 5.8 Is there a right of appeal from a first instance that infringe third parties’ copyrights. judgment and if so what are the grounds on which an appeal may be brought?

5.4 Are there any general or specific exceptions which Decisions on the merits from the District Judges (first instance) can can be relied upon as a defence to a claim of be appealed to the State Court of Appeals, where they will be judged infringement? by a panel of three Justices. In this appeal, the party may bring any argument to challenge the District Judge’s decision. However, The defence strategy shall be analysed on a case-by-case basis. there is a restriction for new documents and arguments that were Brazil However, is important to verify if the work is or is not in the public not submitted before the judgment of the case by the District Judge. domain. Moreover, in a court action, the plaintiff usually must From the decision issued by the Appellate Court, it is also possible prove that he/she is the owner of that work and this shall be explored to file special appeal to the Superior Court of Justice and/or an by the counterpart. Extraordinary Appeal to the Supreme Federal Court. However, the grounds on which these appeals may be brought are limited 5.5 Are interim or permanent injunctions available? to violation of Federal rules (for special appeal) and violation of constitutional rules (for extraordinary appeal). The valuation of The Brazilian courts are receptive to grant preliminary injunction facts and evidence are not allowed in these instances. orders against all infringers (primary and/or secondary), in case the plaintiff demonstrates his/her rights and the urgency of this measure. 5.9 What is the period in which an action must be In Brazil, the preliminary injunction request is not presented commenced? in a separate court action, but is one of the claims placed at the infringement action. In accordance with our Brazilian Civil Code from 2002, in the case of damages, the limitation period is three years from the date when 5.6 On what basis are damages or an account of profits the injured party becomes aware of the infringement. However, as calculated? urgency is a mandatory requirement for the granting of preliminary injunctions, if the party is interested in this option, it is highly In Brazilian Law, there is no provision for punitive damages. advisable to file the court action immediately after taking notice of However, considering the extension of the violation, a judge can bid the infringement. a value considering the whole situation. On the other hand, losses and damages are totally in accordance 6 Criminal Offences with our law; in this regard, the main idea of Brazilian civil law is to restore the situation back to before the infringement occurred. Compensation, including both the damage caused and the benefits 6.1 Are there any criminal offences relating to copyright that the injured party lost because of the infringement, covering all infringement? the profits is the main idea of damages. Thus, article 103 of Brazilian Copyright Law considers the profit and the revenues obtained by the Yes. Brazilian Law protects the author’s rights and the neighbouring infringer as the amount to be compensated. Nevertheless, if it is not rights, as set forth in article 184 of the Brazilian Criminal Code. possible to apply the abovementioned criteria, an amount can be estimated based at least on the remuneration that would have been received if the infringer had requested authorisation to use the rights 6.2 What is the threshold for criminal liability and what are the potential sanctions? in question (the criterion of hypothetical royalties).

To be convicted by a criminal judge, the infringer must have acted 5.7 What are the typical costs of infringement precisely in accordance with article 184 of the Criminal Code (due proceedings and how long do they take? to the principle of legality). The criminal liability may result from an intended act of the infringer or a negligent act (infringer’s duty The timeframe of an infringement action is closely connected of care). with the complexity of the case and especially the court where As mentioned in question 6.1, an author’s rights and neighbouring it is prosecuted. For example, Rio de Janeiro’s state has district rights are protected by the Criminal Code and the penalties may courts specialised in copyrights (among other selected specialties). range from three months to four years of prison, without prejudice Therefore, we estimate that a regular case of copyright infringement of a fine. takes between one and three years to be decided (on the merits) by a District Judge. Regarding the typical costs, besides lawyers’ fees, there are official 7 Current Developments taxes that are usually connected with the value given by the Plaintiff to the case (and this also varies from one court to another), and a 7.1 Have there been, or are there anticipated, any court’s bond that is due by any foreign company that wishes to file significant legislative changes or case law court actions in Brazil to guarantee the payment of damages (this developments? amount is fully recovered by the company if it wins the case). We can roughly estimate that a company will expend between US$ The Federal Supreme Court (“STF”) recently declared the 10,000 and US$ 30,000 on a copyright litigation until there is constitutionality of law n. 12853/2013 which directly affects the decision on the merits from the District Judge. management, collection and distribution of the amounts related to copyright in Brazil.

The new ruling regarding the payment of royalties caused the filing On the other hand, Justice Luiz Fux, the reporting Justice of the of two direct actions seeking the unconstitutionality of the new case, understood that, because the subject matter involves both law (ADI 5062 and ADI 5065), questioning the establishment of copyright owners and users, there is consequently the need for a a public entity to control the collection of royalties in the musical greater involvement of the State, with the intention of promoting field. Prior to 2013, a single private entity was solely responsible trustworthy practices regarding royalty payments. The main role of for the collection and the payment of royalties to those entitled to this entity would be to guarantee transparency in a process that, over receive the relevant property rights, for the public exhibition or the years, has become cloudier rather than clearer. broadcast of music. Independent from the current legal controversy in Brazil, there can The controversy raised by the abovementioned actions leads us to be no doubt that copyright is a matter that tends to generate a certain

Brazil consider the central purpose of any copyright legislation: to stimulate degree of conflict. This is especially true in a digital information intellectual production by protecting its release to the public. scenario, where millennials and other actors/situations move quicker Without a functional mechanism of protection and a fair distribution than the law can control. of the compensation to those who form part of the intellectual To those who use legal devices to guarantee the interests of others, production, humanity loses its most important intangible asset. there is no other choice but to monitor the effects that the new law Analysing a variety of foreign legal systems, it is noteworthy that has on copyright management in Brazil. there is no standard agreement on this subject; some practices allow a strong interference from the public sector, whereas others relegate 7.2 Are there any particularly noteworthy issues around the management of royalties exclusively to private suppliers. the application and enforcement of copyright in Considering the new language of the law, it appears that the Brazilian relation to digital content (for example, when a work is deemed to be made available to the public online, system is migrating to an understanding whereby a public entity will hyperlinking, etc.)? have powers to act in areas that used to be controlled exclusively by private associations. All the relevant issues have been addressed herein and we have no The plaintiffs of the actions argue that Law n. 12,853/13 is a form further comments to make. of government interference in the private interest. They believe that there is no public interest to justify this interference in copyright management. Acknowledgment Justice Marco Aurélio, who rendered the only vote in favour of The authors would like to acknowledge and thank André Oliveira, the actions, has a similar opinion. He believes that the new text Fernando Casares and Rafael Rocha for their assistance in the violates article 5, XVIII, of the Federal Constitution, by indicating preparation of this chapter. André is partner and head of the government interference in the operation of the associations. Litigation department, and Fernando and Rafael are partners in the Firm.

Giovanna M. Sgaria de Morais Hannah Vitória M. Fernandes Moulin Daniel Legal & IP Strategy rd Daniel Legal & IP Strategy Av. República do Chile 230 - 3 floor Av. República do Chile 230 - 3rd floor Centro, Rio de Janeiro - RJ Centro, Rio de Janeiro - RJ 20031-170 20031-170 Brazil Brazil Tel: +55 2102 4430 Tel: +55 2102 4426 Email: [email protected] Email: [email protected] URL: www.daniel-ip.com/en

URL: www.daniel-ip.com/en Brazil Specialised in Corporate Law, Giovanna joined Daniel Legal & IP Hannah has worked in intellectual property for more than 12 years Strategy in April 2015 as a Corporate and Contractual attorney. and is currently a partner and the head of licensing at Daniel Legal Her experiences cover various aspects of intellectual property with & IP Strategy, where she has built an internationally recognised emphasis on legal consultancy related to corporate and contracts, practice helping foreign companies protect and grow their business and especially transactions involving copyrights, software, commercial footprint in Brazil. Her practice spans the transactional work in agreements, franchising, technology transfer, trademarks, trade both intellectual property and corporate law, with an emphasis on secrets and confidential information. Giovanna received her JD, with franchising, distribution, agency agreements, technology transfer, highest honours, from FDV – Faculdades de Direito de Vitoria and copyright, industrial designs, patents, R&D, and trademark licensing. her Corporate Law LL.M. from IBMEC. Giovanna was also Editorial Hannah received her JD, with highest honours, from Rio de Janeiro Advisory Counsellor of the Electronic Law Journal “Panóptica” from State University and her Corporate Law LL.M. from IBMEC. She is a 2007 until 2013. member of the Brazilian Bar Association, Licensing Executives Society of Brazil, the Licensing Executives Society International, the Brazilian Franchise Association, and International Trademark Association (INTA).

Daniel Legal & IP Strategy is a top-tier Brazilian law firm specialised in protecting your intellectual property here in Brazil and throughout LATAM. As our name suggests, Daniel balances aggressive traditional legal remedies with new consulting and business services to provide you with the customised, modern, and comprehensive protection you need to establish, continue, or expand your business operations here. With our business focus and entrepreneurial approach, we provide services that add true value to your business, and we pride ourselves on differentiated client communication and service. Daniel’s partners are well-known and published experts in their respective fields with broad experience in Brazil and internationally. With this depth and diversity of experience, we build teams that deliver innovative solutions and measured value. With flawless ethics, we build lasting and trusting relationships across our entire portfolio of clients – from the traditional Fortune 500 to the determined start-up.

Canada

Bereskin & Parr LLP Jill Jarvis-Tonus

on a defence of “innocent infringement” which, if successful, limits 1 Copyright Subsistence an owner’s remedy to an injunction.

1.1 What are the requirements for copyright to subsist in 1.4 What is the duration of copyright protection? Does a work? this vary depending on the type of work?

Copyright exists automatically in every original literary, dramatic, For most works, copyright in Canada lasts the lives of all author(s) musical and artistic work, published or unpublished, once the work plus 50 years following the end of the calendar year in which the last is in a fixed form. The author must be a citizen or resident of Canada author dies. Where the author is unknown, copyright exists for the or any other treaty country (i.e. Berne Convention, WCT or UCC shorter of two periods: the remainder of the calendar year of the first country or WTO member) on the date of making the work. publication plus 50 years; or the remainder of the calendar year of Specific works included in these broad categories are non- the making of the work plus 75 years. If during any of these terms, exhaustive. For example, literary works include everything from the author becomes known, the copyright will then exist for 50 years books to computer software code, packaging text and advertising. from the end of the calendar year in which the author dies. Artistic works include paintings and etchings but also logos, charts, Copyright in works owned by the Crown subsists for 50 years photographs and architectural and technical drawings. following the end of the calendar year in which that work was first A work must be original, meaning it was not copied from another published. work and the author needed to have exercised some skill, and Copyright in a performer’s performance subsists for 50 years from judgment in creating it. the end of the calendar year in which the performance occurs unless, during that term, the performance is fixed on a sound recording, 1.2 On the presumption that copyright can arise in in which case, copyright subsists for 50 years from the end of the literary, artistic and musical works, are there any calendar year in which the fixation occurs; or, if during the term, other works in which copyright can subsist and are that sound recording is published, the copyright will subsist until the there any works which are excluded from copyright earlier of the end of the calendar year in which the sound recording protection? was published plus 70 years or 100 years after the end of the calendar year in which the fixation occurred. Neighbouring right copyrights also automatically exist in sound Copyright in a sound recording subsists for 50 years from the end recordings, performers’ performances and communications signals, of the calendar year in which it was recorded or, if during that term, provided that the makers of the sound recordings, the performers and the sound recording is published the copyright subsists until the the broadcasters meet certain nationality or territorial requirements. earlier of 70 years from the end of the calendar year in which first Copyright also exists in original compilations of literary, artistic, publication occurred or the end of 100 years from the end of the year dramatic, and musical works and of data. These copyrights protect in which the sound recording was made. an author’s skill and judgment in the selection or arrangement of the works or data. 1.5 Is there any overlap between copyright and other Copyright protection will not be extended to facts and information, intellectual property rights such as design rights and ideas, concepts, schemes, formulas, algorithms, or methods or database rights? principles of manufacture or construction. There is no separate statutory protection for databases in Canada. 1.3 Is there a system for registration of copyright and if Original compilations of data are protected under the Copyright Act so what is the effect of registration? (“the Act”). Under the Act, where a design is applied to a useful article (i.e. It is possible, but not mandatory, to register copyrights. Benefits of an article that has some function other than merely serving as a registration are: (a) the registration certificate is considered prima substrate for artistic or literary matter) and that article is reproduced facie evidence of copyright subsistence in the work and copyright in more than 50 copies, the copyright in that design on the article ownership; and (b) if the work is registered an infringer cannot rely becomes unenforceable and the only protection for the article will be through registration under the Industrial Design Act.

There are exceptions to this rule. The copyright will remain enforceable in (a) graphic or photographic representations applied to 2.4 Is there a concept of joint ownership and, if so, what the face of an article, (b) a trade mark or label, (c) woven or knitted rules apply to dealings with a jointly owned work? materials or ones suitable for piece goods, surface coverings or making clothing, (d) architectural works/models of a building, (e) a The concept of joint authorship/ownership exists under the Act. A representation of a real or fictitious being, event or place applied to the work of joint authorship is created where there is a collaboration of article, or (f) articles sold as a set, where less than 50 sets are made. two or more authors in which the contribution of one author is not distinct from that of the other authors. Typically, joint authors own the work in equal shares as tenants in 1.6 Are there any restrictions on the protection for common as opposed to joint tenants. Therefore, generally speaking,

copyright works which are made by an industrial Canada process? one author cannot exclusively licence or assign the copyright without dealing with the other joint authors/owners. See question 1.5. In addition, it is not a copyright infringement to copy, reproduce, 3 Exploitation reverse engineer, or make drawings of totally functional articles where all the design features are dictated solely by the article’s utilitarian features (e.g. a car valve). 3.1 Are there any formalities which apply to the transfer/ assignment of ownership?

2 Ownership Any assignment must be in writing and signed by the copyright owner or their agent. The assignment need not be registered but can be with the Canadian Intellectual Property Office (CIPO). 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 apply)? 3.2 Are there any formalities required for a copyright Generally speaking, the first owner of the copyright is the author. licence? Author is not defined in the Act but will generally be considered the individual(s) who actually created the work through an exercise of A licence granting a proprietary interest in a copyright (e.g. an skill and judgment. exclusive licence) must be in writing and signed by the owner of There are exceptions, most notably, employee-created works as the copyright or his/her agent. If the licence does not transfer a discussed in question 2.3 below. Also, the owner of copyright proprietary interest but merely permits actions by the licensee which in a sound recording is its “maker”, i.e. the person by whom the would normally be infringements, the agreement can be made orally. arrangements necessary for the making of the recording are undertaken. This is typically the record producer or record label. 3.3 Are there any laws which limit the licence terms Copyright in works created or published under the direction or parties may agree (other than as addressed in control of the Crown is owned by the government. questions 3.4 to 3.6)? Broadcasters own the copyright in their communication signals. There are no such laws under the Copyright Act. Such licence terms might be subject to restrictions, however, under other statutes, e.g. 2.2 Where a work is commissioned, how is ownership of the Canadian Competition Act. the copyright determined between the author and the commissioner? 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? Unless there is a written assignment from the author to the commissioning party, copyright in the commissioned work still There are numerous organisations in Canada involved in the automatically vests first in the author. collective licensing of rights of copyright for specific types of However, the commissioning party may have certain rights to works. The major collective licensing bodies in Canada are: Access reproduce and use the commissioned works for non-commercial, Copyright, which represents writers and publishers for the copying personal activities, for example, commissioned wedding pictures. of literary materials; the Society of Composers, Authors and Music Publishers (SOCAN) which administers public performance and 2.3 Where a work is created by an employee, how is telecommunication rights in musical works for composers and ownership of the copyright determined between the music publishers; the Canadian Musical Reproduction Rights employee and the employer? Agency (CMRRA) which licenses reproduction rights, including synchronisation rights, in musical works for music publishers; Copyright in works created by employees (i.e. those working under CONNECT Music Licensing, which licenses the reproduction of a “contract of service”), within the course of their employment, sound recordings and the reproduction and broadcast of music videos will automatically be owned by the employer. There is no statutory on behalf of record companies, producers and artists; the Re:Sound definition of “contract of service” and the Courts have looked at Music Licensing Company, which collects royalties for performing many common law factors in defining this term, primarily whether artists and record companies concerning their performance rights; the employer has direct control over the employee’s work. Secondly, and the ACTRA Performing Rights Society (ACTRA PRS) which the work must be created during the course of the employee’s collects royalties for recording artists. employment, i.e. creating these types of works falls within the scope There are also several collectives in the Province of Quebec, which of the employee’s duties. administer similar rights in French language works.

3.5 Where there are collective licensing bodies, how are 4.2 Are there any ancillary rights related to copyright, they regulated? such as moral rights, and if so what do they protect, and can they be waived or assigned? The requirements to become a collective licensing body are set out in the Act. They are regulated, generally speaking, by the Authors and performers have moral rights in their works and Canadian Copyright Board (the Board), an administrative tribunal performances respectively. The right to the integrity of the work/ created under the Act. Some collective licensing bodies must performance is infringed if the work or performance, to the prejudice submit proposed tariffs to the Board, in both official languages, of of the author’s or performer’s reputation is: (a) distorted, mutilated all royalties to be collected. The Board, after proper review and or otherwise modified; or (b) used in association with a product, Canada hearing from the parties, certifies the tariffs to be paid for a set service, cause or institution. They also have the right, where period of time. The Copyright Board may change the royalties or reasonable, to be associated/credited with the work/performance terms of any licence. by name or by pseudonym or to have their name removed from Other collective licensing bodies may, but are not mandated to, file the work/performance. Moral rights exist as long as the associated their proposed tariffs with the Board for approval in the event that copyright exists and can be bequeathed to the author’s/performer’s the licensing body and the users cannot privately agree on terms. heirs. Moral rights cannot be assigned but may be waived. The same remedies are available for moral rights infringement as for copyright, namely, damages, injunctions and delivery up of infringing copies. 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works As stated, the Board can vary any terms in a collecting body’s which have been put on the market with his consent? proposed tariff as well as resolve disputes between collectives and users when they cannot agree on licence terms. Decisions of the Generally speaking, once copies of a work have been sold or Board can be appealed to the Federal Court of Appeal. otherwise distributed to the public, with the copyright owner’s consent, that right of first publication is exhausted and the copies 4 Owners’ Rights can thereafter be re-sold or re-distributed without further consent of the copyright owner. However, the rights of copyright set out above remain. Therefore, 4.1 What acts involving a copyright work are capable of no subsequent owner of a lawfully distributed copy can exercise being restricted by the rights holder? those rights without the copyright owner’s consent, e.g. make further copies, modify the copy, publicly perform or telecommunicate the The Act gives copyright owners the exclusive right to: (a) produce copy, or translate it. or reproduce the work, in whole or substantial part, in any material form; (b) perform the work, in whole or substantial part, in public; (c) publish the work, in whole or substantial part; (d) translate the work; 5 Copyright Enforcement (e) convert one type of work into another, e.g. a novel into a play; (f) make a sound recording or a film out of a literary, dramatic or musical work; (g) communicate the work to the public by telecommunication; 5.1 Are there any statutory enforcement agencies and, if (h) publicly exhibit artistic works created after June 7, 1988, for so, are they used by rights holders as an alternative to civil actions? purposes other than rent or sale; (i) rent out a computer program or a sound recording; (j) where the work is in a tangible object, sell or transfer ownership of the tangible object as long as that ownership No, there are no such agencies. has never previously been transferred in or outside Canada with the copyright owner’s authorisation; and (k) authorise any of these acts. 5.2 Other than the copyright owner, can anyone else bring Performers have rights in their performances to: (a) first fix them a claim for infringement of the copyright in a work? on a recording and make copies of the recording; (b) communicate live performances by telecommunication; (c) perform them in In addition to assignees, exclusive licensees may sue for copyright public; (d) rent out recordings of the performances; (e) make infringement. such sound recordings available to the public through online on- Under certain circumstances, an “exclusive distributor” of a book, demand services; (f) if the sound recording is fixed in a tangible as defined under the Act, may prohibit the importation, sale, rental, object, to sell/transfer ownership of the tangible object as long as distribution by way of trade, offer for sale or rental or public that ownership has never previously been transferred in or outside exhibition of books which were printed with consent of the copyright Canada with the performer/copyright owner’s authorisation; and (g) owner in a foreign country, but not with the consent of the Canadian to authorise any of these activities. copyright owner and the infringer knows or should have known that Makers of sound recordings have the right to: (a) first publish the the book would have infringed copyright, if made in Canada. sound recording; (b) reproduce it in any material form; (c) rent it out; and (d) authorise any of these acts. 5.3 Can an action be brought against ‘secondary’ Broadcasters have the right in respect of their communication infringers as well as primary infringers and, if so, signals to: (a) record the signal; (b) make copies of that recording; on what basis can someone be liable for secondary (c) authorise another broadcaster to retransmit the signal to the infringement? public simultaneously with its broadcast; (d) perform a television communication signal in a place open to the public if an entrance It is an infringement for any person to sell or rent, distribute to such fee is paid; and (e) authorise any of these acts. an extent as to affect prejudicially the copyright owner, by way of

trade distribute, offer of sale or rent, or exhibit in public, possess or import into Canada for any of these purposes, copies of a work, 5.6 On what basis are damages or an account of profits sound recordings, a performer’s performance on sound recordings, calculated? or communication signals that the person knows or should have known would infringe copyright or would infringe copyright if Under the Act, an infringer is liable to pay the damages the owner made in Canada by the person who made it. has suffered due to the infringement and that part of the infringer’s profits that were not taken into account when calculating damages. The Supreme Court, in CCH Canadian Ltd. v. Law Society of In appropriate cases of egregious behaviour by an infringer, a Court Upper Canada, stated that there are three elements to secondary may also award punitive damages. infringement: (a) there must be a primary infringement; (b) the secondary infringer should have known that he or she was dealing Alternatively, a plaintiff can elect to receive statutory damages at Canada with an infringing item; and (c) the secondary infringer sold, any time prior to final judgment. The Act sets statutory damages, distributed, or exposed for sale, the infringing items. with respect to all infringements of a commercial nature, for each work in the proceedings, in a range of not less than CAD 500 and not more than CAD 20,000, at the discretion of the Court. Where 5.4 Are there any general or specific exceptions which the infringement is not commercial in nature, the range of statutory can be relied upon as a defence to a claim of damages is reduced to not less than CAD 100 and not more than infringement? CAD 5,000 with respect to all infringements involved in the proceedings for all works. There are numerous general and specific exceptions to infringement under the Act. The broadest exceptions, re-characterised by the In certain equitable circumstances, the Act permits the Court to Supreme Court of Canada as “users’ rights”, not defences, are the further reduce the statutory damages awarded, per work, to below fair dealing provisions which permit persons to make a fair use CAD 500 for commercial infringements. of copyright works for the purposes of research, private study, education, parody or satire. 5.7 What are the typical costs of infringement Criticism and review and news reporting are also recognised as fair proceedings and how long do they take? dealing purposes, provided the source, and if included in the source, the author’s, maker’s or performer’s name, are credited. Prosecuting an infringement action from filing the claim to trial Even if the use is for a permitted purpose, it must also be a fair use. typically takes a minimum of two years, often longer. The courts In determining this second issue, the courts look at six factors: (a) will hold status reviews to move proceedings forward to either the purpose of the use; (b) the nature of the use (commercial versus settlement or trial but, often, it still takes years to complete the non-commercial); (c) the scope of the use (amount copied, how various stages of litigation and a trial. many copies made); (d) alternatives to the use; (e) the nature of the Costs vary depending on how many motions or other interlocutory work; and (f) the effect of the use on the market for the copied work. steps may arise in the litigation. Typically, the cost of taking an Educational institutions, libraries, archives, and museums are also action to trial would be in the range of CAD 100,000 to CAD granted a series of narrower exemptions from infringement for 300,000. Most actions, however, settle before trial. specific uses of works. On June 29, 2012, the Act was amended to add several infringement 5.8 Is there a right of appeal from a first instance exceptions for individuals making non-commercial and personal judgment and if so what are the grounds on which an uses of works, including recording television and radio shows appeal may be brought? for time-shifting purposes, transferring works from one media to another, creating online user-generated content which contains third Any decision of the Federal Court can be appealed to the Federal party works without any motive of gain (the so-called “mashup Court of Appeal, pending leave from the Court. Appeals can be exception”) and making additional copies of computer programs for brought to challenge final decisions, judgments on a question of law back up purposes or to make the program compatible with another or interlocutory injunctions. program. There are restrictions on some of these personal use If a copyright action is brought in a Provincial Court, which in some exemptions, including not circumventing technological protection instances also has copyright jurisdiction, an appeal can be brought measures (“digital locks”) to make these permitted uses. to the relevant Provincial Appeal Court. Finally, in appropriate cases, the equitable defences of laches and estoppel are also available against infringement claims. 5.9 What is the period in which an action must be commenced? 5.5 Are interim or permanent injunctions available? An action must be commenced within three years of the time when the plaintiff knew, or was reasonably expected to know, that Interim, interlocutory and permanent injunctions are available. the infringement had taken place. However, every time another Canadian courts have adopted a three-step test for granting infringing copy is made, it is considered to be a new infringement interlocutory injunctions: (1) the applicant must show there is which starts the three-year limitation period running again. a serious question to be tried; (2) that there would be irreparable Therefore, in cases of ongoing infringement over several years, an harm to the applicant’s interests if an injunction were not issued; action will not be statute barred by the time limitation, although and (3) the Court has to determine, on a balance of convenience, the owner may not be able to obtain remedies for infringements which party would suffer the greater harm by ordering or refusing occurring more than three years before the action was commenced. the injunction.

Also of note, in August 2017, Canada began discussions with 6 Criminal Offences Mexico and the United States to re-negotiate the North American Trade Agreement (“NAFTA”), which could impact copyright laws. 6.1 Are there any criminal offences relating to copyright Possible issues for discussion are: (a) revising Canada’s “notice and infringement? notice” regime to a “notice and take down” procedure; (b) not further expanding Canada’s fair dealing rights; and (c) eliminating caps Under the Act, it is a criminal offence to knowingly: (a) make on statutory damages which can be awarded for non-commercial infringing copies of a work, or other copyright protected subject infringements. matter, for sale or rental; (b) sell or rent such infringing copies; (c) distribute such copies for the purposes of trade or to such an extent Canada 7.2 Are there any particularly noteworthy issues around as to prejudicially affect the copyright owner; (d) publicly exhibit the application and enforcement of copyright in such infringing copies by way of trade; and (e) import or export or relation to digital content (for example, when a work attempt to export such infringing copies into or out of Canada for is deemed to be made available to the public online, sale or rental. hyperlinking, etc.)?

In Google v. Equustek Solutions Inc., the Supreme Court of Canada 6.2 What is the threshold for criminal liability and what (“SCC”) upheld a preliminary injunction obtained by Equustek are the potential sanctions? obligating Google to de-index all websites, in any jurisdictions throughout the world, of Datalink, the defendant in Equustek’s For criminal liability, the infringer must know that his/her actions successful trademark infringement and passing off action. Datalink are infringing. sold knock offs of Equustek’s products through websites. Under the If the infringer is convicted on summary conviction, he/she is liable injunction granted by the lower court, Google de-indexed some of to a fine of not more than CAD 25,000 and/or a prison term of no Datalink’s websites, including any accessible through the .ca domain. more than six months. Datafile continued to infringe by setting up new websites, outside If convicted on indictment, he/she is liable to a fine of not more than of Canada. The SCC agreed with Equustek that the only way this CAD 1,000,000 and/or a prison term of not more than five years. remedy was effective until trial was to order Google to de-index all the websites, even though it gave the injunction an “extraterritorial” effect and Google, itself, did nothing actionable but facilitated the 7 Current Developments continuing infringement. Under such circumstances, the SCC held that injunctive relief could be ordered against a non-party to the action. Although a trademark case, the Google v. Equustek decision 7.1 Have there been, or are there anticipated, any significant legislative changes or case law will also impact online copyright infringement cases. development? In Access Copyright v. York University, the Federal Court found that York’s copying, including digital copies, of educational Under a 2012 amendment, the government must review the materials for student casebooks did not fall within “fair dealing”. Act every five years for further reforms needed. In 2017, the Therefore, the University was liable to pay past royalties to Access government is first reviewing administrative issues concerning the Copyright, a copyright collective for writers and publishers. York Copyright Board of Canada (“the Board”). The Board is responsible had been paying a compulsory licence royalty to Access Copyright for setting tariffs for specific copyright collectives and mediating but, after the Act was amended to include education as a recognised disputes between other copyright collectives and users, where fair dealing purpose, York declined to pay further royalties and private negotiations have failed. The Board’s workload has steadily implemented a fair dealing policy largely based on copying the same increased causing case backlogs and lengthy delays in decisions. amounts that York staff had been permitted to copy under the Access This review will identify measures to alleviate these problems, Copyright licence. The policy stated that up to 10% of any work, such as adding case management provisions, establishing new case one chapter of a book or one academic article could be copied as deadlines, streamlining processes before the Board, and giving the “fair dealing” for education. Access Copyright sued and the Court Board new powers to advance proceedings, award costs and limit agreed that, although York’s use fell under an education purpose, delays. Measures may also be introduced to increase the Board’s the use was not fair since the amounts York permitted to be copied transparency and allow public participation. The government hopes were arbitrary and not based on sound principles and the motive was to introduce proposed legislative reforms in early 2018. that York was trying to get for free what it had previously paid for. In a second separate review process, for later this year or 2018, This decision has been closely analysed by educational institutions the government will consider more substantive issues under the and there is controversy over whether the Federal Court applied the Act, possibly including: (a) creating an new exemption to permit fair dealing provisions properly, as outlined by the Supreme Court artificial intelligence machines greater access to big data analytics of Canada in earlier caselaw. For these reasons, it is likely to be (the so-called text-and-data mining exception), to further Canada’s appealed. role in technological innovations; (b) alternatively, broadening the In Blacklock’s Reporter v. AG Canada, the Federal Court of “fair dealing” sections to accommodate such new technology needs; Canada found that government employees exercised fair dealing (c) clarifying the intersection between “fair dealing” provisions and rights where they accessed and shared internally two articles, stored the prohibitions against circumventing of technological protection behind a paywall, but obtained from a Blacklock’s subscriber. The devices; (d) uses and misuses by copyright trolls of the ISP “notice articles were reviewed for the non-commercial purpose of assessing and notice” regime; and (e) extending the copyright term in Canada their accuracy. Blacklock had brought several similar actions against from life of the author(s) plus 50 years to life of the author(s) plus other parties (including a successful Small Claims action against the 70 years. Canadian Vintner’s Association), claiming excessive damages. The case also highlights the uncertainty as to how fair dealing provisions

should intersect with the prohibitions against avoiding technological that the copying was fair dealing for the recently added statutory protection devices, such as paywalls. purpose of parody. After discussing the scope of parody, the court In Trader Corporation v. CarGurus, the defendant, an online held that, although Cooperstock’s use fit within parody, it was automobile sales website, had, without permission, scraped and/ not fair since: (a) his real motive was not to create humour but or framed 150,000 photographs of vehicles for sale on car dealers’ to embarrass and defame United; (b) parody was likely never fair websites. Trader, the operator of a competitive website, sued in the where it caused public confusion, as was found to exist under the Ontario Superior Court and was able to prove it owned copyright trademark claims; (c) the amount of the dealing was substantial (i.e. in the photographs. The court found infringement of Trader’s right copying all United’s homepage); (d) the copied works were widely to make its works available to the public by telecommunication disseminated online; and (e) there were alternatives to the dealing by and rejected Cargurus’ defences that: (a) the photographs were not which Cooperstock could make his points. Cooperstock’s defences Canada sufficiently original to be copyrightable; (b) “framing” them on its of estoppel or acquiescence also failed. own site did not infringe; (c) its actions constituted fair dealing for the purpose of research (the dealing was for research but was not fair given the commercial and competitive nature of the use); and (d) Cargurus was exempted from liability as it was an “information Jill Jarvis-Tonus location service” protected under “safe harbour” like sections of the Bereskin & Parr LLP 40 King Street West, 40th Floor Act. Trader had asked for statutory damages of $500 per photo, the Toronto, Ontario lowest amount under the statutory damages range for commercial M5H 3Y2 infringements. The Court, exercising its discretion under the Act, Canada to award lower amounts, where necessary, to prevent an overall Tel: +1 416 957 1618 award which is out of proportion to the infringement, granted Fax: +1 416 361 1398 Trader damages of CAD 2 per photo for a cumulative award of CAD Email: [email protected] URL: www.bereskinparr.com 305,604. In United Airlines v. Jeremy Cooperstock, the defendant operated Jill is Counsel with Bereskin & Parr LLP and Co-Head of the New Media/Copyright practice group. Her practice focuses on copyright a “gripe” website, “untied.com”, where disgruntled passengers and trademark matters, including trademark and copyright registration, could criticise and receive other negative information about United trademark oppositions, assignments of rights, due diligence work, and Airlines. Cooperstock included a logo on his website, which licensing particularly in the entertainment, publishing and software resembled United’s globe design, with a frown added. He designed industries. Jill’s written work includes several papers on copyright as it applies to the use of photographs, archival materials and third party the “look and feel” of his site to resemble that of United. United content on digital products and services, and the creation of digital sued him for trademark infringement, passing off and copyright products and services. infringement. Concerning the copyright claim, Cooperstock argued

Bereskin & Parr LLP is a leading Canadian intellectual property law firm serving clients of all sizes in various industries, both domestic and international. The firm was founded in 1965 and has grown to be one of the largest IP law firms in Canada, with four offices located in major economic or technology centres. Bereskin & Parr is made up of more than 70 lawyers and patent and trademark agents, many of whom are recognised as leading practitioners in their respective fields. The firm’s practice is comprehensive, encompassing all aspects of intellectual property law. Both the firm and its award-winning professionals are consistently ranked as the benchmark for IP law in Canada.

China Zhou Qiang

ZY Partners Deng Huiqiong

State agencies, other legislative, administrative and 1 Copyright Subsistence judicial documents, and official translations thereof; b. current affairs news; and 1.1 What are the requirements for copyright to subsist in c. calendars, general tables, general form and formulae. a work?

1.3 Is there a system for registration of copyright and if Works include original works of literature, arts and sciences with so what is the effect of registration? intellectual results which can be reproduced in a tangible form. Copyrightable works must have the following features: The PRC’s national copyright administration and provincial copyright a. originality: (1) the author must create the work independently; administrations are in charge of registration. Fee rates in various and (2) the work shall reflect the author’s creativity; regions are different. Different types of works are subject to different b. expression of thoughts and feelings: the work is the result registration fees. General works and computer software are generally of a person’s thoughts, feelings, viewpoints or subjective considered separately. An author may choose whether to register cognisance. However, mere ideas do not constitute works; a work. A Chinese author’s copyright arises automatically upon c. expression in a certain form: copyright protects expression, completion of the work and is evidence of copyright ownership, while not ideas. An object can only be a work when it is expressed a foreign author’s copyright arises automatically upon publication of by the use of characters, languages, symbols, voices, actions, the work in China, or in accordance with an international treaty. colour, or other tangible, perceptible media; and d. reproducible: copyrightable works must be fixed in a tangible medium of expression that is reproducible. 1.4 What is the duration of copyright protection? Does this vary depending on the type of work?

1.2 On the presumption that copyright can arise in literary, artistic and musical works, are there any other works Work Type Period of Protection in which copyright can subsist and are there any works Life of the author, plus 50 years. which are excluded from copyright protection? The protection shall expire on 31 December of the 50th year following the author’s death. In 1. Copyrightable works also include: Works of individual authors the case of co-authored works, a. oral works; the period of protection shall th b. artistic works, including paintings, calligraphy, sculptures expire on 31 December of the 50 year following the death of the and other flat or three-dimensional aesthetic works created last surviving author. with the use of lines, colours or other patterns; 50 years; the period of protection c. architecture, including aesthetic works in the form of Works of a legal person or any shall expire on 31 December of buildings or structures; other organisation the 50th year following the first d. photography; publication. 50 years; the period of protection e. cinematography and film; Film works, works created using shall expire on 31 December of methods similar to film making f. graphs, including engineering designs, product designs, the 50th year following the first and photographic works structural designs and schematic diagrams to indicate publication. geographic phenomena and explain principles or Right of authorship, right of The period of protection is not fundamentals; revision, right to preserve the subject to restriction. g. models; integrity of work of an author h. software; and i. folk literature and art works, a special type of 1.5 Is there any overlap between copyright and other copyrightable work having the characteristics of regional intellectual property rights such as design rights and diversity, collectivity and heritability. database rights? 2. Works excluded from copyright protection include: a. laws, regulations, resolutions, decisions and orders of Certain works may be protected by more than one form of intellectual

property, such as copyright and trademark rights. For example, some works of fine art may be eligible for trademark protection. 2.3 Where a work is created by an employee, how is There is also some overlap between copyright and patent rights. For ownership of the copyright determined between the employee and the employer? example, computer software meeting patent granting requirements may also be copyrightable. Further, some products can be protected by copyright while applying for a design patent. Copyright of a work created in the course of employment belongs to the employer when: a. works are created in the course of employment, primarily 1.6 Are there any restrictions on the protection for with the use of material and technical conditions of the copyright works which are made by an industrial employing legal person or the organisation, and for which the process? legal person or the organisation bears responsibility; and China b. works are created in the course of employment whose There is no clear restriction regarding the copyright of works created copyright belongs to the legal person or the organisation through industrial processes. However, in practice, industrial pursuant to provisions of law, administrative regulations or products are unlikely to be copyrightable because they lack literary contractual agreement. or artistic value. Otherwise, the copyright in a work created in the course of Chinese copyright law permits copyright protection for computer employment belongs to the employee author. software.

Regulations for the Implementation of International Copyright 2.4 Is there a concept of joint ownership and, if so, what Treaties issued by State Council clarify copyright protection to rules apply to dealings with a jointly owned work? foreign works of applied art. However, it does not protect certain works of fine art (including designs of animated cartoon images) Joint ownership arises in a work jointly created by two or more used on industrial products. The term of protection is 25 years from persons. The copyright of the work shall be co-owned by the co- the work’s completion. Copyright protects only expressive, rather authors. than functional content. Where a co-authored work can be used separately, a co-author may enjoy an independent copyright to their portion, so long as they 2 Ownership do not infringe the copyright of the joint work. Authors who have collaborated on works which cannot be divided for independent use shall be entitled to joint copyright of such works, exercised upon 2.1 Who is the first owner of copyright in each of the consultation with the co-author(s). Where the joint authors cannot works protected (other than where questions 2.2 or agree, no one author shall unreasonably prevent the other from 2.3 apply)? exercising copyright claims, other than that of a transfer; further, any income or profit derived must be divided fairly among joint authors. a. Generally, the copyright shall belong to the author. b. The copyright in a deductive work, also known as derivative work, shall belong to the person who creates the deductive 3 Exploitation work. c. The copyright in a compilation shall belong to the person who undertakes the compilation. 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? d. The copyright in film works and works created using methods similar to film shall belong to the producers; however, the author of works which may be independently used, such as A copyright holder is entitled to partially or completely transfer the the script, score, etc., in film works shall have the right to associated exclusive rights in a work. A written contract shall be exercise his/her copyright independently. concluded for a transfer of the rights. This will include: e. A transfer of ownership of the original copy of works shall a. name of the work; not be deemed as transferring the copyright; the exhibition b. the type of rights transferred and geographical scope; right for the original copy of the artwork belongs to the owner c. assignment price; of the original copy. d. date and method for payment; f. If the author’s identity is unclear, the legal bearer of the original work shall have the right to exercise all copyright e. default liability; and claims, except the author’s right of acknowledgment. f. any other contents agreed to and deemed necessary. Rights not specified in a licensing or transfer contract shall not be 2.2 Where a work is commissioned, how is ownership of exercised without the consent of the copyright holder. the copyright determined between the author and the An assignee is entitled to apply to place the licensing or transfer commissioner? contract on record with the relevant copyright administration departments. Attribution of copyright of a commissioned work shall be agreed between the principal and the commissioned party through contractual agreement. Where the contract does not specify an 3.2 Are there any formalities required for a copyright licence? agreement or where there is no contract, the copyright belongs to the commissioned party. A contract licensing use should include: a. type of rights licensed; b. whether the rights licensed are exclusive or non-exclusive;

c. geographical scope and period; c. passing off, seeking personal fame and fortune; d. standards and method for payment; d. distortion or tampering; e. default liability; and e. plagiarism; f. any other contents agreed to and deemed necessary. f. use of a work in the form of exhibition, film making and any Provided that the licence is exclusive, the contracts should be in other methods similar to film making, or use of a work in the form of an adaptation, translation, annotation, etc.; writing, and the contract shall include the content of the exclusive right. g. failure to pay remuneration; h. lease of a film work or a work created using methods similar to film making or computer software or audio-visual China 3.3 Are there any laws which limit the licence terms recordings of such works; parties may agree (other than as addressed in questions 3.4 to 3.6)? i. use of the layout design of a book or a periodical without consent; Moral rights related to copyright may not be licensed, including j. live broadcast or public transmission of a live performance or recording of the performance without consent; and publication right, right to authorship, right of revision and right to preserve the integrity of work. k. any other infringement. The following infringing acts also may be punished:

3.4 Which types of copyright work have collective a. reproduction, distribution, performance, screening, licensing bodies (please name the relevant bodies)? broadcasting, compilation or transmission of others’ works to the public through an information network without consent; There are Chinese collective licensing bodies for music (Music b. publication of books for which another party has exclusive publication rights; Copyright Society of China), audiovisual works (China Audio- Video Copyright Association), written works (China Written Works c. reproduction or distribution of audio-visual recordings of a Copyright Society), photographic works (Images Copyright Society performance or transmission of the performance to the public through an information network without consent; of China) and film works (China Film Copyright Association). d. reproduction or distribution of audio-visual recordings or transmission of audio-visual recordings to the public through 3.5 Where there are collective licensing bodies, how are an information network without consent; they regulated? e. broadcast or reproduction of radio and television programmes without consent; Collective licensing bodies conduct their work per Article 8 of f. intentional circumvention or sabotage of the technical PRC copyright law. Their methods of establishment, rights and measures adopted by rights holders for protection of their obligations are stated in the Regulations on Collective Administration copyright without consent; of Copyrights, amended by the State Council in 2013. g. intentional deletion or alteration of electronic data for rights The collective administration of copyrights is managed by the management of works, without consent; and State Copyright Bureau. This organisation mainly helps: i) to enter h. passing off others’ works and production or the sale of such into a licensing contract for copyrights or other rights relating to works. copyrights; ii) to collect licence fees; iii) to transfer licence fees; and iv) to participate in legal or arbitration proceedings. 4.2 Are there any ancillary rights related to copyright, such as moral rights, and if so what do they protect, 3.6 On what grounds can licence terms offered by a and can they be waived or assigned? collective licensing body be challenged? Moral rights are not deemed as merely ancillary rights. Moral rights A licensee is entitled to raise objections to the licence terms if: include: publication rights; right of authorship; right of revision; and a. the collective licensing body is unauthorised or its business is the right to preserve the integrity of work. beyond the scope of authorisation; Ancillary rights refer to the right of the opus propagator. The rights b. charge or transfer of the licence fees by the collective include the rights of the publisher regarding layout designs of books licensing body violates the regulation; and periodicals, the rights of performers regarding their performance, c. the collective licensing body does not fix a specific amount and the rights of television stations regarding broadcasted radio and for licence fees according to announced rates; or television programmes. d. licence terms include other works that users do not need. 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works 4 Owners’ Rights which have been put on the market with his consent?

4.1 What acts involving a copyright work are capable of The first sale principle states that the copyright holder has no right being restricted by the rights holder? to control the resale and distribution of sold copies authorised for release in the market. Academic circles in China generally believe A rights-holder may restrict the following infringing acts: that online transmission does not apply this principle – transferring works online will not lead to the transmission of tangible copies. a. publication of a work without permission from the right holder; b. publication of a joint work as his/her own independently- created work;

e. use of published works by State agencies within a reasonable 5 Copyright Enforcement scope for the execution of official duties; f. replication by libraries, archives, memorials, museums, art 5.1 Are there any statutory enforcement agencies and, if galleries, etc. for display or preservation; so, are they used by rights holders as an alternative g. performance of published works to the public for free, with to civil actions? no remuneration to performers; h. copying, drawing, photographing and video recording of art Statutory enforcement agencies include the State Copyright Bureau works installed or displayed at outdoor public premises; and local copyright bureaus. The main function of those agencies is i. translation of Chinese language works published by Chinese ensuring order in the intellectual property market, such as through citizens, legal persons or any other organisations into China administrative investigation and punishment, administrative minority language works for publication and distribution in adjudication and administrative mediation. The copyright bureau China; or is also capable of arranging mediation relating to compensation j. translation of published works into Braille for publication. fees for infringement and ownership disputes. The administrative Unless the author has stated that the use is not permitted, a work protection of the copyright bureau is useful for copyright holders may not require licensing in the following cases: while seeking copyright protection. However, it is not deemed a. compilation and publication of parts of published works in entirely as an alternative to a civil lawsuit. If necessary, copyright textbooks for nine-year compulsory education and national holders could do both. education planning; b. publication or broadcast by media of articles on current 5.2 Other than the copyright owner, can anyone else bring affairs pertaining to politics, economics, or religious issues a claim for infringement of the copyright in a work? published by other media such as newspapers, periodicals, radio stations, television stations, etc., except where the author Other than the copyright owner, an assignee, successor, the licence has stated that publication or broadcast is not permitted; holder of the exclusive licensing and the collective licensing body c. publication or broadcast by media such as newspapers, may file an infringement lawsuit. The owner of the original copy periodicals, radio stations, television stations, etc. of speeches of a work of art may file a lawsuit to stop an infringing exhibition. made at public meetings, except where the author has stated that publication or broadcast is not permitted; A producer can file an infringement lawsuit over infringing films. d. broadcasting of a published work on media such as radio stations and television stations; or 5.3 Can an action be brought against ‘secondary’ e. use of others’ musical works which are already legitimately infringers as well as primary infringers and, if so, recorded as audio recordings in the production of audio on what basis can someone be liable for secondary recordings. infringement?

Yes. If two parties intentionally infringe or implement steps 5.5 Are interim or permanent injunctions available? toward infringement, such as dividing labour and cooperation, or implementing other such infringing acts, each suspected infringer The copyright (or related rights) holder may apply for injunctions will serve as a joint defendant in an infringement lawsuit. as follows: Network service providers may bear liability for infringement a. where a copyright holder or a holder of related rights has where network service providers have instigated or assisted network evidence to prove an ongoing or impending infringement users in infringing upon the information network transmission of his/her rights, and the rights and interests will suffer rights in the provision of network services, or where they induce or irreparable damages if the infringement is not promptly stopped, he/she may apply to a People’s Court to issue an encourage users to engage in infringing activity. This may be true injunction to stop the infringing acts; and even where providers know or should have known that users are using their services for copyright infringement. b. where evidence may be destroyed or it is difficult to obtain, a copyright holder may apply to a People’s Court for Publishers may also be liable for secondary infringement in certain preservation of evidence before or after filing a lawsuit. circumstances, such as where they fail to exercise reasonable care Because the preserved evidence mostly is of the facilities for the authorisation of the publishing acts, the origins and signature used for making infringing products, as a result, evidence of the manuscripts, and the content of publications. preservation has the same function as injunction. Apparently, the above methods are interim and not permanent. In 5.4 Are there any general or specific exceptions which practice, the rulings of the Chinese court’s final judgment, such as can be relied upon as a defence to a claim of ordering the infringer to stop its infringing acts, could serve as a infringement? permanent injunction.

Use of a work under the following circumstances (fair use) does not 5.6 On what basis are damages or an account of profits require licensing or remuneration: calculated? a. use of a work for personal learning, research or appreciation; b. appropriate citation of a work in a work for introduction or Standard of compensation is based on actual loss; where it is difficult commentary; to compute actual losses, compensation is based on the infringer’s c. inevitable reproduction or citation of a published work for illegal income from sales. reporting of current affairs news; Where it is impossible to determine actual losses or illegal income, d. translation or replication in small quantity for use in teaching a People’s Court shall provide compensation of not more than or research at schools; RMB500,000, according to the extent of infringement.

c. duplicates and distributes audio-visual works without 5.7 What are the typical costs of infringement permission; and proceedings and how long do they take? d. produces and sells artistic works bearing fake signatures. Article 218 of the Criminal Law describes the crime of selling Typical costs mainly include court-charged case filing fees, costs for infringing duplicates as selling in excess of the statutory amount of investigation and evidence collection and attorney fees, etc. infringing duplicates described in Article 217. Chinese Civil Procedure Law sets up certain limitation for case trialling. 6.2 What is the threshold for criminal liability and what Trials in a People’s Court at first instance shall be completed within are the potential sanctions? China six months from the date of the establishment of case file, unless granted an extension. When the suspect has an illicit income of more than RMB30,000, or In basic People’s Courts and their branches, or for cases in which the value of the unlawful business operation is more than RMB50,000, both parties agree to apply simplified procedures, the action shall be or the number of infringing duplicates exceeds 500 pages (copies) completed within three months. in total, or when there are other serious circumstances, the suspect A People’s Court trying an appeal against a judgment of first is to be sentenced to not more than three years’ imprisonment, and/ instance shall complete the trial within three months from the date or may be fined. When the value of the illicit income exceeds of establishment of case. A People’s Court trying an appeal case RMB150,000, or the value of unlawful business operation exceeds against a ruling shall make a ruling of final instance within 30 days RMB250,000, or the number of infringing duplicates exceeds 2,500 from the date of establishment of case. However, above statutory pages (copies), or when there are other serious circumstances, the time limits do not apply to the lawsuits with foreign elements. suspect is to be sentenced to not less than three years and not more than seven years’ imprisonment, and a fine.

5.8 Is there a right of appeal from a first instance For selling infringing duplicates, when the suspect has gained an judgment and if so what are the grounds on which an illicit income exceeding RMB100,000, the suspect is to be sentenced appeal may be brought? to not more than three years’ imprisonment, criminal detention and may, in addition or exclusively, be sentenced to a fine. Where a litigant disagrees with a judgment of first instance of a local People’s Court and applies for an appeal, the People’s Court of second instance shall examine the relevant facts and applicable 7 Current Developments laws for the appeal. The levels of jurisdiction, from lowest to highest, are: basic People’s 7.1 Have there been, or are there anticipated, any Courts; intermediate People’s Courts; high People’s Courts; and the significant legislative changes or case law Supreme People’s Court. developments?

The Copyright Law (Revised Draft for Official Review) published 5.9 What is the period in which an action must be on June 6, 2014 by Legislative Affairs Office of the State Council is commenced? regarded as a significant copyright revision. It reflects the openness, transparency and full acceptance of different views from various The time limit for actions of copyright infringement is two years, parties. There are great changes, from styles and structures to starting from the date when a copyright holder knows or should specific provisions. have known of the infringement. Changes to the specific provisions include: However, according to the General Provisions of the Civil Law of a. clear use of the term of “related rights” as a kind of paralleled the People’s Republic of China, from October 1, 2017, the time limit right of copyright. The related rights also implement the for actions of copyright infringement will change to three years, principle of automatic entitlement; starting from the date when a copyright holder knows or should b. clearly distinguishes personal right and property right, and have known of the infringement. regulates the publication right, right of authorship and right to preserve the integrity of work which belong under personal 6 Criminal Offences rights; c. when the origin of art work and photographic work, or the manuscript of written work and musical work, has been 6.1 Are there any criminal offences relating to copyright transferred for the first time, the author, his successor or infringement? legatee is entitled to share the profits from the value-added part arising from the transferring thereof. The right belongs There are two charges related to copyright infringement, regulated to the author, his successor and the legatee exclusively; in Article 217 and 218 of Criminal Law: the crime of infringing d. fair use in computer programs; copyright; and the crime of selling infringing duplicates. Both e. a section covering “collective management of copyright” crimes are for the purpose of earning profits. has been added, and a design of the system of extending collective management; and The crime of infringing copyright includes the following circumstances; where a party: f. another clause in technological protection measures and a rights management information chapter “except when a. copies and distributes written, musical, film, televised, and conducting encryption or computer programme, reverse video works, computer software, and other works without engineering falls in the scope of damaging technological permission; protection” have been added. b. publishes books whose copyrights are exclusively owned by others;

Please note that although several years have passed, the Draft is still audio and video products; however, a network service provider in the process of elaboration and has not become a law yet. which is or should be aware that the linked works, performances, audio and video products are infringing shall bear joint tort liability.

7.2 Are there any particularly noteworthy issues around b. The scope of fair use: the application and enforcement of copyright in Provisions of others’ work through an information network in the relation to digital content (for example, when a work following cases may be exempt from consent of the copyright is deemed to be made available to the public online, holder and payment of remuneration to the copyright holder for hyperlinking, etc.)? fair use reasons (see question 5.4). Certain provisions also apply to libraries and nine-year compulsory education or national education.

The following aspects on online copyright are noteworthy: China c. Disclosure obligation of network service provider: a. The principle of safe harbour: The copyright administrative authorities may, to investigate acts Upon receipt of the notice by a rights holder, a network service of infringement of information network transmission right, require provider providing a searching or linking service to service targets the network service providers to provide the name, contact method, shall not bear compensation liability pursuant to the provisions of network address, etc. of alleged infringing service targets which are these Regulations on loss of links to infringing works, performances, suspected of infringement.

Zhou Qiang Deng Huiqiong ZY Partners ZY Partners Suite 2606, Kuntai International Plaza Suite 2606, Kuntai International Plaza No.12, Chaowai Street, Chaoyang District No.12, Chaowai Street, Chaoyang District Beijing 100020 Beijing 100020 China China

Tel: +86 10 5879 0066-208 Tel: +86 10 5879 0066-222 Email: [email protected] Email: [email protected] URL: www.zypartners.com URL: www.zypartners.com

Mr. Zhou has degrees from Jilin University’s Department of Law, where Ms. Deng specialises in Commercial Law, Intellectual Property Law, he graduated in 1982 with a LL.B., as well as from the University of Foreign Investment-related Law, Anti-monopoly Law and Labour Law. Iowa’s College of Law in 1995 where he earned his LL.M. She handles both litigation and non-litigation matters. She offers a full range of commercial law services for multinational corporations Mr. Zhou has worked as a law clerk and an associate judge for the in various industries, including advising and representing clients in Chinese Supreme Court from 1982 to 1991. projects and proceedings associated with corporate governance, Mr. Zhou has had substantial experience in representing Chinese restructuring and disputes arising from insolvency or distressed and foreign clients before Chinese courts, and domestic and situations. international arbitration institutes. He also has a wealth of experience Ms. Deng has substantial experience in advising international clients in representing Chinese companies, as well as foreign companies, in on IP protection in China. She has represented clients in civil solving their disputes through negotiations and mediation. proceeding, administrative litigation as well as criminal proceeding in Mr. Zhou has filled the position of legal expert in IP-related legal IP-related matters. matters, specialising in copyright, trade secrets and the application Ms. Deng has represented several multinational corporations in foreign of international IP systems in China under the WTO and TRIPS rules. investment projects. She has also advised multinational corporations and foreign invested companies on a wide range of projects.

Licensed by the judicial authorities of the People’s Republic of China, ZY Partners is a full-service law firm with a broad range of expertise. Founded by experienced lawyers with excellent academic backgrounds, the firm now has a team of 40 highly-skilled lawyers and patent attorneys representing domestic and international clients in sophisticated business transactions, transnational contentious matters, and IP prosecution in China, including patents and trademarks. Our IP Practice is regularly ranked as a leading practice by major IP publications and Chambers Asia. A number of cases we represented were published as precedential cases by courts in Beijing, Shanghai and the Supreme People’s Court. Our clients include many Fortune 500 companies as well as hundreds of other domestic companies, partnerships, trade associations, banks and foundations, government agencies and individuals.

France

Weisselberg Avocat Elise Weisselberg

1 Copyright Subsistence 1.4 What is the duration of copyright protection? Does this vary depending on the type of work?

1.1 What are the requirements for copyright to subsist in a work? The CPI distinguishes between moral rights and patrimonial rights. A moral right is imprescriptible. The duration of patrimonial rights is 70 years after the death of the author. The duration is identical Under French law, any work is eligible for copyright protection, whatever the type of work. (In the case of “collaborative work” (see provided that the work is original. The French Intellectual Property question 2.4 below) or “collective work” (see question 2.1 below), Code (CPI) does not include any definition of the originality of the starting point of the period of 70 years changes; it becomes the the work (namely designated as a “work of the mind” (“oeuvre date of the death of the last contributor to a “collaborative work” and de l’esprit”)). It is at the discretion of the French courts to decide the date of the first publication of the work for a “collective work”.) originality on a case-by-case basis. French courts consider that a work is original when the personality of the author of the work is In exceptional cases, the 70-year period might be extended where evidenced in the work (“empreinte de la personnalité de l’auteur”) facts of war or temporary provisions may be taken into account. or when one can appreciate the author’s personal efforts in the work (“apports personnels de l’auteur”). 1.5 Is there any overlap between copyright and other intellectual property rights such as design rights and database rights? 1.2 On the presumption that copyright can arise in literary, artistic and musical works, are there any other works in which copyright can subsist and are Yes, we can find several cases where there is an overlap between there any works which are excluded from copyright intellectual property rights. Here are some examples: protection? An author can accumulate copyright and design rights for the same work, provided that the work fulfils the conditions required by each The originality, no matter how subjective, is to be appreciated provision. whatever the kind, form of expression, merit or purpose of the work. However, French law does not protect ideas or concepts. Therefore, A database can be protected under copyright, but the owner of a work needs to be sufficiently materialised in a developed form to database can also claim for a specific protection – a sui generis be eligible for copyright protection. This is all the more important system also provided by the CPI – covering his financial, human or to keep in mind for intellectual works, for example. In this respect, technical investments, provided those are considered as substantial. we note that French Courts – even if such solutions are sometimes A shape eligible to copyright or design could also be protected by challenged – have in the past denied protection for rules of a game, a three-dimensional trademark. A title of a book or a comic book cooking recipes and perfumes. character could also be registered as a verbal or figurative trademark. Cumulated protections raise various procedural issues but also 1.3 Is there a system for registration of copyright and if issues on the merits, especially when protections come into conflict so what is the effect of registration? or when one protection is used to bypass another unfavourable provision. There is no system of registration. The CPI provides that a work is protected as of its creation. In practice, authors may be well 1.6 Are there any restrictions on the protection for advised to seek registration of their material or work in order to copyright works which are made by an industrial secure proof of their ownership and priority. Among the means or process? devices available, we can mention the filing of an “envelope soleau” with the French Intellectual Property office (“Institut National de No. The principle that any original work is eligible to be copyrighted la Propriété Industrielle”), notarisation with a public notary and a is not affected by the fact that a work has been made by an industrial filing with the APP (“Agence pour la Protection des Programmes”), process. In this respect, the CPI expressly mentions, as examples of a French agency promoting and protecting copyrights. protected work, applied art and articles of fashion.

form. A recent law voted on 7 July 2016 (see question 7.1) amends 2 Ownership the wording of the article L.131-2 of the CPI and enlarges the obligation to any contract operating a transfer of copyright. 2.1 Who is the first owner of copyright in each of the In compliance with article L.131-3, each patrimonial right shall be works protected (other than where questions 2.2 or namely assigned, whereas the assigned right shall be specified as to 2.3 apply)? its scope and purpose, its duration and its territory of use. The contract can eventually be free, but when a price is agreed, The CPI provides a strong principle according to which the owner of such price shall be proportional to the revenues made out of the the copyright is the author of the work. There are few specific cases exploitation of the work. The CPI provides exceptions to this where copyright is vested or transferred to another person. proportional rule, including in the field of software, or when means France In this respect, the collective work (“oeuvre collective”) is the only of calculation do not exist, etc. French system where ownership is initially vested with another Those protective formalities only apply to contracts executed by the person (individual or company). The owner of the copyright is the authors and therefore do not apply to subsequent contracts executed person who has – on his sole initiative – conceived, supervised, by author’s assignees. edited, published and disclosed the work. In the case of collective work, one cannot identify the personal contributions of each of the authors involved in a creation, and, therefore, it is not possible to 3.2 Are there any formalities required for a copyright attribute a separate right to each of the authors. licence?

Licence agreements are subject to the above-mentioned conditions. 2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the commissioner? 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in The ownership of the copyright is irrespective of whether or not questions 3.4 to 3.6)? a work is commissioned. The author remains the owner of the copyright and will need to be assigned to the commissioner. In addition to limits provided for under the common rules, the CPI prohibits perpetual undertakings. In practice, this limit is usually bypassed by stipulating that the assignment is made for the entire 2.3 Where a work is created by an employee, how is duration of the copyright. ownership of the copyright determined between the employee and the employer? The CPI also prohibits the assignment and licensing of future works. In this respect, parties shall provide a specific clause dealing with Ownership of a copyright is also irrespective of whether or not the this hypothesis and including additional proportional compensation. author is an employee. Therefore, where there is potential for an employee to create a work eligible for copyright, assignment of rights 3.4 Which types of copyright work have collective needs to be implemented. The CPI provides few exceptions to this licensing bodies (please name the relevant bodies)? principle, such as software when software is created by an employee in the course of his mission or pursuant to his employer’s instructions. Collective licensing is carried out by French companies entitled The employer who edits software is in this case legally bound to be to manage copyrights for their members (formerly called “Société the owner of the copyright on such software. Other specific regimes de Perception et de Répartition des Droits”, they are newly named to note apply to public agents and to journalists where patrimonial “Management body”, “Organisme de gestion” (see question 3.5)). rights are – to some extent – automatically vested to the employer. Some companies specialise in types of work such as: SACEM for authors, composers and music editors; SACD for authors of drama 2.4 Is there a concept of joint ownership and, if so, what and audiovisual works; SCAM for multimedia works; and ADAGP for rules apply to dealings with a jointly owned work? artistic works. Others are dedicated to the management of one specific right, such as the SDRM for the right to reproduce musical works, There are several cases of joint ownership. A “collaborative work” PROCIREP for the representation of cinematographic film, etc. (“oeuvre de collaboration”) does exist when several persons In principle, authors are not obliged to adhere to these collective contribute to the work and each of the contributions is specific and licensing bodies and remain free to manage their rights by identifiable. In this case, the ownership is shared equally by each themselves. In a few cases, however, the authors are required to of the authors. devote their right to collective licensing bodies. Joint ownership can also exist between the heirs of an author after his death. In such a case, common provisions shall apply to the 3.5 Where there are collective licensing bodies, how are exploitation of the jointly owned work. they regulated?

3 Exploitation Collective licensing bodies are constituted and regulated under common law applicable to civil companies. Specific provisions included in the CPI also apply. The ministry of culture can control 3.1 Are there any formalities which apply to the transfer/ the validity of their statutes. assignment of ownership? The European directive of 26 February 2014, implemented in France by a new law dated 22 December 2016, contributed to make French courts, in compliance with article L.131-2 of the CPI, used uniform the regulation of collective licensing bodies throughout to decide that publishing contracts, audiovisual production contracts Europe. and performance contracts shall be executed with authors in written

The above law improved the management bodies’ transparency Therefore, if a writer expressly limited the assignment of its and organisation on the one hand, and modernised the management publishing rights to its editor and to the French market, he could of rights and granting multi-territorial licensing of online rights in prohibit his editor from assigning these rights to an English editor, musical works operated by these organisms on the other. but could not prevent a book edited in France from being sold on the English market.

3.6 On what grounds can licence terms offered by a The question is, in each case, what is the extent of the consent given collective licensing body be challenged? by the author, keeping in mind that French courts shall interpret the assignment contracts in favour of the author. Collective licences are subject to common law and can be challenged

France on any available pertinent ground. We note that French courts have 5 Copyright Enforcement decided on several occasions that the fact that only a small part of the material is used is not pertinent in challenging the licence since the user pays for a potential use of the material no matter the actual 5.1 Are there any statutory enforcement agencies and, if use of such material. so, are they used by rights holders as an alternative to civil actions?

4 Owners’ Rights Hadopi is a statutory agency, which has been put in place to monitor illegal downloading from the Internet. The CNC (the National 4.1 What acts involving a copyright work are capable of Cinematographic Center) and the APP are also empowered to handle being restricted by the rights holder? reports for establishing infringement acts. In addition, criminal jurisdiction or administrative bodies such as customs or DGCCRF As mentioned above, any exploitation of a copyright work shall are legally empowered to seek and punish copyright infringement be namely assigned/transferred or licensed. Therefore, any act not acts. They are used alternatively or in addition to civil actions. included into the assignment/licence is capable of being restricted by the rights holder and considered as an act of infringement. 5.2 Other than the copyright owner, can anyone else bring However, it is remarkable that more and more French courts take a claim for infringement of the copyright in a work? into account good faith and deduct implicit authorisations from the terms of the assignment contract and take the circumstances of each In addition to the copyright owner (the author himself or its case into account to identify the exact scope of the assignment. assignee), the CPI provides several cases where another person can bring a claim for infringement, including an exclusive licensee of a 4.2 Are there any ancillary rights related to copyright, video producer and an exclusive licensee of a phonograms producer, such as moral rights, and if so what do they protect, subject to any contradictory provisions of the licences. and can they be waived or assigned? Collective licensing bodies are also legally empowered to start legal action for their members, provided that such action remains within Under French law, moral rights and patrimonial rights are related to the limits of their statutes. a copyright. CPI qualifies moral rights as inalienable, perpetual and A recent regulation voted in on 7 July 2016 (see question 7.1) imprescriptible. empowers the CNC to file a criminal complaint – or exercises rights Legal doctrine usually divides moral rights into four components: of the victim when the prosecutor started the criminal action – when disclosure; authorship; respect of the work; and a right of reconsider. an audiovisual work is concerned. Pursuant to this definition, the author shall solely decide when the We can also mention the author’s special agent, who is also able to work shall be made available to the public for the first time. The bring a claim for infringement, provided he is expressly empowered author must be displayed to the public – whatever the use of the to do so. work – and has the right to control and prevent any change capable of affecting the integrity and the quality of the work. 5.3 Can an action be brought against ‘secondary’ The right of reconsider allows the author to claim for the withdrawal infringers as well as primary infringers and, if so, of the work from the market. This right is not easily implementable on what basis can someone be liable for secondary and is certainly subject to the compensation of the owner of the infringement? copyright. Subject to their express consent and in very specific cases, the Anyone infringing a copyright incurs civil liability towards the French Court has permitted authors to waive their moral rights, for copyright owner. French law does differentiate between primary example by abandoning the mention of their name. infringers and secondary infringers, and both are liable towards the Lastly, French law also enshrines related rights for performers. copyright owner regardless of their good faith or awareness of the infringing acts. Facts are appreciated differently when criminal action is concerned (see below section 6). 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works which have been put on the market with his consent? 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of Subject to the respect of moral and patrimonial rights as described infringement? above, exhaustion of rights is applicable to copyright so that an author or a copyright owner could not restrain subsequent dealings Yes. The CPI provides a limitative list of exceptions which can be in works which have been put on the European market with its relied upon as a defence to a claim of infringement: private and free consent. performances; copies or reproductions strictly reserved for private

use; analyses and short quotations justified by the critical, polemic, educational, scientific or informative nature of the work in which 6 Criminal Offences they are incorporated; press reviews; public speeches; artistic works published in auction catalogues; parody, pastiche and caricature; 6.1 Are there any criminal offences relating to copyright and access to the contents of an electronic database. infringement? A new law dated October 7, 2016 added to this list a specific exception regarding reproductions or representations of architectural Yes. Infringement is considered in France as a civil and a criminal and sculptural works permanently placed on the public area, realised offence. Victims are free to choose the civil or the criminal route. by private individuals for non-commercial use.

6.2 What is the threshold for criminal liability and what France 5.5 Are interim or permanent injunctions available? are the potential sanctions?

Yes. The CPI expressly provides interim and permanent injunctions, Contrary to civil actions, criminal offences require the claimant to for example to cease the infringing acts, to seize the infringing demonstrate that the defender was aware of the infringement and products or profits made by the infringers, to destroy the infringing acted voluntarily in bad faith. If a legal assumption exists that products or the material used for the infringement. Interim infringers acted in bad faith, such assumption is challengeable so injunctions are, in principle, only applicable for obvious and/or that infringers are entitled to demonstrate that they in fact acted in urgent circumstances, and are undertaken at the risk and expense good faith. A judge shall appreciate on a case-by-case basis the of the claimant. particular circumstances of the case and the actual involvement of the defendants in the acts to rule on the liability of the defendant as the main perpetrator or as complicit in the offence. 5.6 On what basis are damages or an account of profits calculated? The main sanctions are as follows: a maximum of three years of imprisonment and a maximum fine of €300,000, which can be CPI provides two methods for the calculation of financial damages. increased if the offence is committed by an organised gang. The victim can either (i) claim for damages assessed with respect to his losses on the one hand and the profits incurred by the infringers 7 Current Developments on the other hand, or (ii) claim a lump sum calculated with reference to the royalties he would have gained if he had authorised the use of the work. 7.1 Have there been, or are there anticipated, any The copyright owner and/or the author can also claim for damages significant legislative changes or case law developments? related to the damage to his moral rights and prejudice of his image.

A case law rendered two years ago illustrated the influence of the 5.7 What are the typical costs of infringement European Human Rights Convention and case law (Civ 1, 15 May proceedings and how long do they take? 2015 n° 13-27.391) on the French judges who used the balance of interests test when assessing a breach of a copyright owner’s rights Costs of infringement proceedings vary a lot depending on the rather than strictly applying the French system of exceptions as circumstances of each case. There are no standard legal costs. We described above (see question 5.4). could say, however, that typical costs may vary between €5,000 At that time, the French doctrine minimised the impact of such and €100,000 excluding VAT. A proceeding on the merits at first decision considering that French judges will certainly maintain instance may take between one and two years until a judgment is their previous case law based on the French system of exception; rendered. however, the judges will change the format of their motivation in order to fall within the format of the reasoning generated by the 5.8 Is there a right of appeal from a first instance balance of interests test. judgment and if so what are the grounds on which an Such consideration showed how French doctrine and judges are appeal may be brought? firmly attached to the French copyright system. Indeed, a decision rendered on 9 March 2017 by the Paris lower Yes. French courts of appeal can review the entire case. Therefore, court (TGI Paris 9 March 2017 n° 15-01.086) illustrates the above courts of appeal are entitled to reverse or confirm the first decision contradictory movement. in all or part of its provisions. This case involved two authors, a photographer and a sculptor, the latter invoking in defence that a representation of a famous 5.9 What is the period in which an action must be photography in his sculpture with no prior authorisation of the commenced? author could be justified by the freedom of expression and was necessary in a perspective of development of art and artistic thought The statute of limitation is five years for civil actions, commencing in a general “fair use movement”. The Paris Court reaffirmed the from the date that the owner knows or should have known about principle that the freedom of expression could justify a restriction the existence of the infringement. The statute of limitation is three to copyright, but considered that the balance of interests test was in years for criminal actions. The starting point may vary from one favour of photographer’s copyright. case to another since the principle is that the statute of limitations starts running only when the infringing activity has ceased. The law issued on 7 July 2016 – which created a new statute for the artists/performers based on the copyright model in order to increase their protection and ameliorate their position in the course of their relationship with producers bound to be legal assignees of

their rights and reinforced the music and film producers’ obligations network, could be qualified as copyright infringement (CJEU, 14 towards the authors in order to implement an effective transparency June 2017, aff. C-610/15). on the exploitation of the work and the benefits expected for the The above-mentioned Law dated 7 July 2016 contained several authors on such exploitation – has not increased, to our knowledge, provisions in support of the fight against counterfeiting on the the number of litigations for the defence of the authors and artists/ Internet. For example, the CNC is now entitled to start legal actions performers. beside or at his own initiative against illicit websites of streaming, The Law also includes provisions on digital content (see question but to our knowledge no such action has ever been started since the 7.2). Law came into force. The Law also provides a definition of the online service consisting of

France 7.2 Are there any particularly noteworthy issues around the automated referencing of artistic works and photos and entitles the application and enforcement of copyright in collective licensing bodies to negotiate licences with companies relation to digital content (for example, when a work commercialising such service. No negotiation has been rendered is deemed to be made available to the public online, public since the Law came into force. hyperlinking, etc.)? Last, as regards the jurisdiction issues concerning copyright infringement in digital contents, it appears that the most recent Recent case law confirms the system developing for digital content French and EU decisions rule that the accessibility of a website is – again backed by European regulations – according to which the sufficient to determine French courts’ jurisdiction for the damages editors and/or the authors of content on the Internet are deemed suffered in France in contradiction with former decisions which liable in the case of infringement, whereas the website host (ISP) required that the website was made and construed for the French shall only remove the infringing content when they are notified of public to accept their jurisdiction over the case. the infringement. Such a system of “notice down and take down” does not support a general obligation of surveillance. In this repsect, a recent decision refused to order the search engine Bing to deference all the results associating the word “torrent” with Elise Weisselberg three identified artists considering that such measure would amount Weisselberg Avocat to a general surveillance obligation. The Court reminded that such 25 rue du Général Foy kind of measures could only be ordered if they are effective and 75008 Paris strictly necessary and if they concern well-identified contents (TGI France

Paris, 8 July 2016, SNEP c/ Microsoft France et Inc., 16-51.682). Tel: +33 1 49 52 84 88 The Court of Justice of the European Union issued in its decision Fax: +33 1 49 52 00 42 dated 8 September 2016 (CJEU, C-160/15) a definition of the Email: [email protected] URL: www.weisselberg-avocat.com concept of “communication to the public” as regards hyperlinks. In order to preserve the balance between copyright and freedom Elise Weisselberg, who has been a member of the Paris Bar since of communication, the Court considered that it is to be determined 2001, opened Weisselberg Avocat in 2015, buoyed by the experience whether those links are provided without the pursuit of financial that she acquired at the Stehlin & Associés business law firm, where in gain by a person who did not know or could not reasonably have 2012 she was responsible for developing the intellectual property and known the illegal nature of the publication of those works or litigation business. whether, on the contrary, those links are provided for such purpose. Elise Weisselberg regularly takes part in intellectual property seminars More generally, liability of the professionals involved in offering and publishes articles in the general and specialist press. She teaches, content on the Internet is judged taking into account their actual role as of 2015, a course at the College Paris 8 related to copyright and photography. in offering the disputed content. It is only if they played an active role that they would be held liable for offering infringing content. Elise Weisselberg holds a Postgraduate Diploma in Intellectual Property from P. Y. Gautier and CAPA from the Paris Bar. In this respect, the Court of Justice of the European Union stated Elise Weisselberg is involved in pro bono work and takes part in the in a new case regarding platforms that making available and Paris Bar initiatives (e.g. Initiadroit). She is a member of FABA (The management of such platforms, allowing their users to locate French-American Bar Association). protected works and to share them in the context of a peer-to-peer

The focus of Weisselberg Avocat is advice and litigation in the field of intellectual property law and more generally in the field of corporate litigation. Weisselberg Avocat acts for French and international clients, and offers services tailored to the issues of each case and to the goals of each client in a proactive manner. Where a case requires it, Weisselberg Avocat works with other legal firms (employment law, criminal law and tax law, etc.) or other professional partners (ICC, financial experts, etc.) in order to offer global solutions.

Germany Thomas H. Schmitz

HOYNG ROKH MONEGIER Mathis Breuer

1 Copyright Subsistence 1.4 What is the duration of copyright protection? Does this vary depending on the type of work?

1.1 What are the requirements for copyright to subsist in a work? Generally, the period of protection does not depend on the date of creation; it expires 70 years after the author’s death. However, there are exceptional cases that lead to a shorter period. Anonymous and According to the German Act on Copyright and Related Rights pseudonymous works are only protected for 70 years after creation. (Urheberrechtsgesetz – UrhG) only the author’s own intellectual Furthermore, different periods apply for so-called related rights creations constitute works. To be considered as capable of being holders. Whereas filmmakers and broadcasters enjoy protection of protected in that sense, the work has to be a personal intellectual their works for 50 years, the protection periods for audio recordings creation that has reached a certain level of originality, which can and performers have recently been extended from 50 to 70 years. generally already be assumed in case of minimal creativity. After 25 years, the rights of concert and theatre organisers expire; the rights in databases expire after 15 years. The shortest protection 1.2 On the presumption that copyright can arise in period of one year applies for journalistic publications. literary, artistic and musical works, are there any other works in which copyright can subsist and are there any works which are excluded from copyright 1.5 Is there any overlap between copyright and other protection? intellectual property rights such as design rights and database rights? According to the exemplary and non-exhaustive catalogue provided in the UrhG, protected works in the literary, scientific and artistic It is, indeed, possible and not uncommon that copyright and other domain include, in particular, literary works, such as written works, intellectual property rights, i.e. trademark rights, protect a work speeches and computer programs, musical and pantomimic works, simultaneously. An additional protection may also exist based on including works of dance, artistic works, like works of architecture unfair competition law. and of applied art and drafts of such works, photographic and cinematographic works, illustrations of a scientific or technical 1.6 Are there any restrictions on the protection for nature, such as drawings, plans, maps, sketches, tables and three- copyright works which are made by an industrial dimensional representations. Besides, there exist various so-called process? related rights that subsist in artistic performances, sound and film recordings, broadcasting, databases and journalistic publications. No, there are not. These rights give the entitled person a rather similar protection, but for a shorter period. A mere idea, a concept or a scientific theory cannot as such be 2 Ownership protected under copyright. 2.1 Who is the first owner of copyright in each of the 1.3 Is there a system for registration of copyright and if works protected (other than where questions 2.2 or so what is the effect of registration? 2.3 apply)?

The validity of a copyright is not dependent on registration. The The creator of the work, who is always a natural person, owns a right rather arises from the creation of the work and therefore copyright. Therefore, neither an employer nor a customer can own commences from the very moment of creation and from the mere a copyright of work created by an employee. existence of a piece of work meeting the legal requirements for copyright protection.

2.2 Where a work is commissioned, how is ownership of 3.3 Are there any laws which limit the licence terms the copyright determined between the author and the parties may agree (other than as addressed in commissioner? questions 3.4 to 3.6)?

The sole right owner is the author (or his heir) himself. Under Beside limitations because of the general law, there are some German copyright law, a work cannot be created in favour of another particular rights of the author that cannot be waived or licensed, natural or legal person. The concept of “work for hire” is unknown as they are considered to be inherent personal rights. Therefore, in Germany. Rather, the copyright is a personal right of the author. agreements that are concluded regardless of these rules are deemed In order to comply with the practical realities, the commissioner can void.

Germany be granted a right to use and exploit the work. The extent of this right depends on the individual agreement, which may be explicit as 3.4 Which types of copyright work have collective well as implicit and that may relate to a future work. licensing bodies (please name the relevant bodies)?

2.3 Where a work is created by an employee, how is The three major collective licensing bodies are: ownership of the copyright determined between the ■ GEMA (Gesellschaft für musikalische Aufführungs- und employee and the employer? mechanische Vervielfältigungsrechte / Society for musical performing and mechanical reproduction rights): GEMA Irrespective of whether a work is created by an employed, self- represents the usage rights deriving from authors’ rights (e.g., employed or private person, the copyright always arises and remains mechanical licensing, broadcast licensing, synchronisation licensing) for the musical works of composers, lyricists, and with the author himself. This also applies for job-related creations. music publishers. GEMA mainly asserts rights for the public Nevertheless, the employer may usually use and exploit the performance of protected musical works. work, since the author is obliged to grant the relevant rights to his ■ VG Wort (Verwertungsgesellschaft Wort / Collecting employer. This is often determined in the employment agreement society-word): VG Wort administers in particular the rights or takes place impliedly. In case of a company transfer, such right for reproduction of textual works, public lending, audio to use will be transferred as well. and audiovisual rights. The members are the authors and translators of fiction, journalists, screenwriters, authors and 2.4 Is there a concept of joint ownership and, if so, what translators of scientific works and corresponding publishers. rules apply to dealings with a jointly owned work? ■ VG Bild-Kunst (Verwertungsgesellschaft Bild-Kunst / Collecting society-image-art): VG Bild-Kunst represents the The German copyright law recognises joint ownership of both copyrights of creators of visual art. two and multiple authors. Even a small contribution is sufficient to become joint author. The community of joint owners may 3.5 Where there are collective licensing bodies, how are only dispose over the copyright together. Consent is required for they regulated? every publication, exploitation, as well as for every amendment, of the work. In order to prevent conflicts, it is common use to There is a particular act on licensing bodies (Verwertungs- conclude joint owner agreements especially in the fields of software gesellschaftengesetz) providing rules especially with regard to development or works of applied art. obligations to administer and obligations to contract. Collective licensing bodies may not refuse entry to authors that fulfil the entry requirements. Furthermore, they are obliged to prosecute all rights 3 Exploitation transferred to them. It is common practice that the owner of a work signs a standard 3.1 Are there any formalities which apply to the transfer/ agreement in order to enable the licensing body to enforce his rights assignment of ownership? on its behalf.

Apart from inheritance, it is not possible to transfer a copyright 3.6 On what grounds can licence terms offered by a under German law, there are no formalities either. The owner collective licensing body be challenged? has, however, great freedom in the contractual arrangements when designing or drafting a licence agreement. In this manner the The collective licensing bodies have to offer licence terms that owner is, for example, free to grant a comprehensive right to use shall be considered as appropriate and balanced. Before initiating and exploit as well as limited rights, especially with regard to time, proceedings before the ordinary courts, disputes are heard by a content, territory. A licence may also be granted exclusively or non- special arbitration board established at the German Patent and exclusively. Trademark Office.

3.2 Are there any formalities required for a copyright licence? 4 Owners’ Rights

In general, there are no formal rules for the conclusion of a licence 4.1 What acts involving a copyright work are capable of contract. Thus, a licence agreement can be concluded orally or even being restricted by the rights holder? impliedly. However, the law provides an exception of this principle where the agreement concerns unknown types of use. In this case, The right owner is entitled to prohibit others from using and written form is mandatory. exploiting his work without his permission. He is, however, also free in his decision whether or not to tolerate an unauthorised use.

care to prevent such infringements. The resulting liability is limited 4.2 Are there any ancillary rights related to copyright, to injunctive relief; damages are not included. However, continuing such as moral rights, and if so what do they protect, infringing activities after having been made aware of the relevant and can they be waived or assigned? circumstances may also qualify as primary infringement. Therefore, once a specific infringement has been reported to a platform holder, a The owner has so-called author’s personal rights to his work of reasonable duty, not only to remove the concrete infringing content, authorship, which are moral rights with a high personal nature. but also to implement measures in order to prevent future repetitions In particular, these rights include the right of first publication, the of comparable infringements, arises. right to be acknowledged as the author and the right to prohibit One of the most important fields of application of this principle is any distortion or mutilation of the work, where such an act is or the concept of interferer liability of internet platform or website would be prejudicial to his honour or reputation, even if the right operators for copyright infringements of their users. Germany of modification has been granted to the respective third party. In general, any waiver or contractual transfer of these rights is invalid. 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of 4.3 Are there circumstances in which a copyright owner infringement? is unable to restrain subsequent dealings in works which have been put on the market with his consent? Unlike the US copyright law, German law does not provide for a general broad and flexible “fair use” exemption, but exhaustively According to the principle of exhaustion, also known as “first sale lists certain limitation provisions and restrictions on the absolute doctrine” in Northern America, the author’s right to distribute a right of the author for the benefit of the public. particular work is exhausted, if the relevant item has been put into In particular, there exists an exemption for the reproduction of work circulation on the market for the first time by or with consent of the for private use under certain circumstances and within the scope of rights holder in one of the Member States of the European Union or a private copy. Certain other exemptions apply in favour of copying in a state that is a party to the Agreement on the European Economic for the purpose of citation, news reporting, for scientific purposes, Area. From there on, the copyright owner cannot prevent the for privileged institutions, such as public libraries, and for temporary particular item from being traded and distributed freely. and/or incidental copies. In addition, a new and independent work created because of the free use of the work of another author may 5 Copyright Enforcement be published or exploited without the consent of the author of such work. Besides, a potential defendant may deny the prerequisites of 5.1 Are there any statutory enforcement agencies and, if a copyright in the particular work or refer to the principle of so, are they used by rights holders as an alternative to civil actions? exhaustion.

No, an alternative to civil actions does not exist under German law; 5.5 Are interim or permanent injunctions available? in particular, there are no statutory enforcement agencies. In case of unlawful import or export, customs authorities are, at request of the Both interim and permanent injunctions are available and both are right owner, entitled to seize obviously copyright infringing goods. common under German law. The requirements for evidence in preliminary injunction 5.2 Other than the copyright owner, can anyone else bring proceedings are lower than “in principle” proceedings, i.e. affidavits a claim for infringement of the copyright in a work? are considered as admissible evidence in preliminary injunction proceedings. Additionally, courts may grant a preliminary Apart from the right owner himself, only exclusive licensees are injunction without giving notice to the defendant and, consequently, entitled to sue without a specific permission. without a prior oral hearing. The right to sue of a non-exclusive licensee depends on the authorisation of the right owner, which can be given in two different 5.6 On what basis are damages or an account of profits ways: the right owner may either give his permission to initiation of calculated? each particular law suit or a general permission. In the latter case, the authorisation is often already contained in the licence agreement. In the field of copyright and intellectual property law in general, German courts offer to the claimants to choose between three 5.3 Can an action be brought against ‘secondary’ methods for calculating their damages, namely own lost profits, the infringers as well as primary infringers and, if so, infringer’s profit and a calculation based on a fictional licence fee. on what basis can someone be liable for secondary This means, the claimant can demand either a refund of his own infringement? lost profits, the infringer’s profits generated by the infringement (usually requiring the infringer to render accounts on the number If the secondary infringer intentionally and knowingly makes of infringing products sold, turnover, material and production costs, a casual contribution to the direct infringement of a copyright or etc.) or a hypothetical licence fee, basically determined by the court any other intellectual property right by third parties, an action can in the amount of a royalty rate in line with prevailing market terms. be brought against him as well. According to German case law, Courts grant compensation for immaterial damages only in very liability requires actual and concrete knowledge of the respective exceptional cases. Punitive damages do not exist under German infringing acts, the legal and factual possibility of preventing the law at all. direct infringements as well as the violation of a reasonable duty of

5.7 What are the typical costs of infringement 6.2 What is the threshold for criminal liability and what proceedings and how long do they take? are the potential sanctions?

The costs as well as the duration of infringement proceedings Negligent copyright infringements are not criminally relevant; depend on the specific case, especially on the scope, the subject only intentional acts are regulated by the criminal law. Copyright matter and the legal and factual circumstances. Court fees and infringements are criminal offences, which are prosecuted only reimbursable attorney fees are calculated based on the value of the on request or in case of special public interest. Anyhow, due to matter in dispute. However, major law firms usually charge by insufficient human and material resources, criminal proceedings are hourly rates or negotiate a fee arrangement. Generally, litigation rather rare.

Germany costs are significantly lower than in the UK or the US. Most criminal offences provided in the German copyright law lead Preliminary injunctions are often granted within a few days, while to an imprisonment of up to three years – in case of commercial main proceedings in the first instance often take eight to 12 months. activity, up to five years. Alternatively, the offender can, and this is the usual case, be sentenced to a fine. Sanctions for attempts are milder. 5.8 Is there a right of appeal from a first instance judgment and if so what are the grounds on which an appeal may be brought? 7 Current Developments The German court system has two appeal instances. While the first instance takes place at a regional court, so-called higher regional 7.1 Have there been, or are there anticipated, any courts deal with first appeal proceedings, in which the court reviews significant legislative changes or case law factual circumstances only under narrow circumstances, but legal developments? errors completely. The second appellate court competent for appeals against appeals is the Federal Court of Justice (Bundesgerichtshof In the summer of 2017, the German Federal Parliament voted to – BGH), which examines the former decision only with regard to amend the German Act on Telemedia. The McFadden ruling of the legal errors. A second appeal needs to be permitted by the Higher European Court of Justice (ECJ) made this adjustment necessary Regional Court or the BGH. in order to contribute to increase the open WiFi coverage in Decisions in preliminary proceedings can be appealed only once Germany by providing network operators (which often are also before the Higher Regional Court, meaning that the BGH never public institutions and private individuals) with the necessary legal reviews preliminary injunctions. certainty in relation to potential liability for intellectual property infringements committed by users without any knowledge of the operator. 5.9 What is the period in which an action must be According to the adoptions, any liability of the network operators commenced? for such infringements as intermediaries (so-called Störerhaftung) is explicitly excluded. Essentially, the network operators shall also In order to avoid the statutory limitation period, the proceedings be relieved from any corresponding judicial and extrajudicial cost have to be initiated within three years after the claimant obtains risks. At the same time, operators shall not be obligated to provide knowledge of the circumstances giving rise to the claim and of the their WiFi service for registered users and/or under password identity of the obligor, or would have obtained such knowledge if he protection only but of course remain free to restrict their service in had not shown gross negligence. The period always starts at the end such a manner. of a year. Apart from this general rule, the limitation period is 10 years from the day the claim arose irrespective of any knowledge of In order to offer protection against copyright infringement, the the claim and 30 years after the act that triggered the claim. new law lays down that a rights holder may request the operator to block access to particular data contents or entire websites if these A preliminary injunction requires an element of urgency. Therefore, information or websites have been used for intellectual property it is necessary to file the respective request within a period of several infringements from within his network and there exists no less weeks following knowledge of the infringement. severe means to exclude further acts of infringement. It remains to be seen if the adoptions will manage to strike a fair 6 Criminal Offences balance between the promotion of open WiFi networks in Germany and the material interests of rights holders who legitimately demand protection against the particular risks associated with internet access 6.1 Are there any criminal offences relating to copyright points which may be openly and anonymously used by a variety of infringement? users.

Under German copyright law, unlawful exploitation of copyrighted works and/or infringement of copyrights or related rights are 7.2 Are there any particularly noteworthy issues around criminal offences. The circumvention of technical measures the application and enforcement of copyright in relation to digital content (for example, when a work designed to protect a work is an offence as well. The acts are is deemed to be made available to the public online, punishable irrespective of whether the crime is completed or only hyperlinking, etc.)? attempted. In a long-awaited judgment in September 2016 (GS Media v Sanoma Media Netherlands and Others (C-160/15)), the ECJ ruled that the posting of a hyperlink to unauthorised content protected by copyright that is freely available on another website hosted by a third

party may constitute a “communication to the public” and therefore regard to hyperlinking. The ECJ did not specify which checks are a copyright infringement, if the person posting the link knew or necessary to ensure the legality of the publication and the presumed could reasonably have known the illegal nature of the publication knowledge about the illegal nature of content seems to apply to of those works on that other website. In addition, this bad faith virtually all owners of commercial websites or social media pages of the person responsible is presumed, if the link was posted by irrespective of whether a hyperlink posting is directly connected a commercial party pursuing financial gain. In such a case, the to any financial gain. In any case, hyperlinking to any third party person responsible would therefore have to prove that he did not website yields high risks, especially for operators of websites which know or could not have known about the unauthorised nature of the could be classified as commercial in the broadest sense. publication and that the necessary checks to ensure the legality of The aforesaid generally also applies to framing, i.e. the practice of the publication have been carried out. linking to content in a way that does not use a hyperlink consisting In the German legal literature, the ECJ-ruling which marked a of words, but makes linked content already visible on the website Germany departure from previous case law on the communication to the public that contains the link. In previous decisions, the ECJ made clear that right was widely criticised as being detached from the dogmatic framing should not be treated differently than hyperlinking, so that of copyright law and creating even more legal uncertainty with the principles of the recent judgment may also apply in this regard.

Thomas H. Schmitz Mathis Breuer HOYNG ROKH MONEGIER HOYNG ROKH MONEGIER Steinstrasse 20 Steinstrasse 20 40212 Düsseldorf 40212 Düsseldorf Germany Germany

Tel: +49 211 550 22 0 Tel: +49 211 550 22 0 Fax: +49 211 550 22 550 Fax: +49 211 550 22 550 Email: [email protected] Email: [email protected] URL: www.hoyngrokhmonegier.com URL: www.hoyngrokhmonegier.com

Thomas H. Schmitz, partner of the firm, was admitted to the Bar in Mathis Breuer has been working as an attorney since 2013. He 1998 and advises German and international clients in various fields of advises and represents national and international clients in various Intellectual Property law, in particular trademarks and designs, unfair fields of intellectual property law, in particular in the areas of competition and copyrights. He is a highly experienced litigator with a trademarks, unfair competition, design and copyrights. focus on plagiarism and trademark infringement. He also advises on Prior to joining HOYNG ROKH MONEGIER and during his legal the development of his clients’ advertising and marketing strategies, education, Mathis worked for a number of other international law firms, as well as product development. He drafts and negotiates licences a specialist district court division for intellectual property matters, and and cooperation agreements and advises on IP intensive transactions. the operating subsidiary of a large sports federation. During his studies at the universities of Cologne and Lausanne, he Mathis has gained considerable litigation experience for clients from specialised in Intellectual Property law. He has focused further on this various sectors, such as consumer goods and electronics, cosmetics specialisation in different law firms and as in-house counsel of a major and pharmaceuticals. telecommunications company. Thomas H. Schmitz is also very active in numerous teaching activities with the University of Maastricht and is With respect to copyright matters, he dealt, inter alia, with the a visiting lecturer at Hagen Law School. marketing of TV broadcasting rights of popular sporting events, the assignment of usage rights to video games and has advised mobile phone manufacturers in connection with private copy levies asserted by collecting societies.

HOYNG ROKH MONEGIER is a specialised European intellectual property law boutique created in 2015 when the well-established top tier IP firms Hoyng Monegier and Reimann Osterrieth Köhler Haft (ROKH) decided to join forces. HOYNG ROKH MONEGIER gathers up to 100 passionate IP professionals with offices in Amsterdam, Brussels, Düsseldorf, Madrid, Mannheim (branch office), Munich and Paris. In all of its locations, HOYNG ROKH MONEGIER services the needs of clients in the field of intellectual property law, including patents and trade secrets, trademarks, copyrights and design rights, as well as in related fields, such as pharmaceutical regulatory law, unfair competition, media and advertising law and all IP-related contracts.

India Dheeraj Kapoor

LexOrbis Aprajita Nigam

Also, the scope of copyright in architectural works is limited to 1 Copyright Subsistence artistic character and design, and does not extend to processes or methods of construction. 1.1 What are the requirements for copyright to subsist in a work? 1.3 Is there a system for registration of copyright and if so what is the effect of registration? In India, copyright subsists in the following categories of works: ■ Original literary, dramatic, musical and artistic works. System: ■ Cinematograph films. Acquisition of copyright is automatic and the right comes into ■ Sound recordings. existence as soon as the work is created. Additionally, there is The word ‘original’ has not been defined in The Copyright Act, 1957 also a system for registration of copyright under which the author/ (“the Act”), but has derived its connotation through case laws. It is publisher/owner or any other person interested in the copyright in largely understood as a work that ‘owes its origin to the author’; the any work may make an application to the Registrar of Copyrights work must originate from the skill and labour of the author and must for entering particulars of that work in the Register of Copyrights. not be a copy of any other work. In case of an artistic work, which is used or is capable of being It is important to highlight that the word ‘original’ is prefixed used in relation to any goods or services, the application must also to literary, dramatic, musical and artistic works and not to include a statement that no trade mark that is identical/deceptively cinematograph films and sound recordings, as the latter are works similar to the said artistic work has been applied for registration or made by using the former categories of works. For example, a is registered under the Trade Marks Act. This statement must also cinematograph film is made by making use of a script which is a be corroborated by a certificate from the Registrar of Trade Marks. literary work. Though there is no express stipulation regarding Effect: ‘originality’ in respect of cinematograph films and sound recordings, The Register of Copyrights is a prima facie evidence of the copyright does not subsist in a cinematograph film if a substantial particulars entered therein, and documents purporting to be copies part of that film is an infringement of the copyright in any other of any entries therein, or extracts therefrom certified by the Registrar work. Likewise, copyright does not subsist in a sound recording of Copyrights shall be admissible as evidence in all courts without made in respect of a literary, dramatic or musical work if in making further proof or production of the original. the sound recording, copyright in such work has been infringed. Another prerequisite of copyright protection is the fixation of work 1.4 What is the duration of copyright protection? Does in a tangible form. Indian regime follows the fundamental rule of this vary depending on the type of work? copyright law, laid down in Article 9(2) of TRIPS and Article 2 of WCT, 1996, that copyright does not subsist in ideas and only The duration of copyright protection varies depending on the type protects original expression of the ideas. of work. The term of protection for different kinds of works is as follows: 1.2 On the presumption that copyright can arise in ■ Literary, dramatic, musical and artistic works published literary, artistic and musical works, are there any during the lifetime of the author – until 60 years from the other works in which copyright can subsist and are beginning of the calendar year which follows the year in there any works which are excluded from copyright which the author dies. protection? ■ Cinematograph films – until 60 years from the beginning of the calendar year which follows the year in which the In addition to literary, artistic and musical works, copyright also cinematograph film is published. exists in dramatic works, sound recordings and cinematograph films. ■ Sound recording – until 60 years from the beginning of the However, copyright does not subsist in any cinematograph film if a calendar year which follows the year in which the sound substantial part of the film is an infringement of the copyright in recording is published. any other work, and in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed.

1.5 Is there any overlap between copyright and other 2.2 Where a work is commissioned, how is ownership of intellectual property rights such as design rights and the copyright determined between the author and the database rights? commissioner?

India does not allow parallel protection and statutorily clarifies that When a work is commissioned, generally the copyright in the work copyright does not subsist in any design which has been registered remains vested with the author/creator of the work, unless the under The Designs Act, 2000. Furthermore, though unregistered rights are assigned in favour of the commissioner in the form of a designs are protected under the realm of Copyright Law, copyright written and duly executed document/assignment agreement. Where in any unregistered design, which is capable of being registered the assignee/commissioner becomes entitled only to a particular India under The Designs Act, will cease to exist if the article to which set of rights out of those comprised in the copyright through the the design has been applied is reproduced more than 50 times by assignment, he/she shall be treated as the owner of those rights, and an industrial process by the owner of the copyright or, under his as regards rest of the rights comprised in the copyright which have license, by any other person. not been so assigned, the author shall be treated as the owner. Additionally, there is also an overlap with respect to the protection However, specifically in the case of a photograph, painting, portrait, of artistic works between copyright law and trademark law. The engraving or a cinematograph film made or created for valuable artistic work, which is used or capable of being used in relation to consideration, the person who has commissioned such work shall any goods or services, can be protected both under trademark and be the first owner of the copyright therein (in the absence of any copyright laws. agreement to the contrary). The definition of ‘literary work’ includes computer programs, tables If the work in question is a public speech or address which is made and compilations including computer databases. Thus, databases on behalf of another person/commissioner then the commissioner are protected under the copyright law as literary work. shall be the first owner of the copyright therein.

1.6 Are there any restrictions on the protection for copyright 2.3 Where a work is created by an employee, how is works which are made by an industrial process? ownership of the copyright determined between the employee and the employer? Copyright in any unregistered design, which is capable of being registered as an industrial design, will cease to exist if the article to The general rule is that the employer shall have copyright in the which the design has been applied is reproduced more than 50 times work created/authored by an employee in the course of employment by an industrial process by the owner of the copyright or, under his unless there happens to be an agreement to the contrary. license, by any other person. Where any literary, dramatic or artistic work is made by the author in the course of employment by the proprietor of a newspaper, periodical, etc. for the purpose of publication in such media, the 2 Ownership proprietor shall be the owner of the copyright in the work (in the absence of any agreement to the contrary). However, such 2.1 Who is the first owner of copyright in each of the works ownership of the proprietor/employer shall be limited to the protected (other than where questions 2.2 or 2.3 apply)? publication/reproduction of the work in such or other like media, while in all other respects, the author would still remain the first There is a distinction between the author of a work and the owner owner of the copyright in the work. of copyright therein, especially in those cases where the author has In the case of a public speech/address, the person making or created the work in the course of employment or at the instance delivering such work or the person on whose behalf such work is so of another person and/or under a contract governing the ownership made or delivered shall be the first owner of the copyright therein, of copyright. Nevertheless, the first owner, generally (as per the even if either of them is employed by another person who arranges Act), is the author of the work and since the term “author” has been such speech or public address or on whose behalf or premises such defined in the Act for several categories of works, the first owner for address or speech is delivered. each category of work will be as follows:

■ the author/creator in respect of a literary or dramatic work; 2.4 Is there a concept of joint ownership and, if so, what ■ the composer in respect of a musical work; rules apply to dealings with a jointly owned work? ■ the artist in respect of an artistic work (“artistic work” means and includes a painting, sculpture, drawing, engraving, In India, the Act recognises the concept of “work of joint authorship” photograph, work of architecture and any other work of which means a work produced by collaboration of two or more artistic craftsmanship) other than a photograph; authors in which the contribution of one author is not distinct from ■ the person taking the photograph in respect of a photograph; the contribution of the other author(s). The courts in India have not ■ the producer, in relation to a cinematograph film or sound yet fully defined and determined as to what amounts to an active recording; and and close intellectual collaboration which is essential in the case ■ the person who causes the creation of the work in the case of claiming joint authorship. In the case of Angath Arts Private of any literary, dramatic, musical or artistic work which is Limited v. Century Communications Ltd. and Anr. 2008(3) ARBLR computer-generated. 197(Bom), the High Court of Bombay held that the ‘joint owner of a Where the work is a public speech or address, the person who copyright cannot, without the consent of the other joint owner, grant delivers such work in public shall be the first owner of the copyright a licence or interest in the copyright to a third party’. Further, in therein. However, if such work is made/delivered by a person on the case of a work of joint authorship, all the authors (two or more) behalf of another person, such other person on whose behalf the have to individually satisfy the conditions essential for subsistence of work is so made or delivered will be the first owner. copyright in the work. Joint authors enjoy all the rights granted by

the Act as mentioned above including bringing a suit for infringement and being entitled to reliefs such as injunction, damages, account of 3.5 Where there are collective licensing bodies, how are profits, etc. and the term of copyright of a work of joint authorship is they regulated? calculated with respect to the author that dies last. The collective licensing bodies called the Copyright Societies are regulated by the following: 3 Exploitation 1. Authors and owners – the authors and owners, whose rights are administered, have collective control over these copyright societies. These societies, in such manner as prescribed, have 3.1 Are there any formalities which apply to the transfer/ to: India assignment of ownership? ■ obtain approval of authors/owners of rights for their procedure of collection and distribution of fees; An assignment of the copyright must conform to the following ■ obtain approval for utilisation of any amounts collected as formalities: fees for any purpose other than distribution to the authors/ ■ Must be in writing and should be signed by the assignor or his owners of rights; and duly authorised agent. ■ provide such owners regular, full and detailed information ■ Must identify the work, and shall specify the rights assigned, concerning all its activities, in relation to administration duration, territorial extent and the amount of royalty and any of their rights. other consideration payable. 2. Registrar of Copyrights – Copyright Societies shall submit to the Registrar of Copyrights such returns as may be prescribed. 3.2 Are there any formalities required for a copyright Any officer authorised by the Central Government may call licence? for any report/record of any Copyright Society to check whether the fees collected by the society in respect of rights administered by it are being utilised or distributed in A copyright licence must conform to the following formalities: accordance with the provisions of the Act. ■ Must be in writing and should be signed by the licensor or his 3. Central Government – the Registrar of Copyrights submits duly authorised agent. the applications received for registration of Copyright ■ Must identify the work, and shall specify the rights licensed, Societies to the Central Government which may register such duration, territorial extent and the amount of royalty and any association of persons as a Copyright Society. In case the other consideration payable. Copyright Society is being managed in a manner detrimental to the interests of the owners of rights concerned, the Central Government may cancel the registration of such society, after 3.3 Are there any laws which limit the licence terms such inquiry as may be prescribed. parties may agree (other than as addressed in questions 3.4 to 3.6)? 3.6 On what grounds can licence terms offered by a If the author is a member of a copyright society, a copyright licence collective licensing body be challenged? in any work contrary to the terms and conditions of rights already licensed to copyright societies shall be void. Any person aggrieved by the tariff scheme published by the Further, no copyright licence in any work to make a cinematograph Copyright Societies may appeal to the Copyright Board and the film can affect the right of the author to claim an equal shareof Board may, after holding any necessary inquiry, make orders royalties and consideration payable in case of utilisation of the work necessary to remove any element, anomaly or inconsistently therein. in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall. Likewise, 4 Owners’ Rights no copyright licence in any work to make a sound recording which does not form part of any cinematograph film can affect the right of the author to claim an equal share of royalties and consideration 4.1 What acts involving a copyright work are capable of payable for any utilisation of such work in any form. being restricted by the rights holder?

3.4 Which types of copyright work have collective The Act clearly lays down those acts which are capable of being licensing bodies (please name the relevant bodies)? restricted by the rights holder in respect of all categories of works, as follows: The 1994 amendment in the copyright statute extended the operation For a literary, dramatic or musical work (other than a computer of legal provisions relating to collective licensing bodies called the program which also falls in the category of literary works), acts Copyright Societies to all rights relating to all domains of works. of reproducing in any material form including storing through Presently, the following four copyright societies are registered in electronic means, issuing copies to the public not being those already India: in circulation, performing or otherwise communicating to the public, making a cinematograph film or sound recording of the work, ■ Indian Reprographic Rights Organization (IRRO) for authors and publishers. making any translation or adaptation or effectuating any of the above in respect of a translation or adaption of the work can be restricted. ■ Indian Singers Rights Association (ISRA) registered for performers (Singers) Rights. For a computer program, in addition to all the above acts, selling ■ Indian Performing Rights Society Limited (IPRS) for musical and giving via commercial rental or offering for sale or rental any works. (Re-registration is pending.) copy of the computer program can be restricted by the rights holder provided the essential object of such rental is the computer program ■ Phonographic Performance Limited (PPL) for sound recordings. (Re-registration is pending.) in question.

For an artistic work, acts of reproducing in any material form the doctrine of national exhaustion or international exhaustion. including storing through electronic means, depicting a two- However, as on the date of writing this chapter, India follows dimensional work in three-dimensions or vice versa, issuing copies the national exhaustion principle owing to a catena of judgments to the public not being those already in circulation, performing in this regard. As such, the online availability with regard to any or otherwise communicating the work to the public, making a subsequent dealings in copyrighted content would also be subject to cinematograph film out of the work, making any adaptation or and similarly attract the principle of national exhaustion. However, effectuating any of the above in respect of an adaption of the work the courts are yet to fully address as to how this principle applies to can be restricted. digital content protected by copyright. For a cinematograph film, making a copy of the film including a India photograph of any image forming a part thereof and/or storing of 5 Copyright Enforcement such copy in any medium by electronic or other means, giving via the sale or commercial rental or offering for sale or for such rental any copy of the film, and communicating the film to the public can 5.1 Are there any statutory enforcement agencies and, if be restricted. so, are they used by rights holders as an alternative For a sound recording, making any other sound recording containing to civil actions? it or storing it in any medium by electronic or other means, giving via sale or commercial rental or offering for sale or for such rental Apart from the right to a civil action by way of filing a suit for any copy of the sound recording, and communicating it to the public infringement, remedies under criminal law are also provided to the can be restricted. right holders. The right holder or the authorised representative can file an official complaint to the local police authorities informing In India, the most common types of violation of the above rights about the infringement of his rights or directly approach the as regards infringement actions is with respect to artistic works Magistrate and file a criminal complaint so that the competent court having an overlap with trade mark law, and piracy in the media and can direct the police authorities to investigate further in the matter. entertainment space pertaining to musical works, sound recordings The Police machinery has a pertinent role in combating copyright and cinematograph films. infringement. Special state specific cells/units such as Anti-Piracy Cell-Kerala Police, Telangana Intellectual Property Crime Unit 4.2 Are there any ancillary rights related to copyright, (TIPCU), etc. have been created which may be approached by such as moral rights, and if so what do they protect, the rights holders for protection and enforcement of their rights. and can they be waived or assigned? Additionally, the owner of copyright or his duly authorised agent may give a notice to the Customs authorities to suspend the clearance Yes, the moral rights of an author are duly recognised and protected of imported infringing copies of work. under law, whereby the author can claim authorship of the work In view of the above, the criminal remedies can be considered an irrespective of any subsequent assignment of copyright therein. alternative to civil actions. Moreover, these rights serve to protect against any distortion, mutilation, modification or degradation of the work affecting the author’s honour or reputation, even after the expiration of the term of 5.2 Other than the copyright owner, can anyone else bring copyright and, thus, can be exercised also by the author’s legal heirs/ a claim for infringement of the copyright in a work? representatives. Moral rights, which are independent of the author’s copyright, can be understood as the author’s right to paternity and Apart from the owner of copyright, an exclusive licensee can also integrity with respect to the work. These special rights of an author bring a claim for infringement. cannot be assigned; however, as to whether the author may waive or relinquish them remains debatable as the Act does not specifically 5.3 Can an action be brought against ‘secondary’ cover such a scenario. However, in the case of Sartaj Singh Pannu infringers as well as primary infringers and, if so, v. Gurbani Media Pvt. Ltd. and Ors., 2015, the court has observed on what basis can someone be liable for secondary that if waiver of moral rights as regards credit/paternity/authorship is infringement? voluntary, the same would not be contrary to public policy and thus permissible. As such, waiving a moral right may be permissible on An action can be brought against secondary infringers in addition a case-by-case basis especially if it is not opposed to public policy. to primary infringers and both can be impleaded as co-defendants in an infringement law suit or as co-accused in a criminal complaint for infringement. Secondary infringers can be made liable for 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works copyright infringement if they have been indirectly involved in, which have been put on the market with his consent? have contributed to or abetted an act of infringement. Although secondary infringement has not been so defined under the Act, one Yes, such circumstances do exist and are recognised where such instance wherein secondary liability can arise is when a person, subsequent dealings in works cannot be restrained by the copyright without a licence from the copyright owner, permits for profit any owner. More particularly, in the case of literary (not being a place to be used for communicating the work to the public and where computer program), dramatic, artistic or musical works, a copy of such communication constitutes infringement of the copyright in the the work which has been sold even once, or is otherwise already in work. The defence to this is when the person who has permitted any circulation, cannot be restrained by the copyright owner from being place to be so used was not aware and had no reasonable ground issued to the public. This concept is also referred to as the principle to believe that such communication to the public would constitute of exhaustion. infringement of copyright. As far as parallel importation is concerned, it has been the subject Thus, for a case of secondary infringement to be made out, the intent of much debate and deliberation as to whether India should follow and/or knowledge on the part of the secondary infringer as to the occurrence of infringement is material and any indirect involvement

or contribution in violating any of the bundle of rights of the owner especially if the act of infringement has been grave or flagrant in of copyright in a work with such knowledge or intent, either express nature. Damages can also be exemplary in nature so as to set a or implied, would constitute secondary infringement. deterrent for others. In Time Incorporated v. Lokesh Srivastava Further, even intermediaries or ISPs can be made liable for (2005)30 PTC3(Del), it was observed that “…the time has come secondary infringement as regards hosting digital content protected when the Courts dealing with actions for infringement of trademarks, by copyright if it is shown that they have contributed or possess copyrights, patents etc. should not only grant compensatory damages actual knowledge of such infringement. but award punitive damages also with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, 5.4 Are there any general or specific exceptions which India they would be liable not only to reimburse the aggrieved party but can be relied upon as a defence to a claim of would be liable to pay punitive damages also, which may spell infringement? financial disaster for them”.

Any activity that falls under the scope of fair use and like provisions However, in cases where a defendant proves that he was not aware such as fair dealing in any work for private or personal use including and had no reasonable ground for believing that copyright subsisted research/criticism or review/reporting of current events or current in the work at the date of infringement, the plaintiff will be entitled affairs, reproduction of work by a teacher or pupil in the course of only to an injunction against the infringement and a decree for the instructions, reproduction of any work for the purpose of judicial whole or part of the profits made by the defendant by the sale of proceedings or its reporting, the reading and recitation in public the infringing copies as the Court may, in the circumstances, deem of reasonable extracts from a published literary or dramatic work, reasonable. storing of work in any medium by electronic means by a non- commercial public library, for preservation if the library already 5.7 What are the typical costs of infringement possesses a non-digital copy of the work, etc. does not constitute proceedings and how long do they take? infringement. Apart from the above, the following is the non-exhaustive list The usual cost of an infringement proceeding before a High Court of defences that can be resorted to while defending a claim of in India (such as the Delhi High Court), from its institution up to infringement: obtaining an order of preliminary injunction may be in the range ■ Challenging the subsistence of copyright – disputing the of USD 10,000 to USD 15,000. Whereas, the all-inclusive cost originality of the work. of filing a law suit and obtaining an order of permanent injunction ■ Claiming multiple originality by proving that the defendant from the court against the infringement may be in the range of USD had no access to the work created by the plaintiff. 25,000 to USD 35,000 as reaching this stage involves a full trial. Infringement proceedings on full trial can take three to five years to ■ Challenging the right of the plaintiff to sue – preliminary objection on maintenance of the suit. conclude, whereas ex-parte orders can be passed in as less as a few days from the institution of the suit. ■ Suit/complaint barred by limitation – preliminary objection on maintenance of the suit. ■ No knowledge of infringement – in case of a civil action, if 5.8 Is there a right of appeal from a first instance the defendant proves that at the date of the infringement he judgment and if so what are the grounds on which an was not aware and had no reasonable ground for believing appeal may be brought? that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than an injunction in respect of ■ Yes. In the case where the first instance judgment is passed the infringement. by the District Court, an appeal may be instituted in the High Furthermore, in case of criminal complaints, if the offence is not Court. Further, in cases where the first instance judgment is passed by a Single Judge of the High Court, the appeal may committed for commercial gain, the degree of fine/imprisonment be brought before the Division Bench. Also, in some cases, a may be reduced. special leave to appeal may be granted by the Supreme Court against first instance judgment passed by any court under 5.5 Are interim or permanent injunctions available? Article 136 of the Constitution of India. Also, in some cases, a special leave to appeal may be granted by the Supreme Court under Article 136 of the Constitution of India against a Yes, both interim and permanent injunctions are available as civil first instance judgment passed by any court. remedies in cases of copyright infringement. The courts in India ■ In cases of seizure and disposal of infringing copies, an are also ready to award ex-parte ad-interim injunctions in cases aggrieved person may, within 30 days of the date of order of where there is an urgent need made out for restraining the act of Magistrate, file an appeal in the Court of Session. infringement in question. In cases of grant of temporary injunctions, ■ Certain substantive grounds, amongst others, on which an the trinity of prima facie case, irreparable injury and balance of appeal may be brought, include where there is a question convenience is always looked into by the courts in India. of fact involved or there has been misappreciation of facts or evidence in relation to the law in force, where there is 5.6 On what basis are damages or an account of profits concealment of facts or evidence which requires consideration calculated? afresh, or where a question of law needs to be addressed, etc.

The grant of damages is generally meant to restore the position of 5.9 What is the period in which an action must be the plaintiff in which he/she would have been if the infringement in commenced? question would not have taken place. Calculating damages involves the determination of loss caused to the plaintiff by the infringement. The period of limitation for filing the suit is three years from the Punitive damages can be awarded in addition to basic amounts date of infringement. Where the cause of action for filing a suit for

infringement of copyright is a recurring one or continuing in nature, was withdrawn. This suit was filed in the year 2012 seeking the the limitation period of three years would be taken to commence relief of permanent injunction to restrain the defendants from from the date of such last infringement. Further, if sufficient and creating course packs for students by photocopying certain portions reasonable cause is shown for condonation of delay in instituting of the publications in which the plaintiffs hold copyright. While a law suit for infringement, the period of limitation of three years dismissing the interim injunction application, it was observed by can be extended in accordance with judicial discretion and case law. Delhi High Court that the words “in the course of instruction”, written in the exception for reproduction by teacher, embrace the process of imparting instruction during the entire academic session 6 Criminal Offences and are not circumscribed to personal interface between teacher and

pupils. The court also noted that the Indian legislature has found India reproduction of copyrighted matter in the course of instruction to 6.1 Are there any criminal offences relating to copyright infringement? be justified for the purpose and to be not unreasonably prejudicing the legitimate interest of the author. However, in a turn of events, Yes; the following are the offences relating to copyright this suit was later restored by the Division Bench penning that the infringement: amount of copyrighted work that can be fairly used shall be directly proportionate to the amount necessary to effectuate the purpose ■ Knowingly infringing or abetting the infringement of of the use, i.e. make the learner understand what is intended to be copyright. understood. The Court opined that such a test will require expert ■ Knowingly making use on a computer of an infringing copy evidence and appropriate directions shall be passed by the court of a computer program. after examination of such evidence. ■ Knowingly making, or possessing, any plate for the purpose of making infringing copies of any work in which copyright Another foremost development has been in relation to the Copyright subsists. Societies. The two copyright Societies namely IPRS and PPL (mentioned in question 3.4) have withdrawn the application for ■ Circumvention of effective technological measures with the intention of committing copyright infringement. re-registration but such withdrawal has not been accepted by the Central Government in view of Society member’s larger interest. ■ Knowingly removing or altering any rights management Additionally, it was brought as a matter of concern by a section information without the authority. of right holders as well as licensors and licensees that these ■ Knowingly distributing, importing for distribution, Copyright Societies do not have a transparent royalty collection broadcasting or communicating to public, without authority, copies of any work, or performance and knowing that and distribution system. As such, at the end of last year, the Delhi electronics rights management information has been removed High Court provided an interim mechanism for an efficient and or altered without authority. transparent working of these Copyright Societies. ■ Making or causing to be made a false entry or a writing Also, very recently there has been a merger of the Copyright Board falsely purporting to be a copy of any entry in the Register of (a quasi-judicial body) with the Intellectual Property Appellate Copyrights. Producing/tendering or causing to be produced Board (IPAB) which until now dealt only with Trade Marks, Patents or tendered as evidence any such entry or writing, knowing and Geographical Indications. Both these statutory bodies have not the same to be false. been functional from the last few years. ■ Knowingly making false statements or representation for the Further, an application for registration of Screenwriters Rights purpose of deceiving or influencing any authority or officer. Association of India (SRAI) as a copyright society has been filed, ■ Publishing a sound recording or a video film in contravention and as on the date of writing this chapter, the same remains pending of the provisions that lay down the particulars to be included for disposal. in such works.

7.2 Are there any particularly noteworthy issues around 6.2 What is the threshold for criminal liability and what the application and enforcement of copyright in are the potential sanctions? relation to digital content (for example, when a work is deemed to be made available to the public online, Conviction for any offence mentioned in question 6.1 shall entail hyperlinking, etc.)? criminal liability. Different sanctions including a fine and/or imprisonment, seizure of infringing copies and delivery or disposal Last year, the Government of India brought Internet streaming thereof are codified for different offences and their varying degrees. under the ambit of The Copyright Act, 1957 by way of an office The fine may go up to a maximum of approximately USD 3,100 and memorandum. The Government received many representations the maximum prescribed imprisonment can extend up to three years. from stakeholders regarding the issue of coverage of Internet streaming of a song, music, video, etc. under licensing provisions of the Act, specifically Section 31 D (3) which provides that “the rates 7 Current Developments of royalty for radio broadcasting shall be different from television broadcasting and the copyright Board shall fix separate rates for 7.1 Have there been, or are there anticipated, any radio broadcasting and television broadcasting”. While interpreting significant legislative changes or case law the copyright licensing provisions, the Government clarified developments? that “any broadcasting organisation desirous of communicating to the public” may not be only restricted to radio and television Noteworthy developments pertaining to the copyright landscape broadcasting organisations and it can include all media through have arisen in the recent past in India. The long-running copyright which “communication to the public” can be made, thus including infringement suit brought by prominent academic publishers – Internet streaming as well. Oxford University, Cambridge University and Taylor & Francis Another noteworthy development is the emergence of two distinct – against the Delhi University and Rameshwari photocopy shop approaches regarding the nature of John Doe orders. On one side

is the Madras High Court, which has recently issued sweeping John be blocked under the orders. Last year as well, a whopping number Doe orders directing internet service providers to disable access to of websites were blocked under the order of Madras High Court to a large number of websites while adjudicating suits for copyright curb unauthorised hosting of the film A Flying Jatt. In the past, a infringement filed by Prakash Jha Productions, in respect of the film parallel approach was taken by Delhi High Court in a case regarding Lipstick Under My Burkha, and by Red Chillies Entertainment, in broadcast of the FIFA 2014 World Cup. On the other side is the respect of its film When Harry Met Sejal. Through these orders, Bombay High Court, which has favoured granting of limited John the high court has restrained unauthorised copying, transmission, Doe orders, based on concrete and precise information, to block display, release, show, upload, download, exhibit, play or in any specific URLs and links hosting the infringing material (rather than manner communication of these films. Internet archives (http://www. entire websites), as was the case in infringement suits in respect of

India archive.org/) and 2,649 other websites were specifically ordered to the movies Udta Punjab and Dishoom.

Dheeraj Kapoor Aprajita Nigam LexOrbis LexOrbis 709-710 Tolstoy House 709-710 Tolstoy House 15-17 Tolstoy Marg 15-17 Tolstoy Marg New Delhi-110001 New Delhi-110001 India India

Tel: +91 11 2371 6565 Tel: +91 11 2371 6565 Email: [email protected] Email: [email protected] URL: www.lexorbis.com URL: www.lexorbis.com

Education: Education: ■■ University of Delhi (LL.B. 2013). ■■ NALSAR University of Law (LL.M. (IPR) 2016). ■■ University of Delhi (BSc. (H) Zoology 2010). ■■ G.G.S.I.P. University (B.A. LL.B (H) 2013). Dheeraj is an advocate with extensive knowledge and expertise in Aprajita is an advocate, having in depth understanding of all facets of intellectual property laws, and specialises in handling diverse matters intellectual property laws and interested in further exploration of niche before the High Courts, Intellectual Property Appellate Board, Trade areas. From her previous experience in General Litigation, she has Marks Office and the Copyright Office, as well as advisory on various enriched the firm by providing her keen insight on contentious issues. related laws. He is intricately associated with the legal research and She is a valued member of the legal research team of LexOrbis, and publication team of LexOrbis, and has authored many articles and has received much appreciation for her articles published in leading papers in leading IP publications. Dheeraj advises many Fortune IP publications. Aprajita has a diverse client portfolio, encompassing 500 companies, multi-national corporations, small and medium-sized Fortune 500 companies, multi-national corporations, small and enterprises, and technology start-ups. medium-sized enterprises, and technology start-ups.

LexOrbis, established in 1997, is one of India’s most recommended and highly rated full-service IP firms. Operating from three offices in New Delhi, Bangalore and Mumbai, we are strategically positioned to offer a far-reaching service to both domestic and international companies. With a team of over 65 attorneys, we provide end-to-end services and practical solutions to all aspect of patents, designs, trade marks, copyright, competition, sports, media & entertainment, unfair competition, e-commerce and other related laws. The firm has a diverse client base that includes many of the Fortune 500 companies, other multinational corporations, leading Indian companies, public sector organisations, research institutes, universities, small and medium-sized enterprises and technology start-ups. The firm offers full legal and technical expertise to a wide range of industries, including automotive, biotechnology, biosimilars, chemical, consumer products, electrical & electronics, information and communication technology, software, media & entertainment, oil & gas, pharmaceuticals, seeds and agro-chemical products, food and beverages, fashion, sports and publishing. Our professionals work in the best interests of clients and are known for their clear communication, responsiveness, quick turnaround time and out-of-the-box thinking and solutions. More information about our firm can be found at our website www.lexorbis.com.

Japan Masayuki Yamanouchi

Anderson Mōri & Tomotsune Yuri Fukui

work’s date of first publication or the date when the work was first 1 Copyright Subsistence made public. Furthermore, the author of a computer program may have the date 1.1 What are the requirements for copyright to subsist in of the creation of his work registered within six months from the a work? work’s creation.

Copyright can subsist in a work in which thoughts or sentiments 1.4 What is the duration of copyright protection? Does are expressed in a creative way, and which fall within the literary, this vary depending on the type of work? scientific, artistic or musical domain. The duration of a copyright begins at the time the work is created 1.2 On the presumption that copyright can arise in and subsists for 50 years following the death of the author (in the literary, artistic and musical works, are there any case of a jointly created work, for 50 years after the death of the last other works in which copyright can subsist and are surviving co-author). The duration of a copyright for a work bearing there any works which are excluded from copyright the name of a juridical person or other corporate body as its author is protection? 50 years from either the time the work was first made public, or, if the work was not made public within 50 years following its creation, Copyright can arise in novels, plays, film scripts, dissertations, 50 years from its creation. lectures and other literary works; musical works; choreographic works and pantomimes; paintings, engravings, sculptures and The duration of a copyright in a cinematographic work is either 70 other artistic works; architectural works; maps and diagrammatical years from the time the work was first made public, or, if the work works of a scientific nature, such as drawings, charts and models; was not made public within 70 years from its creation, 70 years from cinematographic works; photographic works; and computer its creation. program works. Typical examples of works which are excluded from copyright protection are mere communication of facts which 1.5 Is there any overlap between copyright and other are not expressed in a creative way, applied art which is usually intellectual property rights such as design rights and mass-produced products and not categorised as fine art (please also database rights? see the response to question 7.1). Yes. A copyrighted work can be registered as a trademark and be protected by a trademark right. 1.3 Is there a system for registration of copyright and if so what is the effect of registration? 1.6 Are there any restrictions on the protection for Yes, there is a registration system operated by the Agency for copyright works which are made by an industrial Cultural Affairs (the ACA), and in the case of software programs, process? there is a registration system at the Software Information Centre (the SOFTIC). No, there is no restriction as long as a work meets requirements Copyright can arise in a work, and it can be transferred without for copyright to subsist in a work (please also see the responses to any copyright registration. However, the transfer (other than by questions 1.1 and 1.2). inheritance or other general succession) of copyright or a restriction on the disposal of the copyright, and the establishment, transfer, 2 Ownership modification or termination of a pledge on a copyright or a restriction on the disposal of a pledge established on the copyright, may not be asserted against a third party unless it has been registered. 2.1 Who is the first owner of copyright in each of the The author of a work that is made public, anonymously or works protected (other than where questions 2.2 or 2.3 apply)? pseudonymously, may have his true name registered with respect to said work, regardless of whether he actually owns the copyright therein. The copyright holder of any work, as well as the publisher In principle, the author who creates a work is the first owner of the of an anonymous or pseudonymous work, may have registered said copyright therein. However, there are different rules governing the

authorship of a work made by an employee (please see the response those possessed by the author of the derivative work), the transfer to question 2.3) and authorship of a cinematographic work. agreement must expressly refer to such rights, or it is presumed that Authorship of a cinematographic work is attributed to those who, such rights have been reserved to the transferor. by taking charge of producing, directing, filming, art direction, etc., have creatively contributed to the creation of the cinematographic 3.2 Are there any formalities required for a copyright work as a whole, excluding authors of novels, play and film scripts, licence? music or other works adapted or reproduced in such cinematographic work who hold copyright in such adapted or reproduced work. No, there are no formalities. Japan 2.2 Where a work is commissioned, how is ownership of 3.3 Are there any laws which limit the licence terms the copyright determined between the author and the parties may agree (other than as addressed in commissioner? questions 3.4 to 3.6)?

Where a work is commissioned, the principal rule applies and the No, there are not. author is the first owner of the work. In practice, the commissioner obtains consent from the author for transfer of the copyright from the author and for not exercising his moral right to the commissioned 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? work, which cannot be transferred under the law.

Several types of copyright works have collective licensing bodies 2.3 Where a work is created by an employee, how is for their fields. Such bodies are generally entrusted with copyrights ownership of the copyright determined between the from their owners or undertake to management the use of the employee and the employer? copyrights. ■ Field of music and records: the Japanese Society for Rights The authorship of a work that is made on the initiative of an of Authors, Composers and Publishers (JASRAC), and the employer by an employee in the course of the performance of his Recording Industry Association of Japan (RIAJ). duties in connection with the employer’s business, and (except for ■ Field of literature, including novels and scripts: the Japan computer program works) is made public by the employer as a work Writers’ Association, the Writers’ Guild of Japan (WGJ), and under its own name, is attributed to the employer unless otherwise the Japan Writers Guild (JWG), agreed in contract terms or work regulations applicable at the time ■ Reproduction of publications: the Japan Reproduction Right that the work was created. Center (JRRC), and Japan Publishers Copyright Organization (JCOPY). 2.4 Is there a concept of joint ownership and, if so, what ■ Field of the arts: the Japan Artists Association (JAA), and the rules apply to dealings with a jointly owned work? Japanese Society for Protecting Artist’ Rights (JASPAR). ■ Field of photography: the Japan Photographic Copyright Yes, a copyright of a work can be owned jointly. A co-holder of a Association (JPCA). copyright in a work of joint authorship or of any other co-owned ■ Field of performing arts: the Centre for Performers’ Rights copyright (“joint copyright”) may not transfer or pledge his share Administration (CPRA). without the consent of the other co-holder(s). A joint copyright may not be exercised without the unanimous agreement of all co-holders, 3.5 Where there are collective licensing bodies, how are although a co-holder may not, without justifiable grounds, refuse they regulated? to give the consent required. Co-holders may choose one of the co-holders to exercise their joint copyright as their representative. The Act on Copyright, etc. Management Service, enacted in 2001, Limitations on the authority of a person to exercise the rights as regulates the collective licensing bodies. The collective licensing a representative may not be asserted against a third party without bodies dealing with copyrights and neighbouring rights are required knowledge of such limitations. to be registered, and their rules of management must be reported to the Agency for Cultural Affairs. 3 Exploitation 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? The grounds to challenge the licence terms offered by a collective licensing body are basically the same as the defences that a No, there are no formalities to the transfer/assignment of ownership. defendant can assert in a copyright infringement action. The licence However, the transfer (other than by inheritance or other general terms could be challenged on the ground that the use of the work succession) of ownership may not be asserted against a third party is exempted from the Copyright Act for reasons such as private unless it has been registered (please see the response to question 1.3 use of the work, quotations, educational use, and editorials. It is above). It should be noted that, if the transferee would like to obtain also possible to challenge the licence terms because a work is not (i) rights of translation, adaptation, etc. (i.e., the exclusive right to copyrightable, the collective body is not authorised to license the translate, arrange musically or transform, or dramatise, cinematise, work, or the calculation of the fee is not correct. or otherwise adapt his work), and (ii) a right in the exploitation of a derivative work (i.e., exclusive rights of the same types as

4 Owners’ Rights 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works which have been put on the market with his consent? 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? If an original work or a copy of a work is transferred to the public by the owner of the right to transfer, the subsequent transfer is not A copyright includes the following rights and the exercise of such restrained by the same right. However, it is understood that for a rights is restricted by the copyright holder or the holder of any of cinematographic work to be presented on a screen, the owner of the such right: rights of reproduction, performance (right to perform right to distribute may exercise its right over the subsequent dealings the work for the purpose of making it seen or heard directly by Japan even after the work has been put on the market with his/her consent. the public), screen presentation (right to make the work publicly available by screen presentation), public transmission (right to In addition, it is generally permissible to exploit, in any way, an effect a public transmission of the work including, in the case of artistic work, the original copy of which is permanently installed in automatic public transmission, making the work transmittable), an outdoor location or an architectural work. recitation, exhibition (when a work is an artistic work or unpublished photographic work), distribution (when a work is a cinematographic 5 Copyright Enforcement work), ownership transfer, rental, translation and adaptation of copyrighted work. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative 4.2 Are there any ancillary rights related to copyright, to civil actions? such as moral rights, and if so what do they protect, and can they be waived or assigned? No. Any dispute is expected to be settled through normal civil There are two types of ancillary rights: moral rights and actions. neighbouring rights. Moral rights cannot be waived or assigned. The moral rights of an 5.2 Other than the copyright owner, can anyone else bring author belong to the author of a work. The moral rights contain a claim for infringement of the copyright in a work? the right to make the work and derivative work thereof public, determine the indication of the author’s name (i.e., determine An author can bring a claim for infringement based on his moral whether it should be shown, or whether it should be his/her true rights even after the author transfers his copyright in his work. name or a pseudonym), and maintain the integrity of his work and Collective licensing bodies, which do not own the copyright but are its title, without distortion, mutilation or other modification against authorised by the copyright owner to do so, may also bring a claim. the author’s will.

A performer also has the following moral rights: the right to indicate 5.3 Can an action be brought against ‘secondary’ his name; and the right to preserve the integrity of performance. In infringers as well as primary infringers and, if so, addition, a performer has the neighbouring rights to make sound on what basis can someone be liable for secondary or visual recordings of his performance, broadcast and to wire- infringement? broadcast his performance, make his performance transmittable, transfer ownership of his performance, and offer his performance Yes. A person who commits one of the following actions is deemed to the public by rental. In addition, a performer has several rights to commit infringement on the moral rights of the author, copyrights, to receive fees such as the right to receive secondary use fees from moral rights of the performer or neighbouring rights, and can be broadcasting organisations or wire-broadcasting organisations liable under the Copyright Act: using commercial phonograms (the term phonogram as used herein ■ importing, for the purpose of distribution in the country, is used and defined in the Copyright Act; it means the fixation of objects made by an act which would have constituted an sounds on a material object such as a phonograph disc or recording infringement on the moral rights of its author, copyrights, tape) incorporating a sound recording of the performance through rights of publication, moral rights of performers or designated organisations. neighbouring rights if performed in the country; Other than performers, producers of phonograms, broadcasting ■ distributing, possessing for the purpose of distributing, or organisations and wire-broadcasting organisations also have exporting as a business or possessing for the purpose of exporting as a business, objects made by infringing the moral neighbouring rights. rights of an author, copyrights, rights of publication, moral Producers of phonograms have rights to reproduce his phonogram, rights of performers or neighbouring rights, by a person who make his phonogram transmittable, transfer ownership, and rental. is aware of such infringement; Broadcasting organisations have rights to reproduce the sounds ■ using on a computer in the course of one’s business a or images incorporated in its broadcast, rebroadcast and wire- reproduction made by infringement of the copyright of a broadcast, and make transmittable and transmit its wire-broadcasts computer program work, to the extent that the person using to the public. Wire-broadcasting organisations have rights to the reproduction was aware of the infringement at the time reproduce the sounds or images in its cablecast, broadcast and to re- that he acquired authority to use the reproduction; and cablecast its cablecast, make its cablecast available for transmission ■ intentionally adding false information as rights management using a special instrument that enlarges images to communicate its information; intentionally removing or altering rights cable television broadcast to the public, based on the receipt of its management information; distributing, importing or cable television broadcast transmission. possessing for the purpose of distributing, a reproduction of

a work or performance with false information intentionally or performance, etc. that have been made as a result of the added as rights management information, removed or modified public’s receipt of that transmission, by the amount of profit rights management information, and publicly transmitting or per unit from objects (including copies transmitted and making transmittable such work or performance, etc., with received) that the owner of the copyright, etc. could have sold knowledge of the infringement. if there had been no act of infringement; or ■ the reasonable royalty (i.e., the amount of money that the owner of the rights should have received in connection with 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement? the exercise of the copyright or neighbouring right).

Japan As a defence to a claim of infringement, the defendant may argue that 5.7 What are the typical costs of infringement his/her act does not fall into the category of infringement because proceedings and how long do they take? it lacks the dependence on the copyrighted work (it is understood that infringing work is required to be created with dependence on The costs of judicial proceedings for an interim injunction are the infringed work to be found an “infringing work”) or substantial usually about JPY1 million to JPY5 million (including legal fees similarity to the copyrighted work (it is understood that infringing depending on counsel and case, and JPY2,000 for a filing fee), work is required to be substantially similar to the copyrighted work and for an action on the merits to seek damages and a permanent to be found an “infringing work”). If those two requirements are injunction are about JPY2 million to JPY10 million (including not met, the work of the defendant does not infringe the copyright. legal fees depending on counsel and case, and a filing fee). (The In addition, if the act of the defendant falls under any of the following filing fee for an action on the merits depends on the amount claimed categories, it is exempt under the Copyright Act: and the market size of the products subject to injunction.) Please note that filing fees are not recoverable, and legal fees are not fully ■ reproduction of a work for private use; recoverable by the prevailing party. ■ reproduction of a work in libraries; The amount of time from filing a case to a first instance decision ■ quotation from a work already made public in a fair manner depends on the case. It may take a few years. However, it usually within the extent justified by the purpose of the quotation; takes from one to one-and-a-half years. If the case is appealed, ■ reproduction in school textbooks, schools and other it may take another one to two years. The time taken to obtain a educational institutions; preliminary injunction varies depending on the case, but it usually ■ reproduction or public transmission for examinations of takes several months. knowledge or skills; ■ reproduction or public transmission for those with disabilities; 5.8 Is there a right of appeal from a first instance ■ reproduction of editorials in newspapers and/or magazines in judgment and if so what are the grounds on which an relation to current topics; and appeal may be brought? ■ reproduction for judicial proceedings. Yes. The party dissatisfied with the first instance judgment has a 5.5 Are interim or permanent injunctions available? right to appeal. Appeal from a copyright-related judgment of a district court shall be made to the Intellectual Property High Court Yes. Both interim and permanent injunctions are available for for civil cases over which the Tokyo High Court has jurisdiction or copyright infringement. An author, copyright holder, holder of to other high courts for criminal cases and civil cases except ones the right of publication, performer, or holder of neighbouring with which the Intellectual Property High Court deals. rights may demand cessation of an infringement of moral rights, copyright, right of publication, or neighbouring rights of persons 5.9 What is the period in which an action must be infringing or presenting a risk of infringing. When applying for commenced? such injunction, the author, the copyright holder, the holder of the right of publication, the performer or the holder of the neighbouring An action for compensation in accordance with the Civil Code must rights may also demand measures necessary to effect the cessation be sought within the earlier of three years of both the infringement or prevention of the infringement, such as the destruction of objects and the infringer becoming known, or 20 years of the infringement constituting the acts of infringement, objects made by acts of (whether known or not). An injunction cannot be sought after the infringement, and/or machines and tools used exclusively for acts of act of infringement ends. infringement. It is not necessary that the infringement be intentional or due to negligence to seek an injunction. 6 Criminal Offences

5.6 On what basis are damages or an account of profits calculated? 6.1 Are there any criminal offences relating to copyright infringement? Under the general tort theory, the owner of a copyright, etc. may seek damages that have a reasonable causal relationship with the Yes. Intentional infringement can be a criminal offence (please see infringing acts. In addition, the Copyright Act provides three the response to question 6.2). methods to calculate the amount of damages in light of the difficulty of proving the actual damages that the owner incurred: 6.2 What is the threshold for criminal liability and what ■ profits obtained by the infringer; are the potential sanctions? ■ lost profits of the owner of the copyright, etc., the amount of which is calculated by multiplying the number of The Copyright Act includes several provisions concerning criminal objects so transferred or the number of copies of the work liability, as shown below.

■ A person who infringes copyright, right of publication or Partnership, those changes have not been implemented. In case neighbouring rights (excluding some exemptions provided in law, a discussion concerning the area of “applied art” (i.e., art the Copyright Act) is subject to imprisonment with labour for works with practical function) arose following some noteworthy up to 10 years, a fine of up to JPY10 million, or both. decisions by the Intellectual Property High Court. It has been ■ A person who infringes an author’s or performer’s moral understood that applied art may be copyrightable only when such rights, or who, for profit-making purposes, causes a machine applied art exhibits great creativity of the same level as fine art. to reproduce copyrighted works or performances which However, some recent decisions by the Intellectual Property High constitute infringements or who commits an act deemed to Court suggest that applied art may be copyrightable as long as it constitute copyright infringement under the Copyright Act is meets the standard requirements for copyright to subsist in a work. subject to imprisonment with labour for up to five years, a fine of up to JPY5 million, or both. In practice, the interpretations of these decisions vary and further Japan updates are awaited. ■ A person who infringes an author’s or performer’s moral rights after the author’s or performer’s death is subject to a fine of up to JPY5 million. 7.2 Are there any particularly noteworthy issues around ■ A person who transfers or rents to the public, who the application and enforcement of copyright in manufactures, imports, or possesses for the purpose of relation to digital content (for example, when a work transferring or renting to the public, or who offers for public is deemed to be made available to the public online, use a device the principal function of which is to circumvent hyperlinking, etc.)? technological protection measures or copies of a computer program the principal function of which is to circumvent The Copyright Act has been updated to cover matters in relation technological protection measures, or a person that transmits to newly invented technologies. For example, it covers computer to the public or makes available for transmission such a programs as copyrightable work, the right of automatic public computer program is subject to imprisonment with labour for transmission in addition to the typical broadcasting, and the right up to three years, a fine of up to JPY3 million, or both. of making transmittable which captures activities on the Internet, as one of the copyright owner’s right. It also enables rights’ holders to 7 Current Developments have compensation for private sound and visual recordings, and has provisions to protect technological protection measures. In these last few years, publication rights have expanded to include 7.1 Have there been, or are there anticipated, any digital publications and wire transfers via the Internet. Also, significant legislative changes or case law under the recent amendments enacted in 2012, a person who has developments? downloaded digital files which infringe copyrights of musical or visual works while knowing of the infringement can be found There was no significant legislative change in 2016. While criminally liable. some changes were expected in relation to the Trans-Pacific

Masayuki Yamanouchi Yuri Fukui Anderson Mōri & Tomotsune Anderson Mōri & Tomotsune Akasaka K-Tower, 2-7 Akasaka K-Tower, 2-7 Motoakasaka 1-chome, Minato-ku Motoakasaka 1-chome, Minato-ku Tokyo 107-0051 Tokyo 107-0051 Japan Japan

Tel: +81 3 6888 5669 Tel: +81 3 6888 1151 Email: [email protected] Email: [email protected] URL: www.amt-law.com URL: www.amt-law.com Japan

Masayuki Yamanouchi has a Master’s degree in science and is an Yuri Fukui has business experience in the media industry, as well as attorney-at-law. Since becoming an attorney, he has engaged in a legal experience in the media and contents industries in the area of IP- number of patent infringement lawsuits and other IP-related matters. related transactions and disputes such as licensing, joint-projects, and His main focus is on the pharmaceutical industry, but he has also copyright infringement. She also has legal experience with various handled other technology fields, such as agrichemical, semiconductor, corporate-related matters. liquid crystal display, printing, 3D printing, telecommunication technology, and gaming, in patent infringement actions as well as licensing negotiations, joint development projects, and technology transfer projects. Masayuki Yamanouchi also has expertise and experience in other forms of intellectual property including trademarks, copyrights, and trade secrets. In addition, with his experience in the U.S. (both in law school and at a law firm focusing on patent matters), he also provides advice to clients involved in patent lawsuits in Japan.

As one of the largest and most diverse law firms in Japan, Anderson Mōri & Tomotsune boasts a staff of more than 400 attorneys. The firm’s Intellectual Property Practice Group comprises attorneys-at-law (bengoshi) with extensive experience in the handling of know-how, trademark, copyright, and entertainment disputes and IP transactions. The group also includes patent attorneys (benrishi) specialising in the filing of patents, utility models, designs and trademarks. The synergy and proficiency of this team of accomplished legal experts is the reason why Anderson Mōri & Tomotsune’s Intellectual Property Practice Group is, and continues to be, one of the top legal professional practices in the area of intellectual property in Japan.

Korea Seung Soo Choi

JIPYONG Seungmin Jasmine Jung

1 Copyright Subsistence 1.3 Is there a system for registration of copyright and if so what is the effect of registration?

1.1 What are the requirements for copyright to subsist in a work? Although registration is not required for copyright to subsist or become effective in Korea, there is a system for registration. Copyright subsists in creative work expressing human thoughts and In order to register a copyright, an application to the Korea Copyright emotions. Unlike the United States, it is not necessary for the work Commission can be made by submitting the requisite form, online or to be fixed in a tangible medium. In Korea, copyright automatically offline. The registration fee is KRW33,600 (for offline registration) attaches once the work exists without formal registration. Only and KRW23,600 (for online registration). expressive work is protected under copyright, and ideas are not The effect of registration is that it gives rise to the legal presumption protected under the doctrine of separation of idea and expression. that the author identified in the registration is the copyright owner In order to be copyrightable, the work must express the author’s of the work. Further, if the date of creation or date of initial original thoughts and emotions and not copy another’s work. publication is registered, such date is legally presumed as the actual date of creation or initial publication. Once copyright is registered, 1.2 On the presumption that copyright can arise in the person who infringes on such copyright is deemed liable for literary, artistic and musical works, are there any the infringement. In order to claim the statutory compensation for other works in which copyright can subsist and are damages, copyright must have been registered prior to the date of there any works which are excluded from copyright infringement. protection? On a separate note, assignment of, or limitations on disposal of, copyright and the establishment, transfer, termination, or limitation Under the Copyright Act of Korea, copyright subsists in any creative of disposal of, a pledge over copyright cannot be perfected without work expressing human thought and emotion. The Copyright Act registration. lists the following nine types as indicative examples: literary work; musical work; performance work; artistic work; architectural work; photographic work; cinematographic work; graphic work; and 1.4 What is the duration of copyright protection? Does computer programs. this vary depending on the type of work? Article 7 of the Copyright Act lists the following items as works In principle, copyright lasts for the life of the author plus 70 years. excluded from copyright protection: Copyright in cinematographic work or in work originating from (i) constitution, acts, treaties, decrees, and municipal ordinances employment lasts for 70 years from the date of publication. and rules; (ii) bulletins, public notifications, directives and others similar thereto which are issued by the central or local government; 1.5 Is there any overlap between copyright and other intellectual property rights such as design rights and (iii) judgments, decisions, orders, or adjudications of courts, as database rights? well as rulings and decisions made by the administrative appeals procedures, or other similar procedures; Design: (iv) compilations or translations of works as referred to in subparagraphs (i) through (iii) which are produced by the Under the Design Protection Act of Korea, “design” refers to central or local government; and aesthetic value derived from visual effects of form, shape, colour (v) current news reporting which delivers simple facts. or the combination thereof. It is possible for a work to be subject to protection as both copyright and design. Recently, a court decision was rendered on whether pornography is afforded copyright protection. The court held that “Copyright Other: protects work in the domain of literature, academia and the arts Under the Copyright Act of Korea, the creator of a database is regardless of whether the work is ethical or not. Therefore, any such granted protection by a right similar to copyright (right of copy, work is subject to copyright protection even if the content thereof is distribution, broadcasting or transmission of the database). unethical or illegal”.

perfection of such transfer/assignment is not achieved. For 1.6 Are there any restrictions on the protection for example, if A were to assign his copyright to B and A later assigns copyright works which are made by an industrial the same copyright to C, B cannot claim against C that B is the valid process? assignee of such copyright unless B had previously registered such assignment of copyright. Whether a work created by an industrial process can be subject to copyright protection will be determined based on whether such work is a creative work expressing human thought and emotion. 3.2 Are there any formalities required for a copyright In general, it will be difficult for a work created by an industrial licence? process to be deemed copyrightable. Korea There are no formalities required for a copyright licence.

2 Ownership 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in questions 3.4 to 3.6)? 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 apply)? There are no laws specifically limiting copyright licence terms. Nonetheless, with respect to commercial recordings, once three In principle, the author of the work is the first owner of the years from the initial sale of a recording has passed, a third party copyright. “Author” means a person who has contributed to the may produce a different commercial recording based on the creative expression of the work. Merely providing ideas, hints or original recording upon consultation with the copyright owner topics does not qualify as an author of a copyrightable work. of the recording. If the parties fail to reach an agreement upon consultation, the third party may produce such commercial recording by obtaining the approval of the Minister of Culture, 2.2 Where a work is commissioned, how is ownership of Sports and Tourism and paying a certain compensation amount to the copyright determined between the author and the commissioner? the copyright owner or depositing such amount in escrow.

One cannot become the owner of copyright because one ordered 3.4 Which types of copyright work have collective or commissioned the work. The criteria is whether a person has licensing bodies (please name the relevant bodies)? actually contributed to the creative expression of the work. With the exception of ‘work for hire’ set forth in question 2.3 below, the The following organisations are the licensing bodies for the main commissioner of work is not entitled to become the copyright owner. areas of copyright: Musical work:

2.3 Where a work is created by an employee, how is Korea Music Copyright Rights of musical authors. ownership of the copyright determined between the Association employee and the employer? The Korean Society of Composers, Authors and Rights of musical authors. Under the Copyright Act, any ‘work for hire’ conducted during a Publishers person’s employment and published in the name of the employer Federation of Korean Music Rights of music performers such shall be deemed to have been authored by the employer, unless Performers as singers and musicians. Recording Industry Association otherwise stipulated in the employee’s employment contract or the Rights of recording producers. internal regulations of the employer. of Korea Literary work: 2.4 Is there a concept of joint ownership and, if so, what Korea TV & Radio Writers Rights of writers for television rules apply to dealings with a jointly owned work? Association and radio. Rights of copyright owners of Joint ownership of copyright is formed when two or more persons Korean Society of Authors literary work, plays, art and have jointly created the copyright work and it is not possible to photographs. separately use the portion of such work attributable to each person. Korea Scenario Writers Rights of film scenario writers. Copyright of jointly created work can only be exercised upon Association unanimous consent of all joint copyright owners. Assignment or Korea Reproduction and Reproduction and transmission pledge of the respective right of one joint copyright owner cannot be Transmission Rights Association rights of literary work. made without the consent of the other copyright owners. Cinematic work:

Korean Film Producers Rights of film producers. 3 Exploitation Association The Movie Distributors Rights of film producers. Association of Korea 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? Broadcast work:

Korea Broadcasting Performers’ Rights of broadcasting performers There are no formalities required when transferring or assigning Rights Association such as actors or voice artists. copyright. However, if the transfer or assignment is not registered,

News: products and does not include online copies. Accordingly, the doctrine of exhaustion of rights does not apply to online copies (for Korea Press Foundation Rights of news authors. example music files). Public:

Korea Information Cultural 5 Copyright Enforcement Rights of public copyrights. Centre

5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative 3.5 Where there are collective licensing bodies, how are

to civil actions? Korea they regulated?

The copyright owner may benefit from the following enforcement In order to conduct collective copyright licensing business, approval regimes: from the Minister of Culture, Sports and Tourism is required. The percentage and amount of fees paid to collective licensing bodies by The Ministry of Culture, Sports and Tourism has a special police copyright owners or licensees are also subject to the approval of the force dedicated to law enforcement of copyright infringement. Minister of Culture, Sports and Tourism. Also, the Ministry of Culture, Sports and Tourism can take the following measures against online service providers for distribution 3.6 On what grounds can licence terms offered by a of illegal copies, after review by the Copyright Protection collective licensing body be challenged? Deliberation Board: (i) warning against the copier/distributor of illegal copies; and/ The licence terms of collective licensing bodies are subject to the or supervision and approval of the Minister of Culture, Sports and (ii) order deletion or suspend of distribution of illegal copies. Tourism. Accordingly, there are hardly any challenges to the licence The Korea Copyright Protection Agency can take the following terms. corrective advisory measures against an online service provider upon discovery of distribution of illegal copies on the network of the online service provider, after review by the Deliberation Board: 4 Owners’ Rights (i) warning against the copier/distributor of the illegal copies; (ii) deletion of illegal copies or suspension of distribution of 4.1 What acts involving a copyright work are capable of illegal copies; and/or being restricted by the rights holder? (iii) suspend the account of the copier/distributor who has repeatedly distributed the illegal copies. The copyright owner holds the following rights: the right to reproduce his/her work; the right to perform his/her work publicly; 5.2 Other than the copyright owner, can anyone else bring the right to transmit his/her work in public; the right to exhibit the a claim for infringement of the copyright in a work? original or copy of his/her work of art, etc.; the right to distribute the original or copy of his/her work; the right to authorise the An exclusive licensee may also bring civil or criminal suits against commercial rental of phonograms made public; and the right to infringers of copyright. The collective licensing body may also produce and use a derivative work based on his/her original work. bring an independent suit against copyright infringement.

4.2 Are there any ancillary rights related to copyright, such as moral rights, and if so what do they protect, 5.3 Can an action be brought against ‘secondary’ and can they be waived or assigned? infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary infringement? The author of a copyrightable work has moral rights in addition to copyright. Moral rights include the right to decide whether or Anyone who is indirectly involved in copyright infringement not to make his/her work public, the right to indicate his/her real (“secondary infringers”) is deemed to have aided and abetted name or pseudonym on the original or copy of his/her work, or on copyright infringement. For example, an online service provider the medium of publication by which his/her work is made public, who overlooked the circulation of illegal copies will be deemed to right to maintain the integrity of the content, form and title of his/ have aided and abetted copyright infringement. her work. The author’s moral rights shall belong exclusively to the author. Accordingly, moral rights cannot be assigned or inherited. Whether or not moral rights can be waived is controversial. 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement? 4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works The general doctrine of “fair use” is a defence often used in which have been put on the market with his consent? copyright infringement claims. To determine whether “fair use” applies, the following will be considered: Once the original or copies of the copyright work become subject to (i) purpose and character of use (such as whether the use is or is a transaction (such as sale or otherwise), the copyright owner does not for non-profit); not have distribution rights as to subsequent transactions regarding the work in accordance with the doctrine of exhaustion of rights. (ii) type and nature of the copyright work; The reference to “originals or copies” above is limited to tangible (iii) amount and substantiality of portion used in relation to the entirety of the work; and

(iv) effect of the use of work on the current or potential market for, or value of, the work. 6 Criminal Offences There are also limits on the scope of copyright protection. For example, copyrighted public work can be used without the consent 6.1 Are there any criminal offences relating to copyright of the copyright owner. infringement?

Copyright infringement is a criminal offence. A copyright 5.5 Are interim or permanent injunctions available? infringer who has copied, performed, transmitted, exhibited, distributed, leased or authored a derivative work shall be subject Preliminary injunctions ordering temporary cessation of copyright Korea to imprisonment of not more than five years and/or a penalty of not infringement are available. Permanent injunctions are also available. more than KRW50,000,000. An infringer of the author’s moral rights or the performer’s moral rights who prejudices the honour 5.6 On what basis are damages or an account of profits or reputation of the author or the performer shall be subject to calculated? imprisonment of not more than three years and/or penalty of not more than KRW30,000,000. If the copyright infringer gains profit from such infringement, damages shall be based on the amount of such profit. It is also 6.2 What is the threshold for criminal liability and what possible for the copyright owner to claim damages based on the value are the potential sanctions? typically realised upon exercise of the copyright. Instead of claiming damages in the above manner, it is possible to claim damages in The criminal prosecution of copyright infringers is commenced a fixed amount – in general, a maximum of KRW10,000,000 per when the copyright owner files charges. However, if the copyright copyright being infringed and in the case of intentional infringement infringer is a repeat offender or intends financial gain, criminal for financial gain, a maximum of KRW50,000,000. prosecution can commence even without any charges filed by the copyright owner. 5.7 What are the typical costs of infringement proceedings and how long do they take? 7 Current Developments At the initial trial level, a copyright infringement case will take approximately six to eight months. A preliminary injunction will 7.1 Have there been, or are there anticipated, any take approximately one to two months. The typical costs mainly significant legislative changes or case law consist of attorney costs, and such costs differ based on the developments? complexity and the nature of the case and the attorneys involved. There have been discussions that the existing copyright legislation 5.8 Is there a right of appeal from a first instance should be reformed to keep up with the fast pace of changes in judgment and if so what are the grounds on which an digital technology. There have been reports that the government is appeal may be brought? expected to prepare legislative reform.

The trial court judgment can be appealed in the appellate court. At 7.2 Are there any particularly noteworthy issues around the appellate level, the trial court judgment may be reversed based the application and enforcement of copyright in on error in factual or legal determinations. The appellate court relation to digital content (for example, when a work judgment can be appealed in the Supreme Court. is deemed to be made available to the public online, hyperlinking, etc.)?

5.9 What is the period in which an action must be commenced? A recent issue is whether online service providers who overlooked hyperlinks should be deemed to be an indirect copyright infringer. In 2014, the Supreme Court held that an online service provider A claim for damages must be brought within three years from who overlooked hyperlinks of websites containing illegal copies of learning of the infringement. A claim for suspension or elimination copyrighted work on its online bulletin boards shall not be deemed of infringement can be made at any time as long as the infringement a copyright infringer. The rationale was that hyperlinks are merely exists. the address of a website. This Supreme Court decision, however, has been criticised profusely by academics and contradictory lower court decisions have been rendered.

Seung Soo Choi Seungmin Jasmine Jung JIPYONG JIPYONG 10F, KT&G Seodaemun Tower 10F, KT&G Seodaemun Tower 60 Chungjeong-ro, Seodaemun-gu 60 Chungjeong-ro, Seodaemun-gu Seoul 03740 Seoul 03740 Korea Korea

Tel: +82 2 6200 1759 Tel: +82 2 6200 1712 Email: [email protected] Email: [email protected] URL: www.jipyong.com/en URL: www.jipyong.com/en Korea

Mr. Seung Soo Choi is a Partner and Head of the IT/IP Practice Group Ms. Seungmin Jasmine Jung is a Partner and Senior Foreign Attorney at JIPYONG. Mr. Choi has advised and represented IT companies at JIPYONG. Ms. Jung has expertise in financial transactions, fintech and start-ups on copyright, patent and IP cases and has also handled and technology law with extensive experience in structured finance, a variety of litigations over the last 20 years, covering civil, criminal acquisition/project finance, public/private fund investments, licensing, and commercial cases. With his significant amount of working-level copyright, trademark, cybersecurity and data privacy matters. experience, he is recognised as the leading expert in the areas of Prior to joining JIPYONG, Ms. Jung was the Head of Legal at Amazon intellectual properties and IT, patent, confidential business information, Web Services Korea where she specialised in cloud computing and related to copyrights and trademarks. data privacy. Ms. Jung started her legal career as an associate at Mr Choi is well-acquainted with laws relating to cultural art and the New York law firm of Hughes, Hubbard & Reed and subsequently entertainment/media businesses and personal information protection. worked at Shin & Kim and Franklin Templeton Investments. Ms. Jung Mr. Choi actively participates in various academic societies and is a frequent guest lecturer at conferences on legal issues surrounding lectures courses on international entertainment law, motion pictures technology of the 4th Industrial Revolution and also teaches this laws, art law, data privacy law, communication law, media law at subject at Yonsei University. Combining her law firm and in-house Chung-Ang University Law School. Mr. Choi is also a well-recognised experience, Ms. Jung is highly regarded by clients for her practical mediator in the area of entertainment at the Korean Commercial advice and hands-on approach. Arbitration Board. Ms. Jung is a member of the New York Bar. Ms. Jung has a J.D. Mr. Choi is a member of the Korean Bar and received a LL.B. from from Columbia Law School and a B.A. in political science from Yonsei Seoul National University. University.

JIPYONG is one of Korea’s leading full-service law firms. We pride ourselves on our global reach and outlook, the depth and breadth of our practice groups and the extensive experience of our lawyers. With our network of 12 international offices and desks in China, Russia, Vietnam, Indonesia, Myanmar, Cambodia, Laos and Iran, etc., we provide a one-stop destination for legal and consulting services to our clients. JIPYONG has a strong base of domestic and international clients who rely on us for not only our local market knowledge and expertise but for our innovative, business- minded solutions. In addition to our pursuit of professional excellence and proactively serving the needs of clients, JIPYONG shares an unwavering commitment to high ethical standards, pro bono work and community service.

Malaysia Jessie Tan

Seow & Associates Renny Tan

Malaysia if it was first published elsewhere but subsequently 1 Copyright Subsistence published in Malaysia within 30 days of that first publication. By virtue of the Berne Convention, a Berne Union country is obliged 1.1 What are the requirements for copyright to subsist in to grant the same copyright protection to the nationals or residents a work? of other Berne Union countries that it accords to its own citizens. A Malaysian author’s work, whether or not published, is thus protected In Malaysia, copyright does not subsist otherwise than by virtue in other Berne Union counties. All literary, musical or artistic works of the Copyright Act 1987 (“Act”), and copyright protection and films first published in any of the Berne Union countries are also is accorded without any requirement of registration, deposit or entitled to copyright protection in Malaysia, irrespective of whether otherwise. Under the Act, copyright will subsist in a work if it: they are published in Malaysia itself. Similarly, such works first (a) is original; (b) is reduced to material form; (c) belongs to one published elsewhere in non-Berne Union countries but subsequently of the categories of protected works; and (d) complies with the published in any of the Berne Union countries within 30 days of qualifications for copyright. If these requirements are met, a work their first publication would be entitled to copyright in other Berne is protected regardless of the quality and purpose for which it was Union countries including Malaysia. created. Hence, copyright may subsist in a work by reference to: (i) the status of the author; (ii) the publication of the work; or (iii) the 1.2 On the presumption that copyright can arise in making of the work. Copyright may also subsist in works made by literary, artistic and musical works, are there any or under the direction or control of the Government and prescribed other works in which copyright can subsist and are international organisations. there any works which are excluded from copyright protection? Originality in copyright simply means that the work must have originated from the author and some effort must have gone into Other works that copyright can also subsist in include films, sound the creation of the work. While a literary, musical or artistic work recordings, works of architecture, artistic works incorporated within requires originality and reduction into material form for it to be a building, broadcasts, derivative works and published editions. eligible for copyright, such requirements do not apply to published editions, sound recordings, films or broadcasts. Copyright protection shall not extend to any idea, procedure, method of operation or mathematical concept. Copyright shall also Special rules apply to works of architecture and broadcasts. not subsist in any design which is registered under any written law Copyright shall also subsist in a work of architecture when it relating to industrial design. is erected in Malaysia, or any other artistic work incorporated in a building located in Malaysia, or a broadcast transmitted from Malaysia. 1.3 Is there a system for registration of copyright and if Qualified Person so what is the effect of registration? Copyright will vest in a work if the author, or in the case of joint There is no system for registration of copyright in Malaysia. The authorship, one of them, is a qualified person at the time of the Copyright (Amendment) Act 2012 introduced new Sections 26A, making of the work. The Act defines “qualified person” in relation 26B and 26C into the Act and these provisions (together with the to an individual as a person who is a citizen or permanent resident of Copyright (Voluntary Notification) Regulations 2012) establish Malaysia, and in relation to a body corporate, a body established in a new framework for the voluntary notification of copyright into Malaysia and constituted or vested with a legal personality under the Malaysian copyright law (“Voluntary Notification”). laws of Malaysia. By virtue of Malaysia’s accession to the Berne Convention in 1990, a qualified person in relation to a literary, Voluntary Notification is made by filing: (i) the prescribed forms; musical or artistic work or a film also includes a citizen or a body (ii) a statutory declaration; and (iii) a copy of the work with the corporate of a country which is a member of the Berne Convention. Controller of Copyright (“Controller”). The Voluntary Notification must be accompanied by payment of the prescribed fees, and may Publication of the Work be undertaken by (i) the author of the work, (ii) the owner of the Copyright shall also subsist in every work which is eligible for copyright, (iii) an assignee of the copyright, (iv) a licensee of an copyright and, being a literary, musical or artistic work or film or interest in the copyright, or (v) a person acting on behalf of any of sound recording, is first published in Malaysia, i.e. made available the persons referred to in items (i) to (iv). to the public. A work is also deemed to be first published in

While the Voluntary Notification regime does not derogate from Category of Work Duration of Copyright the requirement of non-formality for the enjoyment and exercise of 50 years computed from the copyright protection under the Berne Convention, copyright owners beginning of the calendar year can use Voluntary Notification as a prima facie proof of ownership Performers’ rights next following the year in which over their creative works. the performance was given or was fixed in a sound recording.

1.4 What is the duration of copyright protection? Does this vary depending on the type of work? 1.5 Is there any overlap between copyright and other intellectual property rights such as design rights and The term of copyright protection varies, depending on factors such database rights? Malaysia as the precise nature of the material in which copyright subsists, the owner’s identity i.e. Government or international organisation, In Malaysia, the protection of industrial designs is governed by the whether jointly authored, and whether the work was anonymous or Industrial Designs Act 1996 and the Industrial Designs Regulations pseudonymous. The following table sets out the category of work 1999 (“ID Act”). When the ID Act came into force in 1999, and the duration of copyright: amendments were made to the Act which substantially reduced the application of copyright law to designs and, in particular, the Category of Work Duration of Copyright making of three-dimensional articles. Copyright shall subsist during the life of the author and shall The Act specifically provides that copyright shall not subsist in continue to subsist until the any design which is registered under any written law relating to Published literary, musical or expiry of a period of 50 years industrial design. artistic works where the author after his death. Where the work is known is undertaken by joint authors, a Under Malaysian legislation and case law, there is no definition as reference to “author” shall, in such to what a “database” or “database right” constitutes, nor is there any case, be construed as a reference specific case law which addresses the extent of protection afforded to the author who dies last. to databases. A database may, however, fall under the definition Where such work had not been of “literary work” under Section 3 of the Act, which includes in published before the death of the author, the copyright which particular “tables or compilations, whether or not expressed in subsists in such work shall words, figures or symbols and whether or not in a visible form”. Unpublished literary, musical or continue to subsist until the artistic works where the author Additionally, databases also appear to fall under the banner of expiry of a period of 50 years is known “derivative works” under Section 8 of the Act. In respect of computed from the beginning of databases, derivative works include “collections of works eligible for the calendar year next following the year in which the work was copyright, or compilation of mere data whether in machine readable first published. or other form, which constitute intellectual creation by reason of Where the work is published the selection and arrangement of their contents”. Furthermore, anonymously or under a derivative works enjoy copyright protection as original works under pseudonym, the copyright which Section 8. However, the protection of such derivative works is subsists in such work shall continue to subsist until the without prejudice to any protection of any existing work used. Literary, musical or artistic works expiry of a period of 50 years The protection under Section 8 of the Act arises from the selection where the author is not known computed from the beginning of or arrangement of the contents that would constitute an intellectual the calendar year next following the year in which the work was creation, instead of the expenditure of investment towards obtaining, first published or first made verifying and presenting the contents of the database. While there available to the public or made, is no express protection against the ‘extraction’ or ‘re-utilization’ whichever is the latest. of a substantial part of the contents of a database as defined above, 50 years from the beginning of Section13(1) of the Act protects databases and their owners in the calendar year following the Published editions respect of providing the owners with the exclusive right to control: year that the edition was first published. (a) the reproduction in any material form; 50 years computed from the (aa) the communication to the public; beginning of the calendar year (b) the performance, showing or playing to the public; next following the year in which the recording was first published (e) the distribution of copies to the public by sale or other transfer Sound recordings or, if the sound recording has of ownership; and not been published, from the (f) the commercial rental to the public, beginning of the calendar year following the year of fixation. of the whole database or a substantial part thereof, either in its 50 years computed from the original or derivative form. beginning of the calendar year Broadcasts next following the year in which the broadcast was first made. 1.6 Are there any restrictions on the protection for 50 years computed from the copyright works which are made by an industrial beginning of the calendar year process? Films next following the year in which the film was first published. Section 13A(1) of the Act provides that it shall not be an infringement 50 years computed from the Works of Government, of any copyright in a design document or model recording or beginning of the calendar year Government organisations and next following the year in which embodying a design for anything other than an artistic work or a international bodies the work was first published. typeface to make an article to the design, or to copy or to reproduce an article made to the design. “Design” means the design of any

aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and 2.4 Is there a concept of joint ownership and, if so, what “design document” means any record of a design, whether in the rules apply to dealings with a jointly owned work? form of a drawing, a written description, a photograph, data stored in a computer or otherwise. A work of joint ownership is defined to mean “a work produced by the collaboration of two or more authors in which the contribution For Section 13A to apply, the design must be ‘for’ something, of each author is not separable from the contribution of the other meaning that the design as embodied in the design document or author(s)”. Whether a person is deemed to be a joint owner is a model must have been created as a step towards or a part of the question of fact to be satisfied based on the facts and circumstances process for the subsequent production of another article. Section of the case and it is imperative to consider the degree of skill and 13A is restricted to the three-dimensional reproduction of a design,

Malaysia labour each person claiming authorship plays in relation to the final and thus any copying of the two-dimensional design document itself work. may still be considered as an infringement of copyright. Joint authors are tenants in common rather than joint tenants, and Pursuant to Section 13B, once the copyright owner has made, by each joint author shares the copyright equally in the absence of any an industrial process or means, articles that are copies of the work; agreement to the contrary. Section 27(4) of the Act further provides and marketed such articles in Malaysia or elsewhere, the copyright that “an assignment or licence granted by one copyright owner shall owner is entitled to copyright protection of 25 years from the end of have effect as if the assignment or licence is also granted by his co- the calendar year in which such articles are first marketed. owner or co-owners, and subject to any agreement between the co- It should also be noted that “artistic work” no longer includes owners, fees received by any of the owners shall be divided equally a layout-design within the meaning of the Layout-Designs between all the co-owners”. As such, the terms of the assignment of Integrated Circuits Act 2000 by virtue of the Copyright will determine whether assignees hold as joint tenants or tenants (Amendment) Act 1996 and the Copyright (Amendment) Act 2000. in common, and also their respective proportions where the latter A three-dimensional work is no longer deemed to be an “artistic applies. work”, although it remains an infringement of copyright to make a Although the reproduction of work requires consent from all co- three-dimensional object from a two-dimensional artistic work and owners, a co-owner may sue for infringement without the other vice versa. co-owners, but such co-owner may only recover his share of the damages. 2 Ownership 3 Exploitation 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 apply)? 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? Copyright shall vest initially in the author. Copyright is transferable by assignment, testamentary disposition, or by operation of law, as movable property. An assignment or 2.2 Where a work is commissioned, how is ownership of testamentary disposition of copyright may be limited so as to apply the copyright determined between the author and the only to some of the acts which the owner of the copyright has the commissioner? exclusive right to control, or to only part of the period of the copyright, or to a specified country or other geographical area. For an assignment Where a work is commissioned by a person who is not the author’s or licence to have effect, it must be in writing. An assignment or employer under a contract of service or apprenticeship, the copyright licence granted by one copyright owner shall have effect as if the shall be deemed to be transferred to the person who commissioned assignment or licence is also granted by his co-owner(s) (if they share the work or the author’s employer, subject to any agreement a joint interest in the copyright or any part thereof), and subject to any between the parties excluding or limiting such transfer. While the agreement between the co-owner(s), fees received by any of the owners Act does not define “commission”, the term indicates a contractual shall be divided equally between all the co-owner(s). An assignment, arrangement with an obligation to pay. licence or testamentary disposition may be effectively granted or made in respect of a future work, or an existing work in which copyright 2.3 Where a work is created by an employee, how is does not yet subsist, and the future copyright in any such work shall be ownership of the copyright determined between the transferable by operation of law as movable property. employee and the employer? Where under a testamentary disposition, whether specific or general, a person is entitled beneficially or otherwise to the manuscript Where a work is made in the course of the author’s employment, of a literary, musical, or artistic work, and if the work has not the copyright shall be deemed to be transferred to the person who been published before the death of the testator, the testamentary commissioned the work or the author’s employer, subject to any disposition shall, unless a contrary intention is indicated in the agreement between the parties excluding or limiting such transfer. testator’s will or a codicil thereto, be construed as including the Whether or not a person is deemed to be an employee depends on copyright in the work in so far as the testator was the owner of the whether the individual was employed under a contract of service and copyright immediately before his death. if the work was part of the regular or special duties of the employee. It would be sufficient to show that a substantial part of the work was made whilst the author was still in employment. 3.2 Are there any formalities required for a copyright licence?

The copyright licence must be in writing.

in dispute and make such order, either confirming or varying the 3.3 Are there any laws which limit the licence terms licensing scheme so far as it relates to cases of the description to parties may agree (other than as addressed in which the reference relates, as it may determine to be reasonable in questions 3.4 to 3.6)? the circumstances.

No such laws have been enacted in Malaysia. 4 Owners’ Rights 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? Musical works and sound recordings have licensing bodies. Malaysia Currently, there are four collective licensing bodies in Malaysia: According to the Act, copyright owners have the exclusive right to 1. Music Authors’ Copyright Protection Berhad (MACP); control in Malaysia: 2. Public Performance Malaysia Sdn. Bhd. (PPM); a) the reproduction in any material form; 3. Recording Performers Malaysia Berhad (RPM); and aa) the communication to the public; 4. Performer’s Rights and Interest Society Malaysia Berhad b) the performance, showing or playing to the public; (PRISM). e) the distribution of copies to the public by sale or other transfer of ownership; and 3.5 Where there are collective licensing bodies, how are f) the commercial rental to the public, they regulated? of the whole work or a substantial part thereof, either in its original or derivative form. Collective licensing bodies are regulated by the Act and the Copyright (Licensing Body) Regulations 2012. A society or an organisation intending to operate as a licensing body for copyright 4.2 Are there any ancillary rights related to copyright, such as moral rights, and if so what do they protect, owners or for a specified class of copyright owners shall apply to the and can they be waived or assigned? Controller to be declared as a licensing body. There are two types of moral rights that are protected under the Act. 3.6 On what grounds can licence terms offered by a Authors’ Moral Rights collective licensing body be challenged? Section 25(2) provides that no person may, without the consent of the author, do or authorise: (a) the presentation of the work, by Pursuant to Sections 27AA(1) of the Act, “licensing scheme” means any means whatsoever, without identifying the author or under a licensing schemes operated by licensing bodies in relation to the name other than that of the author; and (b) the distortion, mutilation copyright in any work, so far as they relate to licences for: or other modification of the work if the distortion, mutilation or (a) reproducing the work; modification (i) significantly alters the work, and (ii) is such that (b) performing, showing or playing the work in public; it might reasonably be regarded as adversely affecting the author’s (c) communicating the work to the public; honour or reputation. (d) rebroadcasting the work; It is unclear whether Section 25 permits an author to waive his moral (e) the commercial rental of the work to the public; or rights. (f) making adaptation of the work. Performers’ Moral Rights The terms of a licensing scheme proposed to be operated by a The moral rights of a performer are the same as those granted to licensing body may be referred to the Copyright Tribunal by any authors of copyright works save that they are granted only to a organisation claiming to be a representative of persons claiming live performance or a live performance fixed in a phonogram. that they require licences in cases of a description to which the “Phonogram” has been defined under the Act to mean the fixation of licensing scheme would apply, either generally or in relation to any the sounds of a performance or of other sounds, or of a representation description of case. If the Copyright Tribunal decides to entertain of the sounds, other than in the form of a fixation incorporated in a the reference, it shall consider the matter referred and make such film or other audio-visual work. order, either confirming or varying the proposed licensing scheme, either generally or so far as it relates to cases of the description to 4.3 Are there circumstances in which a copyright owner which the reference relates, as it may determine to be reasonable is unable to restrain subsequent dealings in works in the circumstances. Similarly, if a dispute arises between the which have been put on the market with his consent? operator of the licensing scheme and: (a) a person claiming that he requires a licence in a case of a The exclusive right to control the distribution of copies refers only description to which the licensing scheme applies; to the act of putting into circulation copies not previously put into (b) an organisation claiming to be representative of such persons; circulation in Malaysia and not to any subsequent distribution of or those copies or any subsequent importation of those copies into (c) a person who has been granted a licence to which the licensing Malaysia. Furthermore, the exclusive right to control commercial scheme applies, rental in relation to films shall only apply when such commercial that operator, person or organisation may refer the licensing rental has led to widespread copying of such work materially scheme to the Copyright Tribunal in so far as it relates to cases of impairing the exclusive right of reproduction. that description. The Copyright Tribunal shall consider the matter

5 Copyright Enforcement 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement? 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to civil actions? Section 13(2) of the Act provides defences to infringement actions for the following: Section 5 of the Act empowers the Minister of the Ministry of (a) fair dealing for purposes of research, private study, criticism, Domestic Trade, Cooperative and Consumerism (MTDCC) to review or the reporting of news or current events, provided that it is accompanied by an acknowledgment of the title of appoint a Controller of Copyright, Deputy Controllers and Assistant the work and its authorship, except that no acknowledgment Malaysia Controllers and such other officers as may be necessary for the is required in connection with the reporting of news or current administration of the Act. The Assistant Controllers are vested with events by means of a sound recording, film or broadcast; the powers of investigation and these powers are shared equally (b) doing of any act by way of parody, pastiche or caricature; between the police and enforcement division of the MTDCC. The investigatory powers of the enforcement unit are limited to cases (c) incidental inclusion in a film or broadcast of any artistic work situated in a place where it can be viewed by the public; involving criminal offences under the Act. In terms of criminal prosecution, it is conducted by the Enforcement Division of Ministry (d) reproduction and distribution of copies of any artistic work of Domestic Trade, Cooperative and Consumerism (MTDCC) or permanently situated in a place where it can be viewed by the public; Royal Malaysian Police. (e) incidental inclusion of a work in an artistic work, sound The Act also establishes the Copyright Tribunal (“Tribunal”), which recording, film or broadcast; has the power to: approve or vary the licensing scheme; determine (f) inclusion of a work in a broadcast, performance, showing or whether particular applicants should be granted licences under such playing to the public, collection of literary or musical works, schemes; approve or vary the terms of particular licences; hear sound recording or film, if such inclusion is made by way of disputes over which applicants for a licence fall within the scheme illustration for teaching purposes and is compatible with fair on the refusals to grant licences; and make orders declaring that the practice, provided that mention is made of the source and of complainant is entitled to a licence. The Tribunal may of its own the name of the author which appears on the work used; motion, or at the request of a party, refer a question of law arising (g) any use of a work for the purpose of an examination by way in proceedings concluded before it for determination by the High of setting the questions, communicating the questions to Court. A decision of the High Court shall be final and conclusive the candidates or answering the questions, provided that a and no such decision shall be challenged by any other authority, reprographic copy of a musical work shall not be made for judicial or otherwise, whatsoever. use by an examination candidate in performing the work; (h) reproduction made in schools, universities or educational institutions of a work included in a broadcast intended for 5.2 Other than the copyright owner, can anyone else bring such schools, universities or educational institutions; a claim for infringement of the copyright in a work? (i) making of a sound recording of a broadcast, or a literary, dramatic or musical work, sound recording or a film included The Act provides that the exclusive licensee shall (except against the in the broadcast insofar as it consists of sounds if such sound owner of the copyright) have the same rights of action and be entitled recording of a broadcast is for the private and domestic use of to the same remedies, as if the licence had been an assignment, and the person by whom the sound recording is made; those rights and remedies shall be concurrent with the rights and (j) making of a film of a broadcast, or a literary, artistic, dramatic remedies of the owner of the copyright under that section. Where or musical work or a film included in the broadcast, insofar an action is brought either by the exclusive licensee and the action as it consists of visual images if such making of a film of the relates (wholly or partly) to an infringement in respect of which the broadcast is for the private and domestic use of the person by owner and licensee have concurrent rights of action, the licensee, whom the film is made; as the case may be, shall not be entitled, except with the leave of (k) making and issuing of copies of any work into a format to the court, to proceed with the action, in so far as it is brought under cater for the special needs of people who are visually or that section and relates to that infringement, unless the other party hearing impaired and the issuing of such copies to the public is either joined as a plaintiff in the action or added as a defendant. by non-profit making bodies or institutions and on such terms as the Minister may determine; (l) reading or recitation in public or in a broadcast by one person 5.3 Can an action be brought against ‘secondary’ infringers of any reasonable extract from a published literary work if as well as primary infringers and, if so, on what basis accompanied by sufficient acknowledgment; can someone be liable for secondary infringement? (m) any use made of a work by or under the direction or control of the Government, by the National Archives or any State Actions can be brought against a ‘secondary’ infringer who, without Archives, by the National Library, or any State library, or by the consent or licence of the copyright owner, and where he knows such public libraries and educational, scientific or professional or ought reasonably to know that the making of the article was institutions as the Minister may by order prescribe, where carried out without the consent or licence of the copyright owner, such use is in the public interest and is compatible with fair imports an article into Malaysia for the purpose of: practice and the provisions of any regulations, and no profit (a) selling, letting for hire, or by way of trade offering or is derived therefrom, and no admission fee is charged for the exposing for sale or hire, the article; performance, showing or playing, if any, to the public of the work thus used; (b) distributing the article for the purpose of trade or any purpose to an extent that it will prejudicially affect the owner of the (n) reproduction of any work by or under the direction or copyright; or control of a broadcasting service where such reproduction or any copies thereof are intended exclusively for a lawful (c) by way of trade, exhibiting the article in public. broadcasting and are destroyed before the end of the period of

six calendar months immediately following the making of the reproduction or such longer period as may be agreed between 5.7 What are the typical costs of infringement the broadcasting service and the owner of the relevant part of proceedings and how long do they take? the copyright in the work, provided that any reproduction of a work may, if it is of exceptional documentary character, be Infringement proceedings typically cost between USD50,000 and preserved in the archives of the broadcasting service which USD100,000 depending on the time, cost and complexity of the are hereby designated official archives for the purpose, but matter. On average, it takes approximately 12 to 18 months from subject to this Act, shall not be used for broadcasting or for filing to trial. any other purpose without the consent of the owner of the relevant part of the copyright in the work; (o) performance, showing or playing of a work by a non-profit 5.8 Is there a right of appeal from a first instance making club or institution where such performance, showing judgment and if so what are the grounds on which an Malaysia or playing is for a charitable or educational purpose and is in appeal may be brought? a place where no admission fee is charged in respect of such performance, showing or playing; The right of appeal from a first instance judgment from the High Court (p) any use of a work for the purposes of any judicial proceedings, is to the Court of Appeal in respect of the whole or any part of the the proceedings of a royal commission, a legislative body, judgment based on a point of fact or law, or both. However, an appeal a statutory or Governmental inquiry, or of any report of from the Court of Appeal to the Federal Court can only be based on any such proceedings, or for the purpose of the giving of a point of law, provided that a leave is granted by the Federal Court. professional advice by a legal practitioner; (q) the making of quotations from a published work if they are compatible with fair practice and their extent does not 5.9 What is the period in which an action must be exceed that justified by the purpose, including quotations commenced? from newspaper articles and periodicals in the form of press summaries, provided that mention is made of the source and Six years from the act of infringement before the action is time- of the name of the author which appears on the work thus barred. The date of infringement will apply with respect to cases of used; continuing infringement. (r) reproduction by the press, the broadcasting or the showing to the public of articles published in newspapers or periodicals on current topics, if such reproduction, broadcasting or 6 Criminal Offences showing has not been expressly reserved, provided that the source is clearly indicated; 6.1 Are there any criminal offences relating to copyright (s) reproduction by the press, the broadcasting or the infringement? performance, showing or playing to the public of lectures, addresses and other works of the same nature which are delivered in public if such use is for informatory purposes Section 41 of the Act penalises the following activities relating to and has not been expressly reserved; copyright infringement: (t) commercial rental of computer programs, where the program (a) making of any infringing copy for sale or hire; is not the essential object of the rental; and (b) selling, letting for hire or, by way of trade, exposing or (u) making of a transient and incidental electronic copy of a work offering for sale or hire any infringing copy; made available on a network if the making of such copy is (c) distribution of infringing copies; required for the viewing, listening or utilisation of the work. (d) the possession, otherwise than for private and domestic use, Other non-statutory defences include: of any infringing copy; (i) where the nature of the work itself is such that it should not (e) by way of trade, exhibition in public of any infringing copy; be protected on the grounds of public policy; and (f) importation into Malaysia of any infringing copy, other than (ii) where the unauthorised public disclosure of the copyrighted for private and domestic use; material is in the public interest. (g) making or the possession of any contrivance used or intended to be used for the purposes of making infringing copies; 5.5 Are interim or permanent injunctions available? (h) circumvention or authorisation of the circumvention of any effective technological measures; Both preliminary and final injunctions are available, as Malaysia (ha) manufacture, importation or sale of any technology or adopts a common law system. Other interlocutory relief available device for the purpose of the circumvention of technological include Anton Piller orders and Mareva injunctions. Interlocutory protection measure; relief is available where appropriate. (i) unauthorised removal or alteration of any electronic rights management information; and (j) unauthorised distribution, importation for distribution or 5.6 On what basis are damages or an account of profits communication to the public of works or copies of works in calculated? respect of which electronic rights management information has been removed or altered without authority. As damages and account of profits are alternatives, they cannot Upon conviction for an offence under paragraphs (a) to (f) above, be claimed simultaneously. An account of profits requires the the offender is liable to a fine of a sum not less than RM2,000 infringer to calculate the revenue gained from his infringement to and not more than RM20,000 for each infringing copy, or to the party whose rights he has infringed, whereas damages requires imprisonment for a term not exceeding five years, or to both, and for the infringer to compensate the party wronged for the loss he has any subsequent offence, to a fine of not less than RM4,000 and no suffered. more than RM40,000 for each infringing copy, or to imprisonment for a term not exceeding 10 years, or to both.

Upon conviction for an offence under paragraphs (g) to (ha) above, and Elster Metering, the validity of a retrospective assignment is the offender is liable to a fine of a sum not less than RM4,000 and questionable. not more than RM40,000 for each contrivance in respect of which 4) Sheikh Abdullah bin Ahmad v Universal Music [2017] MLJU the offence was committed, or to imprisonment for a term not 421 exceeding 10 years, or to both, and for any subsequent offence, to a The court opined that when the Defendant had uploaded the songs fine of not less than RM8,000 and no more than RM80,000 for each from the Plaintiff’s album onto iTunes, the Defendant was liable contrivance in respect of which the offence was committed, or to to pay equitable remunerations to the Plaintiff pursuant to Section imprisonment for a term not exceeding 20 years, or to both. 16B(1) of the Act. Section 16B(3A) provides that the performer Upon conviction for an offence under paragraphs (h) to (j) above, may apply to the Copyright Tribunal (“CT”) to determine the the offender is liable to a fine not exceeding RM250,000 or to amount payable as equitable remuneration; the court left it to the Malaysia imprisonment for a term not exceeding five years, or to both, and for parties to apply to the CT, since the Defendant paid the Plaintiff for any subsequent offence, to a fine not exceeding RM500,000 or to the downloads. imprisonment for a term not exceeding 10 years, or to both. 5) Prism Berhad v Measat Broadcast Network System Sdn Bhd It is also an offence to cause a literary or musical work, sound [2017] MLJU 511 recording or film to be performed in public. The Plaintiff was declared a “licensing body” by the Controller of Section 41 further provides that any person committing any of the Copyright. The Defendant owns and operates “All-Asian Satellite above offences is guilty of an offence, unless the accused is able Television and Radio Operator” (ASTRO). The court held that: to prove that he acted in good faith and had no reasonable grounds (a) as the Act has different provisions for copyright, “performer’s for supposing that copyright or performers’ right would or might be right” under Section 16A of the Act (“Performers’ Right”) and infringed. right of a performer to claim for “equitable remuneration” under Section 168B of the Act (“Equitable Remuneration Right”), it is clear that Parliament had intended for them to 6.2 What is the threshold for criminal liability and what be different from each other; are the potential sanctions? (b) the performers cannot claim any licence fee or other remuneration from the Defendant for ASTRO’s use of sound In Malaysia, the prosecution is required to prove beyond reasonable recording for commercial purposes (“Defendant’s Use”) doubt. Upon conviction for an offence under Section 41, the because: offender is liable to a fine, imprisonment and/or both. (i) the Defendant’s Use does not involve live performances and therefore does not concern Performers’ Right; 7 Current Developments (ii) licences under Section 3 of the Act refer to copyright only (not Equitable Remuneration Right). Consequently, performers cannot grant a licence and charge the 7.1 Have there been, or are there anticipated, any Defendant for licence fees regarding Defendant’s Use; significant legislative changes or case law and developments? (iii) Section 16B(1) of the Act has expressly provided that performers “shall” only be paid equitable remuneration Recent noteworthy cases between 3 February 2016 and 27 April (not licence fees) by users of sound recordings. It will therefore be contrary to Section 16B(1) to allow 2017 include: performers to charge the Defendant with licence fees for 1) Reka Setia Playground Sdn Bhd v Siow Wee Hong [2016] Defendant’s Use; MLJU 237 (c) as performers have no right to claim licence fees, they cannot The High Court held that Google cannot be a credible copyright assign any right to claim for licence fees from the Defendant database. It is merely an internet search engine and cannot be a to the Plaintiff; determinant of any copyright claims or contradictions. (d) the Plaintiff cannot claim for licence fees based on the 2) Public Prosecutor v Choo Soon Onn [2017] MLJU 26 Plaintiff’s licensing scheme because: The High Court was satisfied with the “good faith defence” by the (i) by virtue of Section 27A(1) of the Act, the Controller’s respondent who was charged with copyright infringement because Declaration only declared the Plaintiff as a “licensing he failed to renew a licence. The respondent, an illiterate person, body”. A licensing body may then operate a “licensing scheme” within the meaning in Section 3 of the Act. had made reasonable efforts to specifically verify renewal terms According to Section 3(a), a licensing scheme sets out with the agent during the signing of the agreement. “classes of case in which the operator of the scheme, of 3) Portcullis Trustnet (Singapore) Pte Ltd v George the person on whose behalf he acts, is willing to grant Pathmanathan a/l Michael Gandhi Nathan & Ors copyright licences”. It is therefore clear that the Plaintiff’s The High Court held that Section 27 of the Act does not invalidate licensing scheme concerns copyright licences according an assignment of a copyright on the grounds that the assignment to Section 3(a) (no Equitable Remuneration Right); and is given retrospective effect. The court further opined that the (ii) Section 27AA(1) of the Act provides that a licensing High Court’s judgment in Elster Metering Ltd & Anor v Premier scheme may only be operated “in relation to the copyright Amalgamated Sdn Bhd [2010] 2 CLJ 149 (which held that in any work” and not Equitable Remuneration Right; retrospective assignment ought not to be entertained as it may (e) the Plaintiff cannot claim for licence fees based on agreements encourage litigation or fraudulent litigation by the execution of entered into between the performers, as the Defendant is not self-serving statements) has to be read with caution in light of the a party to the Performers’ Agreements with the Plaintiff. Further, Section 16B(3) of the Act envisages a contract Federal Court’s decision in Dura-Mine Sdn Bhd v Elster Metering between performers and the Defendant (not the Plaintiff) Ltd & Anor [2015] 3 MLJ 1. However, in that case, the Federal regarding equitable remuneration for the Defendant’s Use; Court did not address the validity of a retrospective assignment (f) there is no contract between performers and the Defendant in its judgment. In view of the conflicting decisions in Portcullis regarding equitable remuneration for the Defendant’s

Use. Unless and until the CT has decided on the quantum the terms and conditions of use of the work, numbers/codes that of equitable remuneration payable by the Defendant under represent such information, when any of these items is attached to a Section 16B(3A), performers have no right under Section copy of a work or appears in connection with the communication of 16B(3A) to claim for such an equitable remuneration; the work to the public. (g) the performers cannot claim for equitable remuneration from The Act exempts a service provider from liability for copyright the Defendant and, consequently, the performers cannot infringement in the following situations: assign the Equitable Remuneration Right to the Plaintiff. The Plaintiff therefore has no locus standi and the court allowed 1. if the infringement occurs from: (a) a transmission, routing the striking-out of the action; and or provisions of connections by the service provider of an electronic copy of the work through its primary network; (h) however, the court clarified that the striking-out of the action or (b) any transient storage by the service provider of an does not prejudice the performers because the performers electronic copy of the work in the course of such transmission, Malaysia still have a statutory right to apply to the CT under Section routing or provision of connection, provided that (i) the 16B(3A) of the Act to determine the amount payable by the service provider did not initiate or direct the transmission of Defendant as equitable remuneration for the Defendant’s the electronic copy of the work, (ii) the transmission, routing, Use. Once the CT has decided on the quantum of equitable provision of connections or storage is carried out through remuneration payable by the Defendant to performers for the an automatic technical process without any selection of the Defendant’s Use: electronic copy of the work by the service provider, (iii) the (i) the Equitable Remuneration Right has accrued in favour service provider does not select the recipient of the electronic of the performers as against the Defendant; and copy of the work except as an automatic response to the (ii) the Equitable Remuneration Right can be assigned by request of another person, or (iv) the service provider does performers to the Plaintiff. not make any modification, other than a modification made 6) Aktif Perunding Sdn Bhd v ZNVA & Assoc Sdn Bhd [2017] as part of a technical process, to the content of the electronic MLJU 605 copy of the work during its transmission through the primary network; The High Court held that Section 25(2) of the Act only confers 2. in the making of any electronic copy of the work on its moral rights in a work on its author who is a natural person (and primary network, if it is (a) from an electronic copy of the not a company) because the provision expressly provided for the work made available on an originating network, (b) through scenario when an author of a work dies. an automatic process, (c) in response to an action by a user of its primary network, or (d) in order to facilitate efficient access to the work by a user; and 7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in 3. where infringement arises from (a) the electronic copy of the relation to digital content (for example, when a work work being stored at the direction of a user of its primary is deemed to be made available to the public online, network, or (b) the service provider referring or linking a hyperlinking, etc.)? user to an online location on an originating network where an electronic copy of the work is available, provided that the Section 36A of the Act provides that if a technological protection service provider does not have knowledge of the infringing activity, does not receive any financial benefit directly measure is applied to a copy of a work, no person shall circumvent attributable to the infringement, and responds within the time such measure. “Technological protection measure” is defined to specified to remove access to the infringing copy. mean any technology which prevents or limits the doing of any act that results in an infringement of copyright. Section 43H of the Act provides that if an electronic copy of any work accessible in a network infringes the copyright of a work, the Section 36B of the Act prohibits any person from removing copyright owner (“First Issuer”) may notify the service provider to or altering any electronic rights management information or remove any access to the electronic copy on the service provider’s distributing any works or copies of works knowing that electronic network provided that the First Issuer shall undertake to compensate rights management information has been removed or altered. the service provider against damages arising from complying with “Rights management information” means information which such notification. identifies the work, the author, the owner of any right of the work,

Jessie Tan Renny Tan Seow & Associates Seow & Associates Suite B-11-6, Level 11, Wisma Pantai Suite B-11-6, Level 11, Wisma Pantai Plaza Pantai, No. 5, Jalan 4/83A, Off Jalan Plaza Pantai, No. 5, Jalan 4/83A, Off Jalan Pantai Baru Pantai Baru 59200 Kuala Lumpur 59200 Kuala Lumpur Malaysia Malaysia

Tel: +603 2201 5584 Tel: +603 2201 5584 Email: [email protected] Email: [email protected] URL: www.seowassociates.com URL: www.seowassociates.com

Malaysia A partner with Seow & Associates, Jessie graduated from the Renny joined Seow & Associates as a partner, bringing with her a University of Sheffield (UK), with a Bachelor of Laws. Jessie’s expertise vast experience in corporate, commercial, banking and conveyancing lies in the field of intellectual property as well as in commercial and law. She graduated with a Bachelor in Law (Hons) from England and corporate law, with a special focus on the application of these laws commenced her legal practice in one of the most formidable law firms to the entertainment and media industries. She has advised clients in Malaysia, Shook Lin & Bok. She has advised and drafted contracts from various industries including the media, telecommunications, for clients from various industries including authorities, production internet, pharmaceutical, F&B and fashion sectors. Part of her companies, animation houses, performing art agency, manufacturing practice includes advising on the establishment of joint ventures and companies, foreign financial institutions, local and foreign investment the acquisition of companies and businesses. Jessie also handles banks and fund managers. Her practice has seen her involvement trade mark and copyright registration matters and has also advised on in acting as the Malaysian counsel for a foreign bank in a syndicated intellectual property rights and arrangements for their acquisition and/ banking facility for facilities of up to USD200 million, as well as advising or exploitation including strategic partnership established to create on the sale and purchase of companies, and drafting business transfer intellectual property. She has advised Malaysian and foreign MNCs agreements. on strategies for licensing, branding and global protection.

Seow & Associates is passionately driven to provide comprehensive legal advisory services of integrity and commercial edge, across national boundaries and on international platforms. The firm takes fierce pride in its lawyers’ abilities to recognise unique traits of each client and to create bespoke solutions to ensure clients obtain legal support of the highest quality. The firm’s wide gamut of practice areas has allowed it to enjoy a diverse set of clients ranging from the Malaysian government, government agencies, statutory bodies, government-linked companies, film studios, to well-known foreign and local production companies. The firm has been awarded the Media & Entertainment Law Firm of the Year in Malaysia for 2017 byGlobal Law Experts and is also ranked in Media Law International’s publication. It was nominated as the best boutique firm by the Asia Legal Business Awards 2016 and has also been listed on The Legal 500 since 2014.

Mexico Israel Pérez Correa

PEREZ CORREA & ASOCIADOS, SC Hugo H. Zapata

■ blank formats or formulas containing any type of information, 1 Copyright Subsistence as well as their instructions; ■ reproduction or imitations, without authorisation, of shields, 1.1 What are the requirements for copyright to subsist in flags or emblems of any country, state, municipality or a work? equivalent political division; ■ denominations, initials, symbols or emblems of international A work is a personal expression or intellectual creation that results government organisations, or any government or other from human sensibility, talent and ingenuity. Mexican Copyright organisation officially recognised, as well as the verbal description of them; Law (“MCL”) considers protection to all creations that are individual (created by the flesh and blood individual, “author”, or ■ legislative, regulatory, administrative or judicial texts, as well “authors” in the case of collective works), completed, unitary and as their official translations; represent something. ■ informative content of news (but its form of expression may be copyrightable); and In this order of ideas, Article 3 of the Mexican Copyright Law provides that “[t]he works protected by this law are those of original ■ information in common use such as proverbs, sayings, legends, facts, calendars and metric scales. creation, susceptible of being divulged or reproduced in any form or means”. Also, Copyright Law in Mexico requires that the work is fixed on 1.3 Is there a system for registration of copyright and if a material support to be protected; nevertheless, protection will so what is the effect of registration? always be for the human creation and not for the medium in which the work is represented. Yes, the Mexican Copyright Office (“MCO”) is the authority entitled to enforce MCL and grant registration to the works; nevertheless, works to be protected or which receive copyright protection (both 1.2 On the presumption that copyright can arise in literary, moral and patrimonial) may only have to comply with requirements artistic and musical works, are there any other works of Article 3 mentioned above and be fixed in a material support. As in which copyright can subsist and are there any works which are excluded from copyright protection? a consequence, registration in Mexico is declarative of rights but not constitutive of rights, since registration only constitutes a bona fide presumption that information regarding the creation, author and According to the provisions of Article 13 of the MCL, the following time of the work are true. kind of works are copyrightable: literary; musical (with or without lyrics); dramatic; dance; pictorial or drawing; sculpture or plastic In order register a work at the MCO, it is necessary to fill an official work; caricature and cartoons; architectural; cinematographic form, attach two samples of the work and pay the corresponding and other audio-visual works; radio and television programmes; government fees. computer programs; photographic; applied art works, including graphic and textile design; and compilations such as encyclopaedias, 1.4 What is the duration of copyright protection? Does anthologies, and other works such as databases, but only if such this vary depending on the type of work? works may be considered as an intellectual creation. Likewise, other works that may be considered as literary or artistic works will In accordance with the provisions of MCL, protection for patrimonial be included in the most related category. rights persists during the lifetime of the author (or contributor) On the other hand, MCL also establishes that the following may not and for 100 years following the author’s death, starting from the be protected by copyright: date that the work was created and fixed into a material support or ■ ideas themselves, formulae, solutions, concepts, methods, tangible mean of expression. systems, principles, discoveries, processes or inventions of any kind; industrial or commercial exploitation of the ideas 1.5 Is there any overlap between copyright and other contained in works; or schemes, plans or rules for the making intellectual property rights such as design rights and of mental acts, games or business; database rights? ■ letters, digits or isolated colours, except where they are stylised to such an extent that they become original designs; Yes. It is common that certain kinds of works may be eligible for ■ names and titles or lone phrases;

double or cumulative protection by means of copyright and another Finally, to consider that a work has been created under a work-for- intellectual property right. For example, ornamental designs may be hire scenario, terms and conditions of the agreement should be clear protected by copyright and industrial design. Isolated designs may and precise; otherwise, in case of any doubt, the most favourable constitute trademarks or copyrightable works. interpretation to the author will prevail. Moreover, MCL allows sui generis protection for (among others) fictitious and real characters through a non common IP right, namely 2.3 Where a work is created by an employee, how is “reserva of exclusive rights”; thus, trademark rights, reserva rights ownership of the copyright determined between the and copyright may apply to the protection of characters, protecting employee and the employer? through these rights the artistic side of the character, the commercial use of the character and also the psychological and physical Mexico If the work is created as a consequence of a written labour agreement, characteristics of it. unless otherwise agreed, the MCL establishes that the patrimonial rights will pertain in equal parts to the employee and employer, and the employer may divulge the work without the authorisation of the 1.6 Are there any restrictions on the protection for copyright works which are made by an industrial employee but not vice versa. process? If there is a lack of written labour agreement, the exploitation rights will be granted to the employee. No, there are no specific provisions or restrictions on this matter.

2.4 Is there a concept of joint ownership and, if so, what 2 Ownership rules apply to dealings with a jointly owned work?

Works may be co-authored and/or co-owned. There are specific 2.1 Who is the first owner of copyright in each of the provisions to distinguish between works that have been made jointly works protected (other than where questions 2.2 or by two or more flesh and blood individuals, which are known as 2.3 apply)? collaborative works, and works that have been made by two or more authors (natural persons), but under the initiative of a third person The Mexican copyright system is based on the principle that the author (natural person or entity), which are known as collective works (flesh and blood individual) and its creations are the main object (Article 4. D. II and III). In both cases, unless otherwise agreed, of protection and has been outlined on the duality of patrimonial rights shall be granted to all co-authors in equal proportions. There and moral rights, recognising also the economic and remuneration are also ownership rules, depending on whether the ownership of rights. Accordingly, generally speaking, Mexican copyright legal the work is attributed by transfer, as a result of a commission or by framework considers the author as the first owner of patrimonial authorship (Articles 78 to 84 of the MMCL). rights and as the sole and perpetual owner of moral rights. Article 19 of the MCL states that a moral right is considered attached to the author and is considered perpetual, non-lapsable, indefeasible and 3 Exploitation unseizable. On the other hand, Article 26 states that the author is the original holder of patrimonial rights, and his successors or assignees 3.1 Are there any formalities which apply to the transfer/ (causahabientes) shall be regarded derivative owners. assignment of ownership? Patrimonial rights are those rights that permit authors to benefit from their creation and control its exploitation (reproduction, distribution, As we mentioned before, only exploitation or patrimonial rights transformation, and public communication). Moral rights are those may be transferred or assigned. personal non-patrimonial rights that cannot be renounced (integrity, All transfers or assignments of patrimonial rights: (i) shall be done paternity, divulgation and withdrawal right). in writing, otherwise the transfer will be considered null; (ii) must Exceptions of the general rule apply when the work is made by work- be reattributed (cannot be free); and (iii) must be temporary for for-hire. In this case, the person or entity that commissions work no more than 15 years (specific exceptions apply if the nature or from an author, no matter if is under employment circumstances or investment justifies the extension). If the term is not specified, a as freelance, and reattributes the author for its contribution, may be general rule of five years will be considered. considered as the original owner of the patrimonial rights. One last exception applies for audio-visual works, in which the 3.2 Are there any formalities required for a copyright MCL consider the producer as the copyright owner. licence?

2.2 Where a work is commissioned, how is ownership of Yes. It has to be done in writing, it has to be temporary and cannot the copyright determined between the author and the be free. Furthermore, if the licence is granted as exclusive, such commissioner? provision has to be specified in the licence agreement. Likewise, compulsory licences may exist if there is a circumstance for the When the work is the result of a commission, MCL states that, unless development of science, national education and culture. otherwise agreed, patrimonial rights will remain to the individual or entity that asks for the contribution. Likewise, the natural person that creates the work shall maintain the right to be recognised as the 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in author of the work. questions 3.4 to 3.6)? In addition, MCL establishes that the person who creates a musical work for hire will have the right to receive the payment of royalties Yes. Please see the answers to questions 3.1 and 3.2, where we for the public communication or public transmission of the work. explain that restrictions for transfers and assignments also apply to

licences. The general rule is five years, which may be extended up to 15 years if the parties agree such term in writing; furthermore, under 3.6 On what grounds can license terms offered by a certain circumstances and depending on the nature of the work and collective licensing body be challenged? the investment for it, such term of 15 years may be extended. The law does not provide a limitation in this case but all licences have to If the licence terms are against MCL provisions, the user of that be temporary and cannot be perpetual. licence is entitled to revoke the licence; an example of this could be any term of the contract that is in breach of the moral and patrimonial rights. 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)?

4 Owners’ Rights Mexico In Mexico, there are different types of collective licensing bodies, within which those who have the most impact are those whose users are the authors, producers and performers of the works that 4.1 What acts involving a copyright work are capable of are considered the most important in the entertainment industries. being restricted by the rights holder? The following are those with the most impact on the authors’ rights industry: In Mexico, the author and even his or her successors and heirs are always entitled to restrict the acts that infringe the moral rights of ■ Society of Authors and Composers of Mexico (authors and composers). a work (disclosure right, recognition of authorship, opposition to any deformation, mutilation or other modification, withdraw the ■ Mexican Society of Directors of Audiovisual Works work from the trade, among others) regardless of the licensees of (directors). the exploitation rights. ■ Mexican Society of Producers of Phonograms, Videogram and Multimedia (producers of phonograms, videograms and If the right holder of a copyright is someone other than the author, multimedia). the acts that it is capable of restricting correspond to the exploitation ■ General Society of Writers of Mexico (authors of literary rights (reproduction, publication, edition, public communication, works). public transmission, distribution, importation, disclosure of derivative works, among others). ■ National Association of Interpreters (performers). If the author has the exploitation and moral rights, it is entitled to restrict any act that is in the scope of such rights. 3.5 Where there are collective licensing bodies, how are they regulated? 4.2 Are there any ancillary rights related to copyright, The collective licensing bodies in Mexico are regulated under the such as moral rights, and if so what do they protect, MCL, which establishes their object, functions and principles, and can they be waived or assigned? providing a legal framework to facilitate the collection and delivery to authors and holders of related rights, the amounts of which are Moral rights are not considered as ancillary rights but primary rights generated in their favour by copyright or related rights, through its “united” to the author. The author is the primal and perpetual owner public communications. of such rights and in the absence of the author, the successor and heirs are entitled to exercise them, and in some cases, the State. The regulatory framework establishes the rights and obligations with which entities must comply, such as foreseeing that the successors Holders of moral rights are entitled to: of authors and owners of related rights, national or foreign, residing a) Disclose or not the copyrighted work. in Mexico may be part of collective licensing bodies. Likewise, b) Demand the recognition of authorship and disclose the work in order to be able to operate as a management company, it is as an anonymous or pseudonymous work. necessary to have the authorisation of the MCO, who may revoke c) Demand respect for the work, opposing to any deformation, such authorisation for non-compliance with what is established in mutilation or other modification, as well as to any action or the MCL. attack to the same that causes demerit of the work or prejudice to the reputation of its author. The following are examples of different rights that such entities are entitled to: d) Modify the work. ■ Exercising the patrimonial right of its members. e) Withdraw the work from trade. ■ Negotiate the licences of use of the repertoires that manage f) Oppose to the attribution of an author of a work that is not the users, and perform the respective licence agreements. part of its creation. ■ Monitor the use of authorised repertoires. The heirs may only exercise the rights established in sections a), b), ■ Collect for its members the royalties from the corresponding c) and f), and the State, if applicable, may only do so in relation to copyright or related rights, and deliver them after deduction those established in sections c) and f) above. of the expenses of administration of the licensing body, if Ancillary rights are referred to as any right connected with exploiting there is an express mandate. the work in manners that are different from its original format Licensing bodies also have different obligations, such as: to Intervene and this is very common in the entertainment arena. Conditions in the protection of the moral rights of its members; to accept the for granting and exploiting such kind of rights are negotiated in administration of patrimonial rights and related rights that are different ways throughout agreements. entrusted to them according to their object or purposes; to negotiate the amount of royalties to be paid to the users of the repertoire they manage; and, in the case of not reaching an agreement, to propose to the MCO the adoption of a general fee presenting the supporting elements.

4.3 Are there circumstances in which a copyright owner 5.3 Can an action be brought against ‘secondary’ is unable to restrain subsequent dealings in works infringers as well as primary infringers and, if so, which have been put on the market with his consent? on what basis can someone be liable for secondary infringement? Yes. Once authors or owners of exploitation rights have pledged to contribute to the performance of the audio-visual work, they may In Mexico, the law makes no distinction between primary and not oppose the reproduction, distribution, representation and public secondary infraction; however, such violations are contained performance, transmission by cable, broadcasting, communication in various provisions and are substantiated before authorities to the public, subtitling and dubbing of the texts of this work. mentioned in question 5.1. Mexico In the case of works that are conceived as a result of a working relationship, or those which are commissioned works, the author 5.4 Are there any general or specific exceptions which cannot prevent subsequent dealings because the exploitation rights can be relied upon as a defence to a claim of are no longer owned by the author. The contracts of the parties infringement? should contain provisions addressing this matter. Likewise, Article 148 of the MCL states that in some cases, such as There are some exceptions called limitations to copyright, which, the citation of texts, reproduction of parts of the work, for criticism among others, are listed below: and scientific, literary or artistic research and private use under ■ Citation of texts. certain conditions, among others, literary and artistic works already ■ Reproduction of articles, photographs, illustrations and disclosed may be used, provided that the normal exploitation of the comments referring to current events, published by the press work is not affected, without authorisation from the owner of the or broadcast on radio or television. patrimonial right and without remuneration, invariably citing the ■ Reproduction of parts of the work, for criticism and scientific, source and without altering the work. literary or artistic research. ■ Reproduction of a single copy by an archive or library for reasons of security and preservation, and which is exhausted, 5 Copyright Enforcement out of print and in danger of disappearing.

5.1 Are there any statutory enforcement agencies and, if 5.5 Are interim or permanent injunctions available? so, are they used by rights holders as an alternative to civil actions? Yes. In the case of trade infringement related to copyright, according to the Industrial Property Law, the MPTO may take the following In Mexico, apart from civil actions, there are different authorities measures, among others: that are responsible for handling the procedures relating to different ■ Order the withdrawal of the circulation of goods that infringe copyright violations. rights. In the case of copyright violations, according to the MCL, these are ■ Order to withdraw from circulation: substantiated before the MCO. a) objects manufactured or used illegally; In the case of trade infringement, according to the MCL, the b) objects, packaging, stationery, advertising material and proceeding is substantiated before the Mexican Patent and the like that infringe any of the rights protected by the Trademark Office (“MPTO”). IPL; and Likewise, in the case of copyright offences, they are denounced c) advertisements, signs, stationery and the like that infringe before the public ministry to be then resolved by the competent any of the rights protected by this Law. court. ■ Prohibit the marketing or use of infringing products. The MCL also provides an arbitration procedure, which is governed ■ Seize infringing products. by the MCL and the commercial code and substantiated at the MCO.

Also, the MCL provides a compromise agreement procedure 5.6 On what basis are damages or an account of profits (procedimiento de avenencia) which is substantiated before the calculated? MCO. Article 216-bis of the MCL states a minimum standard provision 5.2 Other than the copyright owner, can anyone else bring establishing that reparation of damages shall not be in any case less a claim for infringement of the copyright in a work? than 40 per cent of the selling price of the infringing product.

Yes. In this case, the person who has an exclusive or non-exclusive 5.7 What are the typical costs of infringement licence may sue a third party for copyright infringement. proceedings and how long do they take? On the other hand, the heirs or successors of the authors can claim the infringement for violation of the moral rights of a work of Each case can be very different and times and costs will depend of authorship. the particular circumstances and complexity. Common costs in a Similarly, in the event that there are no heirs or successors of an non-extraordinary case should be around 5,000 USD to 9,000 USD author, the State is entitled to act against potential offenders. for the first instance at both the MCO or the Mexican Patent and Trademark Office (“MPTO”); nevertheless, after first instance, there are at least two (but can be three) more instances to challenge the first instance rule. The timeframe also depends on the complexity of the matter, the pending cases at the office of the judge and the

attention of the attorney in charge, but normally civil proceeding (iv) any person that produces, reproduces, introduces to the take from 15 to 36 months, and administrative proceedings take country, stores, transports, distributes, sells or leases around 24 to 72 months. copies of works, audio or video recordings, or books protected by MCL, in a fraudulent manner, for commercial purposes, and without having the authorisation from the 5.8 Is there a right of appeal from a first instance holder of the copyright or neighbouring rights; judgment and if so what are the grounds on which an (vi) any person that having knowledge contributes in any appeal may be brought? manner to or affords raw materials or consumables directed for the production or reproduction of works, Yes, there are three instances to appeal a first instance sentence. The audio or video recordings, or books referred to in the

following rules and steps apply: previous paragraph; or Mexico (i) Optional petition for review within the 15 business days (vii) any person that manufactures for commercial purposes following the date that the sentence is notified. The same a device or system with the purpose of deactivating the office will resolve this optional petition. protective electronic devices of a computer program. (ii) Appeal within the next 45 business days as from the date that ■ Article 424 ter provides that imprisonment of between the sentence is notified before the Specialized Intellectual six months and six years, and a fine up to 30,000 days of Property Court (“SEPI”) of the Federal Court of Tax and minimum salary, will be imposed on any person that sells Administrative Affairs (Second Instance). The timeframe in copies of works, audio or video recordings or books to any this instance is around 18 months. final consumer in a public place and in a fraudulent way for (iii) Constitutional appeal (Amparo) against the sentence ruled commercial purposes. by the SEPI. Amparo would be ruled at the Federal Circuit ■ Imprisonment of between six months and two years, or a fine Court and has to be filed within the next 15 business days of up to 3,000 days of minimum salary will be imposed on after the date that the second instance sentence is notified. any person who, knowingly and without right, exploits an The timeframe for this instance is around 12 months artistic performance for commercial purposes. It is not possible to appeal a Constitutional sentence. ■ Imprisonment of between six months and four years, and a fine will be imposed on: ■ any person that manufactures, imports, sells or leases 5.9 What is the period in which an action must be a device or system to decode a coded satellite signal or commenced? programme-carrier, without authorisation of the legitimate distributor of said signal; and Neither the MCL nor Industrial Property Law state any specific ■ any person that performs any act for commercial purposes period to file legal actions against copyright infringements; however, with the intention of decoding a signal. MCL establishes the Federal Civil Code as supplementary law, ■ Imprisonment from six months to six years and a fine from which provides a prescription period of two years after the plaintiff 300 to 3,000 days of minimum salary will be imposed upon a became aware of the infringement to file a civil action. person who knowingly publishes a work replacing the name of the author with another name. 6 Criminal Offences The pecuniary sanctions provided herewith shall be applied without prejudice to the repair of the damage, applying the 40 per cent rule that has been explained above in the answer to question 5.6. 6.1 Are there any criminal offences relating to copyright infringement? 6.2 What is the threshold for criminal liability and what are the potential sanctions? Yes, criminal actions could be conveyed at criminal courts, in the case of copyright piracy activities and in the case of infringements See the answer to question 6.1. that are committed in bad faith and at a commercial scale. In this matter, the function of Attorney General’s Office is to investigate copyright crimes. Different to administrative courts that have the 7 Current Developments intellectual property specialised court, in Mexico, we still do not have a criminal court specialised in copyright law. Articles 424 to 429 of the Federal Criminal Code state provisions 7.1 Have there been, or are there anticipated, any significant legislative changes or case law regarding copyright criminal offences, establishing the following: developments? ■ Imprisonment of between six months and six years, and a fine from 300 to 300,000 days of minimum salary, will be For at least the past five years and particularly as from the imposed on: execution of the Trans-Pacific Partnership agreement by Mexico, all (i) any person that deals in any form with free textbooks practitioners and persons involved and interested in the intellectual distributed by the Public Education Department; property system are expecting some changes and developments not (ii) an editor, producer or recorder that knowingly produces only in copyright but in all Mexican IP legal framework; however, more copies of a work protected by federal copyright law there is still not a tentative date for such developments. than authorised by the holder of the rights; or (iii) any person that intentionally uses, with commercial On the other hand, in June 2017, the General Law of Culture and purposes and without the corresponding authorisation, Cultural Rights entered into force. This law has the following works protected by MCL. purposes: ■ From three years’ up to 10 years’ imprisonment and a fine I. to recognise the cultural rights of persons living in the will be imposed on: territory of Mexico;

II. to establish the mechanisms of access and participation of individuals and communities to cultural manifestations; 7.2 Are there any particularly noteworthy issues around III. to promote and respect the continuity and knowledge of the the application and enforcement of copyright in relation to digital content (for example, when a work country’s culture in all its manifestations and expressions; is deemed to be made available to the public online, IV. to guarantee the enjoyment of goods and services provided hyperlinking, etc.)? by the State in cultural matters; V. to promote, respect, protect and ensure the exercise of cultural At the moment, there is no a clear regulation on how to deal with rights; infringers in the digital environment. Legislators and IP groups VI. to establish the bases of coordination between the Federation, are trying to resolve the problem of piracy and infringement of the federative entities, the municipalities and mayors of Mexico copyrights in digital content; however, even though WIPO treaties Mexico City in matters of cultural policy; set some rules concerning exceptions and limitations for the digital VII. to establish mechanisms for the participation of the social and arena and Mexico has adopted some provisions in the MCL, and private sectors; and considering also that several provisions connected with digital VIII. to promote among the population the principle of solidarity media have been established in Mexican legislation such as the and responsibility in the preservation, conservation, Federal Civil Code, the Commercial Code or the Criminal Code, improvement and restoration of goods and services provided at this time there is no certain answer under the scope of Mexican by the State in the matter. legal framework of who should be responsible and punished for performing piracy and internet infringements.

Israel Pérez Correa Hugo H. Zapata PEREZ CORREA & ASOCIADOS, SC PEREZ CORREA & ASOCIADOS, SC Terranova 329-307, Leones Terranova 329-307, Leones C.P. 64600, Monterrey C.P. 64600, Monterrey Nuevo León Nuevo León Mexico Mexico

Tel: +52 818 693 9033 Tel: +52 818 333 7519 Email: [email protected] Email: [email protected] URL: www.perezcorrea.com URL: www.perezcorrea.com

Israel Pérez Correa started his career more than 15 years ago at Hugo H. Zapata is an intellectual property attorney. He has a Master’s Olivares and then managed the IP and entertainment area of the degree in IP Law from Universidad Panamericana. Before joining second most important broadcaster company in LATAM; after that, PEREZ CORREA in 2017, he served as head of IP for the Instituto Israel was in charge of the IP practice of Gardere in Mexico and was Tecnológico de Monterrey, as well as legal head of the Technology a foreign associate for Gardere in Dallas Texas during 2010 to work Transfer Office of the Instituto Tecnológico de Monterrey. with British American Tobacco before joining PEREZ CORREA. Israel has acted as a speaker in forums and has published numerous articles connected with intellectual property law in national and international magazines.

PEREZ CORREA is an intellectual property, technology and commercial law firm assisting national and international clients local and abroad. The Intellectual Property practice includes patent, trademarks, copyright and related rights, franchises, IP strategy, transactions and agreements, Internet and digital media, licensing and litigation connected thereto for all kinds of industries, but primarily acting in the media, fashion, sports, entertainment, technologies and life science arena. Our team is made up of lawyers, scientists and engineers, who help us to understand and maximise the technical scope, having a deep knowledge of the law.

Nigeria John C. Onyido

S. P. A. Ajibade & Co Yetunde Okojie

1 Copyright Subsistence 1.2 On the presumption that copyright can arise in literary, artistic and musical works, are there any other works in which copyright can subsist and are there any 1.1 What are the requirements for copyright to subsist in works which are excluded from copyright protection? a work? Copyright protection also extends to Neighbouring rights like 1. For copyright to subsist in a work, the work must be a Performer’s rights and Expressions of Folklore. A performance literary, musical or artistic work, cinematograph film, sound recording or broadcast (inclusive of adaptations of may be musical or dramatic and would ordinarily include literary any of these creative expressions) as defined under the recitations and pantomimes. An expression of folklore is a “… Nigerian Copyright Act Cap. C28 Laws of the Federation group-oriented and tradition based creation of groups or individuals of Nigeria 2004. reflecting the expectation of the community as an adequate 2. Sufficient effort must have been expended in making the expression of its cultural and social identity, its standards and values work to give it an original character. as transmitted orally…”. Examples of these include riddles, dances, 3. The work must be in a fixed or definite medium of expression, plays, poetry, and indigenous art forms and expressions. now known or later to be developed from which it can be On the other hand, artistic works intended by the author to be perceived, reproduced or communicated either directly or used as a model or pattern to be multiplied by industrial process with the aid of a device. are ineligible for copyright protection. As in most common law 4. The work must have been first published in Nigeria. jurisdictions, copyright protection in Nigeria does not extend to 5. In the case of a sound recording, it must have been first made ideas, facts, processes, laws of nature and mathematical formulas. in Nigeria. 6. The author is a citizen of or domiciled in Nigeria or a body 1.3 Is there a system for registration of copyright and if corporate incorporated in Nigeria. so what is the effect of registration? 7. The work was first published in a country which is a party to a Convention or international treaty to which Nigeria is a There is no system or requirement for the registration of copyright signatory; or the work is first published by the United Nations in Nigeria. A work, once created, becomes automatically or any of its specialised agencies, the Organisation of African copyrightable if the requirements identified above have been Unity (i.e. the African Union) or the Economic Community met. However, the Nigerian Copyright Commission (NCC) has of West African States (ECOWAS). Furthermore, in each of these instances, one of the authors of the work must be a introduced an online database for the owners of copyrighted works citizen or domiciled in such treaty country or international and individuals/entities who have acquired rights to these works to arrangement/organisation, or is a body corporate set up under register them online with the Commission. Although registration such international copyright arrangement or international is not mandatory under the law, it provides a convenient tool for organisation. proving ownership, date of creation and other ancillary information Nigeria is currently a signatory to the Berne Convention relating to the copyrighted material. (1886), the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement (1994), the WIPO Copyright Treaty (1996), the Universal Copyright Convention (1952), 1.4 What is the duration of copyright protection? Does this vary depending on the type of work? the Brussels Convention on the Distribution of Programme- Carrying Signals Transmitted by Satellite (1974), the Geneva Convention for the Protection of Producers of Phonograms The duration of copyright protection depends on the type of work against Unauthorised Duplication (1971), and the Rome involved. Convention for the Protection of Performers, Producers of For literary, musical or artistic works other than photographs, the Phonograms and Broadcasting Organisations (1961). copyright subsists from the date of creation and expires 70 years 8. Based on reciprocity, where the relevant Minister (i.e., for after the end of the year in which the author dies. Culture) is satisfied that the treaty member extends similar protection to works protected under the Nigerian Copyright In the case of cinematograph films and photographs, copyright Act. expires 50 years after the end of the year in which the recording was first made; whilst in the case of broadcasts, copyright expires 50 years after the end of the year in which the broadcast first took place.

1.5 Is there any overlap between copyright and other 2.4 Is there a concept of joint ownership and, if so, what intellectual property rights such as design rights and rules apply to dealings with a jointly owned work? database rights? The concept of joint ownership exists under Nigerian copyright law, There is an overlap between copyright, design rights and other and a work is said to be jointly owned where the owners share a intellectual property rights in Nigeria. Designs, which are protected joint interest in the whole or any part of the copyright or if they under the Patents & Designs Act, may also constitute copyrightable have a proprietary interest in the various works forming part of a works protectable under copyright law. Although there is no specific composite production. In other words, a production consisting of reference to database rights under the current Nigerian Copyright two or more works. Nigeria Act, these are presumably protectable as literary works (or as In the case of a joint ownership of a work, reference to the death compilations) in the same manner as computer software programs. of the author shall be taken to refer to the author who died last. Computer programs are entitled to protection both under copyright All assignments and licences granted over the protected work are law as literary works and under patent law, where they involve an deemed to be granted by the co-owner and fees payable as a result inventive step, are novel and capable of industrial application. Also of the grant are equitably divisible between such co-owners subject certain designs and logos may be protectable under both copyright to the terms and conditions of any existing contract between them. law and trademark law.

1.6 Are there any restrictions on the protection for 3 Exploitation copyright works which are made by an industrial process? 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? Works of an artistic nature made by industrial process cannot be protected in so far as they are intended by the author, at the time For an assignment/transfer of copyright ownership to be valid, it they were created, to be used as a model or pattern to be multiplied must be in writing and must apply only to acts which the owner by industrial/mechanical process. of the copyright has exclusive rights to control. Copyright is transmissible in Nigeria by operation of law or by testamentary 2 Ownership disposition as any movable property. Any testamentary disposition of original copyrighted material shall be presumed (in the absence of evidence to the contrary) to include the copyright or prospective 2.1 Who is the first owner of copyright in each of the copyright in the work which may vest in the decedent/deceased. works protected (other than where questions 2.2 or 2.3 apply)? 3.2 Are there any formalities required for a copyright licence? The first owner of the copyright in a protected work is the author, or in the case of a joint authorship, any or all of the authors. All exclusive licences of copyrighted material must be in writing to be valid, whereas non-exclusive licences may be written or oral, or 2.2 Where a work is commissioned, how is ownership of may be inferred from the conduct of the parties. the copyright determined between the author and the commissioner? 3.3 Are there any laws which limit the licence terms Where a work is commissioned, ownership shall belong in the first parties may agree (other than as addressed in questions 3.4 to 3.6)? instance to the author, unless otherwise stipulated in writing under an applicable contract. There are no provisions in the current Copyright Act and any Subsidiary Legislation which directly limit the terms that parties 2.3 Where a work is created by an employee, how is may agree upon in a licensing arrangement. Whatever arrangements ownership of the copyright determined between the that parties make would, however, be subject to public policy employee and the employer? presumptions against illegal contracts and other related laws regulating the transfer of technology, compliance with standards, Where a work is created by an employee, in the course of local content provisions and applicable monetary policy guidelines employment, copyright shall belong in the first instance to the on transfer of foreign exchange out of jurisdiction in line with the employee, unless otherwise stipulated in writing, i.e. in a contract payment clause contained in such licence agreements. of employment. However, where a literary, artistic or musical work is made by an author in the course of employment by the proprietor of a newspaper, magazine or other periodical, and the work is made 3.4 Which types of copyright work have collective for the purpose of accomplishing these objectives, copyright would licensing bodies (please name the relevant bodies)? initially vest in the proprietor unless the contrary is stipulated by agreement. Under the Nigerian Copyright Act and the Copyright (Collective Management Organizations) Regulations of 2007, collecting In the case of sound recordings and cinematograph films, the author societies licensed by the Commission may manage all performance is under an obligation to conclude contractual arrangements with and mechanical rights relating to the musical works/compositions and third parties whose works may form part of the subject work prior sound recordings of their member-artistes. The Copyright Society of to its creation. Nigeria (COSON) and very recently the Musical Copyright Society of Nigeria (MCSN) are the collecting societies licensed by the

Commission to manage the rights of artists to copyrighted material Moral rights under Nigerian law protect the right of the author in musical works and sound recordings. COSON and MCSN are to be identified as the creator of the work, and are designed to charged with the responsibility of negotiating licensing arrangements shield authors from derogatory actions, including the distortion, with users on favourable terms, as well as the collection and mutilation or modification of their work, where these actions would distribution of royalties on behalf of members. Other collective be prejudicial to the author’s honour and reputation. Although licensing bodies are the Audio Visual Rights Society of Nigeria these rights may be waived, they are perpetual, inalienable and (AVRS) for audio-visual works, and the Reproduction Rights Society imprescriptible under Nigerian law. of Nigeria (REPRONIG) for cinematographic works. Performers’ rights address the right of the author to public performance, recording, and live broadcasts, as well as the

3.5 Where there are collective licensing bodies, how are reproduction of the protected work in any material form or the Nigeria they regulated? creation of adaptations of the performance. They can be waived and are generally assignable. Collective licensing bodies in Nigeria are bodies formed to manage Copyright protection in expressions of folklore covers the right of any one or more of the exclusive rights of copyright owners, to a group, community or individual to restrict, through the Copyright license and collect royalties from users of copyrighted works within Commission, the reproduction, communication to the public their repertoire for the benefit of members. They are regulated by by performance, broadcasting, distribution, adaptation, and/or the Nigerian Copyright Commission (NCC) in accordance with the translations of protected material, either for commercial purposes or Copyright Act and the 2007 Regulations made by that agency. outside their traditional context, by unauthorised persons.

4 Owners’ Rights 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to civil actions? 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? Yes, there is a statutory enforcement agency known as the Nigerian Copyright Commission (NCC), which can be instigated A rights holder can restrict or regulate the use of his work in by rightsholders to sue infringers/pirates in the form of criminal relation to: prosecutions as an alternative to civil action at the Federal High Court. The criminal provisions in the Act are enforced by 1. public performances and or display of the work; Copyright Inspectors with police powers, who are appointed by the 2. the making of adaptations or derivative works; Commission. The Copyright Act allows both criminal and civil 3. publication, copying and reproduction of the work; actions to be pursued simultaneously in respect of the same act 4. lending, renting and issuing copies to the public, and all other of infringement. The powers of the Commission to institute and distributions to the public for commercial gain; maintain a criminal charge against an alleged offender separate from 5. producing, reproducing, performing or publishing translations and despite the conclusion of the Civil lawsuit was confirmed by of the work; the trial court in Suit No. FHC/ABJ/CR/379/15: Nigerian Copyright 6. making a cinematograph film or recording of the work; and Commission v. MTN Nigeria Communications Ltd. 7. broadcasting or communicating the work to the public. 5.2 Other than the copyright owner, can anyone else bring 4.2 Are there any ancillary rights related to copyright, a claim for infringement of the copyright in a work? such as moral rights, and if so what do they protect, and can they be waived or assigned? Other than the copyright owner, an assignee or exclusive licensee can bring an action for infringement of a copyrighted work. Yes, there are ancillary rights related to copyright and they include However, the law provides that where both the assignee and an moral rights, performers’ rights and the protection of expressions exclusive licensee enjoy concurrent claims to the protected material, of folklore. then unless the leave of the court is first obtained, the lawsuit may

not proceed without the copyright owner being joined either as co- copyright infringement. Interim injunctions may be issued ex parte plaintiff or co-defendant to the action. on a quia timet basis or in the form of an interlocutory restraining order after taking arguments from the plaintiff and the defendant. In rare cases, Anton Piller injunctions can be obtained where the 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, copyright owner argues to the satisfaction of the court that the on what basis can someone be liable for secondary alleged infringer is likely to remove and/or destroy evidence of the infringement? infringing activity, unless restrained by an order of court as a matter of extreme urgency. Furthermore, where there is evidence that An action against a secondary infringer is justifiable where infringing materials together with the implements and contrivances the secondary infringer aids, abets, connives with and actively for making them are in an identified location, the court may issue an Nigeria facilitates the procurement or infringement of a copyrighted work. order ex parte for the inspection and or seizure of such materials for The generally accepted prongs of secondary liability for copyright safe keeping, pending the final determination of the lawsuit. infringement would cover ‘vicarious liability’ where the secondary Permanent injunctions are issued at the end of a full trial (or infringer exercises sufficient control over the premises or implements settlement, depending on the terms) when the trial court accepts the of infringement and obtains direct financial benefits from the primary copyright owner’s claims as established by credible evidence. infringer’s activity, and ‘contributory liability’, where the secondary infringer induces, causes or materially contributes to the offending 5.6 On what basis are damages or an account of profits conduct or otherwise facilitates infringement by end-users. calculated? Criminal liability for secondary infringement would arise where one, without the licence or authority of the copyright owner: A claim for general damages avails a successful plaintiff to a 1. does or causes any person to do an act, the doing of which copyright infringement claim as a matter of the court’s discretion. is controlled by copyright without the copyright owner’s Conversely, a claim for specific damages must be categorically permission; pleaded and strictly proved with the aid of substantiating evidence. 2. imports or causes to be imported into Nigeria any copy of Furthermore, the court may award additional damages, usually in a work which if it had been made in Nigeria would be an the nature of punitive, exemplary or aggravated damages, based infringing copy under the Act; on the flagrancy of the infringement, and any benefit shown to 3. permits a place of public entertainment or of business to be have accrued to the defendant by reason of the infringement, and used for a performance in the public of a work, where the effective relief not being otherwise available to the plaintiff, and any performance constitutes an infringement of the copyright in other material consideration. the work, unless the person permitting the place to be used was not aware and had no reasonable grounds for suspecting that An account of profits may only be ordered where, although the the performance would be an infringement of copyright; or infringer admits liability, there is evidence indicating that at the 4. performs or causes the performance, for business or trade time of such infringing activity the infringer was not aware and purposes or as a supporting facility, of any work protected by had no reasonable basis for suspecting that the affected works were copyright. protected by copyright. In such unique cases, an award of damages is deemed inappropriate under the Nigerian Copyright Act.

5.4 Are there any general or specific exceptions which In addition to the traditional remedies for copyright infringement, can be relied upon as a defence to a claim of the Nigerian Copyright Act also recognises the right of the copyright infringement? owner to assume ownership or to institute an action for conversion of the infringing material as well as all the tools, machinery and Yes, there are defences to a claim for copyright infringement, and equipment employed in their production. they are only available where: 1. In the case of criminal liability, it can be proved to the 5.7 What are the typical costs of infringement satisfaction of the court that the alleged infringer had no proceedings and how long do they take? knowledge and no reason to believe that any such copy was an infringing copy of affected work or that the implements, The cost of infringement proceedings depends on the attorney equipment or other contrivances such as plates, master tapes, fees, filing fees, damages awarded and other incidental expenses. reproduction machines, etc., were used for the purpose of On average, professional fees range from between $15,000 and making infringing copies of such work. $25,000, depending on the complexity of the case. Success fee 2. In all other instances, the defence of fair dealing is available arrangements are also available based on mutually agreed terms, to the defendant, where the alleged infringing activity was for educational purposes, research or review, private use, with the client assuming responsibility for disbursements and out- news commentary and other critical reviews like caricatures, of-pocket expenses. parodies or satires, or incidental inclusions of artistic works in a There is no stated duration for infringement proceedings, but in the film or broadcast. Other exceptions include use of works under absence of bureaucratic delays and preliminary proceedings, it could the direction or control of the government, public libraries, last for a minimum of two to three years where there is a full trial. scientific and research institutions in the public interest and for non-commercial objectives; and use of copyright protected works in legal proceedings and under a compulsory 5.8 Is there a right of appeal from a first instance licence issued by the Commission for the translation and/or judgment and if so what are the grounds on which an reproduction of certain specified works under the Act. appeal may be brought?

Yes, there is a right of appeal from the court of first instance, and 5.5 Are interim or permanent injunctions available? the grounds on which an appeal is brought depends on the subject matter of the suit and the ratio decidendi of the judgment. Ideally, Yes, interim and permanent injunctions are available in an action for

an appeal is indicated when the appellant alleges that the trial the sanction is a fine not exceeding N1,000.00 for every copy court failed to weigh and evaluate the evidence adduced at trial or dealt with or to a term of imprisonment not exceeding five failed to ascribe appropriate probative value to such evidence; or years or both. having properly weighed the evidence, the trial court arrived at an 2. Selling or letting for hire, exposing or offering for sale or illogical conclusion. Other grounds of appeal may be justified if it hire, distributing for the purpose of trade, being in possession, can be argued that material evidence was improperly excluded or selling, exposing for sale, hiring or distributing any work not considered, and if the outcome would have been different had which if it had been made in Nigeria would be an infringing such evidence been considered. An appeal may also be justified on copy attracts a fine of N100 for every copy dealt with or a term of imprisonment not exceeding two years or to both. technical grounds where questions of jurisdiction and standing to sue are alleged. 3. Distributing in public by way of rental, lease, hire, loan or similar arrangement without the consent of the owners for Nigeria commercial purposes, copies of a work in which copyright 5.9 What is the period in which an action must be subsists attracts a sanction of N100 for every copy dealt commenced? with or to imprisonment for six months, or both fine and imprisonment. Since a claim for copyright infringement is a tort claim under the common law, the applicable time frame within which to bring such 7 Current Developments claims would be within a three-year period under the Statute of Limitations. However, copyright infringements are peculiarly of a continuing nature and as such the question would invariably be 7.1 Have there been, or are there anticipated, any of determining when the infringement abates in order to ascertain significant legislative changes or case law when the computation period begins to run. developments? The overarching consideration would be for the court to make a determination as to when the complainant first discovered the For legislative changes, there is presently a Bill before the Nigerian infringing activity or should have, on the exercise of reasonable Legislature for the Amendment of the Copyright Act to provide diligence, discovered it. Next would be whether the complainant stiffer penalties for contravention of the Act and other related is entitled to damages/compensation for the entire period of matters. There is also before the Nigerian House of Assembly an infringement or for the period commencing from the date of Intellectual Property Commission of Nigeria Bill and an Industrial discovery going forward. A court of law has to make a discretionary Property Commission of Nigeria Bill. call in most cases on whether the copyright owner has unduly slept With reference to case law developments, the recently concluded on its rights or waived them by conduct. These are issues which case involving the Copyright Society of Nigeria (COSON) v. MTNN have not yet been examined by Nigerian courts in the field of with Suit No. FHC/L/CS/619/2016 was settled out of court by the copyright law. parties. Consequently, both the trial and the appellate courts did not have the opportunity to clearly define the scope of rights and responsibilities of collecting societies, copyright owners and users 6 Criminal Offences of these rights in Nigeria as envisaged. There is, however, ongoing litigation between the Copyright Society 6.1 Are there any criminal offences relating to copyright of Nigeria (COSON) v. Emerging Markets Telecommunications infringement? Services Limited (“Etisalat”) with Suit No. FHC/L/CS/756/2016, on substantially identical issues of law. This case, barring Yes, there are criminal offences relating to copyright infringement. settlement, may likely define the scope of rights and responsibilities Criminal liability will attach for making, selling, importing, of Collecting Societies, vis-à-vis the copyright owners and the users distributing, or hiring for the purpose of trade infringing copies of of these rights. works in which copyright subsists. It also constitutes a criminal A further pending matter is the recently filed case of Musical offence under the Act to make or have in one’s possession any Copyright Society Nigeria (MCSN) v. Copyright Society of Nigeria equipment or machine for the purpose of making infringing copies (COSON) Suit No. FHC/L/CS/1172/17. In April 2017, the Attorney of protected works; and importing, making, removing, defacing or General of the Federation and Minister of Justice approved the tampering with anti-piracy devices and the circumvention of digital MCSN as an additional Collective Management Organization protection measures prescribed by the Commission for use on (CMO) in Nigeria. MCSN is suing the pre-existing Collecting copyrighted materials. Society for an accounting of all royalties earned on behalf of members within its repertory of works among other claims. The 6.2 What is the threshold for criminal liability and what determination of this case will reinforce the scope of accountability are the potential sanctions? between CMOs and members in Nigeria. There is also still pending before the Federal High Court in Abuja As in all criminal cases, the threshold for liability is proof beyond the case involving the Nigerian Copyright Commission v. MTNN a reasonable doubt, whether premised upon an admission, on direct [FHC/ABJ/CR/379/15] for certain copyright offences. This case or circumstantial evidence or a combination of these. Summary is expected to examine the powers of the Commission to pursue a convictions for offences committed under the Act are also available criminal charge against an alleged offender despite the settlement and the following offences have been assigned specific punishment. of the civil action and the consequence(s) of proceeding with 1. Making or causing to be made for sale, hire or for the the criminal action with or without the support of a reluctant purpose of trade or business any infringing work; importing complainant. or causing to be imported; making, causing to be made or In the recent case of VoiceWeb International Limited v. Etisalat being in possession of any equipment for the purposes of (now 9mobile Nigeria) & Ors. [FHC/L/CS/576/17], the plaintiff making any infringing work is a criminal offence for which is suing the defendant and three others for theft of confidential

information, the misappropriation of certain alleged trade secrets accounts of repeat offenders, the limitation of liability of Service and for copyright infringement. This case raises interesting issues Providers regarding user content and information residing on ISP of substantial similarity, appropriation of copyrighted material and network platforms as well as the denial of access to infringing breach of confidential/proprietary information. material placed on these online platforms. Furthermore, the Guidelines for the Provision of Internet Service 7.2 Are there any particularly noteworthy issues around issued by the Nigerian Communications Commission pursuant to the application and enforcement of copyright in section 70(2) of the Nigerian Communications Act, 2003, prescribes relation to digital content (for example, when a work minimum standards of compliance by ISPs in order to avoid liability is deemed to be made available to the public online, for cybercrimes and violations of intellectual property rights hyperlinking, etc.)?

Nigeria including cooperating with enforcement and regulatory agencies investigating illegal online activities. ISPs are absolved of liability The current Copyright Act does not specifically address internet as content intermediaries if they maintain their neutrality and act issues and other claims arising in the realm of new technologies. appropriately in responding to take down notices of challenged However, Part VII of the proposed Copyright Bill addresses online online content. issues like the issuance of take-down notices, suspension of the

John C. Onyido Yetunde Okojie S. P. A. Ajibade & Co S. P. A. Ajibade & Co Suite 301, SPAACO House Suite 301, SPAACO House 27A Macarthy Street 27A Macarthy Street Onikan, Lagos Onikan, Lagos Nigeria Nigeria

Tel: +234 8032204371, +234 8151191865 Tel: +234 8923659365 / +234 8078191721 Email: [email protected] Email: [email protected] URL: www.spaajibade.com URL: www.spaajibade.com

Mr. Onyido is the Partner in charge of the Firm’s Intellectual Property Yetunde Okojie is an Associate at S. P. A. Ajibade & Co., with vast and Technology Department. He is an intellectual property rights expertise in commercial transactions and intellectual property law. She specialist with significant practice experience spanning over 26 years is skilled in intellectual property law, database protection, copyrights, and across various jurisdictions. Mr. Onyido is qualified to practise patents, e-commerce and registration of trademarks and designs in law in the United States and is admitted to practise in the State of New different jurisdictions, including Ghana, OAPI and Nigeria. York, the Southern and Eastern District Courts, as well as before the Yetunde holds a law degree from University of Ibadan, Nigeria, a US Court of Appeals for the 2nd Circuit and the United States Supreme Master of Laws Degree in Commercial Law from the University College Court. of London School of Law and a Certificate in General Intellectual John holds a law degree from the University of Benin, and triple Property law from the World Intellectual Property Organisation (WIPO). postgraduate law degrees, including a Master of Laws degree in Intellectual Property Law from the Benjamin N. Cardozo School of Law in New York. Prior to joining SPA Ajibade & Co., as a Partner, John worked at Cravath, Swaine & Moore LLP in Manhattan and had previously represented various transnational corporations in the protection and enforcement of diverse intellectual property rights in Nigeria. John currently sits on the editorial board of the Copyright Lawyer Magazine based in the United Kingdom.

The Law Firm of S. P. A. Ajibade is a leading corporate and commercial law firm established in 1967. The firm provides cutting-edge services to both its local and multinational clients in the areas of Dispute Resolution, Corporate Finance and Capital Market, Real Estates and Succession, Energy and Natural Resources, Telecommunications, Taxation and Intellectual Property Law. Its associates are very skilled in general corporate and commercial law practice, with subject-specific expertise spanning across jurisdictions. At S. P. A. Ajibade & Co., we render sound technical advice and provide tailored customer solutions that effectively resolve the unique needs of our local and international partners.

Philippines Enrique T. Manuel

SyCip Salazar Hernandez & Gatmaitan Vida M. Panganiban-Alindogan

works with the National Library and the Supreme Court Library. 1 Copyright Subsistence However, in a Memorandum of Agreement signed on January 25, 2011, the National Library deputised the Intellectual Property Office 1.1 What are the requirements for copyright to subsist in of the Philippines (IPO) as a receiving office for the registration and a work? deposit of copyrighted works. To implement the said deputisation, the Guidelines for Copyright Registration and Deposit was Original intellectual creations in the literary and artistic domain are formulated, which includes, among others, a procedure for the protected under the provisions of the Intellectual Property Code of registration and deposit of copyrighted works with the Intellectual the Philippines (IP Code). Property Satellite Offices (IPSOs) of the IPO. The said Guidelines did not, however, affect the system of deposit of works in the field of law maintained by the Supreme Court Library. 1.2 On the presumption that copyright can arise in literary, artistic and musical works, are there any Copyright protection exists from the moment of creation. Works other works in which copyright can subsist and are are protected by the sole fact of their creation, irrespective of their there any works which are excluded from copyright mode or form of expression, as well as of their content, quality and protection? purpose. Accordingly, registration is not a mandatory requirement for the protection of a copyrighted work. However, registration Apart from literary, artistic and musical works, other works establishes a public record of the copyright claim. covered by copyright include: architecture; computer programs; advertisements; and maps and technical drawings. The following 1.4 What is the duration of copyright protection? Does derivative works are also protected by copyright: (a) dramatisations, this vary depending on the type of work? translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and (b) collections of Copyright in literary, artistic and derivative works under Sections literary, scholarly or artistic works, and compilations of data and 172 and 173 of the IP Code shall be protected during the life of the other materials which are original by reason of the selection or author and for fifty (50) years after his death. This rule also applies coordination or arrangement or their contents. to posthumous works. However, no protection shall extend, under the IP Code, to: any In the case of works of joint authorship, the economic rights shall idea, procedure, system method or operation, concept, principle, be protected during the life of the last surviving author and for fifty discovery or mere data as such, even if they are expressed, (50) years after his death. explained, illustrated or embodied in a work; daily news and other miscellaneous facts having the character of mere items of press In the case of anonymous or pseudonymous works, the copyright information; or any official text of a legislative, administrative or shall be protected for fifty (50) years from the date on which the legal nature, as well as any official translation thereof. work was first lawfully published, provided that where, before the expiration of the said period, the author’s identity is revealed or is In addition, no copyright shall subsist in any work of the Government no longer in doubt, the provisions of Subsections 213.1 and 213.2 of the Philippines. However, prior approval of the government of the IP Code shall apply, as the case may be, provided, further, agency or office wherein the work is created shall be necessary for that such works, if not published before, shall be protected for fifty exploitation of such work for profit. Such agency or office may, (50) years counted from the making of the work. among other things, impose as a condition the payment of royalties. No prior approval or conditions shall be required for the use for any In the case of works of applied art, the protection shall be for a purpose of statutes, rules and regulations, and speeches, lectures, period of twenty-five (25) years from the date of making. sermons, addresses, and dissertations, pronounced, read or rendered In the case of photographic works, the protection shall be for fifty in courts of justice, before administrative agencies, in deliberative (50) years from publication of the work and, if unpublished, fifty assemblies and in meetings of public character. (50) years from the making. In the case of audio-visual works, including those produced by a 1.3 Is there a system for registration of copyright and if process analogous to photography or any process for making audio- so what is the effect of registration? visual recordings, the term shall be fifty (50) years from the date of publication and, if unpublished, from the date of its creation. The IP Code provides for the registration and deposit of copyrighted

The term of protection subsequent to the death of the author (b) The employer, if the work is the result of the performance of provided in the preceding section shall run from the date of his death his regularly assigned duties, unless there is an agreement, or of publication, but such terms shall always be deemed to begin on express or implied, to the contrary. the first day of January of the year following the event which gave In the case of a work commissioned and paid for by a person other rise to them. than an employer and where such work is made in pursuance of the The rights granted to performers and producers of sound recordings commission, the person who so commissioned the work shall have under the IP Code shall expire: ownership of the work, but the copyright thereto shall remain with (a) for performances not incorporated in recordings, fifty (50) the creator, unless there is a written stipulation to the contrary. years from the end of the year in which the performance took In the case of audio-visual work, the copyright shall belong to the place; and producer, the author of the scenario, the composer of the music, the

Philippines (b) for sound or image and sound recordings and for performances film director, and the author of the work so adapted. However, subject incorporated therein, fifty (50) years from the end of the year to contrary or other stipulations among the creators, the producers in which the recording took place. shall exercise the copyright to an extent required for the exhibition In the case of broadcasts, the term shall be twenty (20) years from the of the work in any manner, except for the right to collect performing date the broadcast took place. The extended term shall be applied licence fees for the performance of musical compositions, with or only to old works with subsisting protection under the prior law. without words, which are incorporated into the work. In respect of letters, the copyright shall belong to the writer, subject 1.5 Is there any overlap between copyright and other to the provisions of Article 723 of the Civil Code of the Philippines. intellectual property rights such as design rights and The publishers shall be deemed to represent the authors of articles database rights? and other writings published without the names of the authors or under pseudonyms, unless the contrary appears, or the pseudonym Yes. The same industrial product can be protected by both a design or adopted name leaves no doubts as to the author’s identity, or if the right and a copyright. Under Section 172.1 (h) of the IP Code, author of the anonymous works discloses his identity. original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works 2.2 Where a work is commissioned, how is ownership of of applied art, are enumerated specifically as works protected the copyright determined between the author and the by copyright. On the other hand, for an industrial product to be commissioner? protected by a design right, it must be a new and original creation, pursuant to Rule 1502 and Rule 1505 of the Revised Implementing Please see the answer to question 2.1. Rules for Patents, Utility Models and Industrial Designs (RIRR).

2.3 Where a work is created by an employee, how is 1.6 Are there any restrictions on the protection for ownership of the copyright determined between the copyright works which are made by an industrial employee and the employer? process? Please see the answer to question 2.1. The IP Code of the Philippines does not squarely address or define copyright works which are made by an industrial process. Therefore, this is not applicable. 2.4 Is there a concept of joint ownership and, if so, what rules apply to dealings with a jointly owned work?

2 Ownership Please see the answer to question 2.1.

2.1 Who is the first owner of copyright in each of the 3 Exploitation works protected (other than where questions 2.2 or 2.3 apply)? 3.1 Are there any formalities which apply to the transfer/ Copyright ownership shall be governed by the following rules: assignment of ownership? Subject to the relevant provisions of the IP Code, in the case of original literary and artistic works, copyright shall belong to the Under the relevant provisions of the Civil Code of the Philippines, author of the work. an assignment of a right or action shall produce no effect as against a third person, unless it appears in a public instrument. In the case of works of joint authorship, the co-authors shall be the original owners of the copyright, and in the absence of an agreement, A copyright is not deemed assigned inter vivos in whole or in part their rights shall be governed by the rules on co-ownership. If, unless there is a written indication of such intention. however, a work of joint authorship consists of parts that can be used separately and the author of each part can be identified, the 3.2 Are there any formalities required for a copyright author of each part shall be the original owner of the copyright in licence? the part that he has created. In the case of work created by an author during and in the course of In the Philippines, licensing of all forms of intellectual property his employment, the copyright shall belong to: rights falls under the rubric of a ‘technology transfer arrangement’ (a) The employee, if the creation of the object of copyright is not (TTA). Section 4.2 of the IP Code covers contracts involving the a part of his regular duties even if the employee uses the time, transfer of systematic knowledge for the manufacture of a product, facilities and materials of the employer. the application of a process, or the rendering of a service, including management contracts, and the transfer, assignment or licensing of all

forms of intellectual property rights, including licensing of computer software, except computer software developed for the mass market. 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? A TTA must meet the requirements under Chapter IX of the IP Code on Voluntary Licensing, particularly Sections 87 and 88 on The IP Code is silent on this matter. However, Article 1306 of prohibited clauses and mandatory provisions. As a general rule, the Civil Code of the Philippines states that clauses, conditions, the recordation of a TTA is not mandatory under the IP Code. procedures, or formalities of contracts may not be ‘contrary to law, The non-recordation of a TTA does not affect the enforceability morals, good customs, public order, or public policy’. Likewise, or validity of the agreement. However, parties to a technology Article 1159 of the Civil Code of the Philippines imposes a duty of transfer arrangement must ensure that their contract complies with good faith between parties to a contract. Articles 19 and 21 of the the mandatory and prohibited clauses of the IP Code, otherwise the Civil Code of the Philippines contain general good faith and abuse

contract will be deemed automatically unenforceable. Philippines of right provisions that could potentially be invoked by an aggrieved party. 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in questions 3.4 to 3.6)? 4 Owners’ Rights

Please see the answer to question 3.2. 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? Subject to the relevant provisions of Chapter VIII of the IP Code (Limitations on Copyright), copyright or economic rights shall The Filipinas Copyright Licensing Society, Inc. (FILCOLS) is the consist of the exclusive right to carry out, authorise or prevent the collective management organisation (CMO) officially accredited by following acts: the Government through the Intellectual Property Office (IPO) to a. reproduction of the work or substantial portion of the work; collectively administer, license, and enforce the right of reproduction b. dramatisation, translation, adaptation, abridgment, of authors, publishers and other right-holders in the text and image arrangement or other transformation of the work; sector. FILCOLS is a member of the Brussels-based International c. the first public distribution of the original and each copy of Federation of Reproduction Rights Organizations. the work by sale or other forms of transfer of ownership; The Filipino Society of Composers, Authors and Publishers, Inc. d. rental of the original or a copy of an audio-visual or (FILSCAP) undertakes collective rights management for public cinematographic work, a work embodied in a sound recording, performances and the use of songs in television and radio broadcasts a computer program, a compilation of data and other and movies. FILSCAP’s responsibility of royalty collecting extends materials or a musical work in graphic form, irrespective of to members of foreign affiliates such as the American Society of the ownership of the original or the copy which is the subject Composers, Authors, and Publishers (ASCAP), Broadcast Music of the rental; Inc. (BMI), Composers and Authors Society of Hong Kong e. public display of the original or a copy of the work; (CASH), and more than 50 other organisations. FILSCAP is the f. public performance of the work; and holder of deeds of assignment to collect royalties from artists in the g. other communication to the public of the work. Philippines and abroad. Subject to the provisions of Section 212 of the IP Code, performers The Filipino Visual Arts and Design Rights Organization shall enjoy the following exclusive rights: (FILVADRO) is recognised as the CMO for Philippine visual arts a. As regards their performances, the right of authorising: and design by the World Intellectual Property Organization (WIPO), Intellectual Property Philippines (IPP), the National Commission (i) the broadcasting and other communication to the public of for Culture and the Arts (NCCA) and the Cultural Center of the their performance; and Philippines (CCP). (ii) the fixation of their unfixed performance. The Performing Rights Society of the Philippines (PRSP) b. The right of authorising the direct or indirect reproduction of acts as the collecting society of performers (actors, musicians, their performances fixed in sound recordings or audio-visual works or fixations in any manner or form. dancers, etc.) whose works are used for commercial broadcast and other ways of communication to the public to gain profit. It c. Subject to the provisions of Section 206 of the IP Code, the is composed of the following member guilds and organisations: right of authorising the first public distribution of the original and copies of their performance fixed in sound recordings or (i) OPM − Organisasyon ng Pilipinong Mangaawit (Organisation audio-visual works or fixations through sale or rental or other of Filipino Singers); (ii) KAPPT − Katipunan ng mga Artista sa forms of transfer of ownership. Pelikulang Pilipino at Telebisyon (Film and Television Actors’ d. The right of authorising the commercial rental to the public of Guild); (iii) AMP − Asosasyon ng Musikong Pilipino (Filipino the original and copies of their performances fixed in sound Musicians’ Association); (iv) PHILSTAGE − Philippine Legitimate recordings or audio-visual works or fixations, even after Stage Artists Group, Inc. (Theatre, Dance and Music Companies/ distribution of them by, or pursuant to the authorisation by, Organisations); and (v) FAP – Film Academy of the Philippines. the performer. e. The right of authorising the making available to the public of 3.5 Where there are collective licensing bodies, how are their performances fixed in sound recordings or audio-visual they regulated? works or fixations, by wire or wireless means, in such a way that members of the public may access them from a place and time individually chosen by them. For the societies/licensing bodies to enforce the rights of their members, they shall first secure the necessary accreditation from the IPO. Subject to the provisions of Section 212 of the IP Code, producers of sound recordings shall enjoy the following exclusive rights:

a. The right to authorise the direct or indirect reproduction of their sound recordings, in any manner or form; the placing 4.3 Are there circumstances in which a copyright owner of these reproductions in the market and the right of rental or is unable to restrain subsequent dealings in works lending. which have been put on the market with his consent? b. The right to authorise the first public distribution of the original and copies of their sound recordings through sale or Section 177.3 of the IP Code gives a copyright owner the exclusive rental or other forms of transferring ownership. right to control the first public distribution of the original and each c. The right to authorise the commercial rental to the public copy of the work by sale or other forms of transfer of ownership. of the original and copies of their sound recordings, even Accordingly, the copyright owner loses rights to his work, and after distribution by them or pursuant to authorisation by the cannot control disposition of such work, after the first authorised producer. sale or transfer (e.g., the purchaser may resell, donate or give-away

Philippines d. The right to authorise the making available to the public of the copyrighted work) akin to the first-sale or exhaustion doctrine. their sound recordings in such a way that members of the It must be noted, however, that the first sale or exhaustion doctrine public may access the sound recording from a place and at a pertains only to the right of a purchaser to transfer, and thus exhausts time individually chosen or selected by them, as well as other only the distribution right. The said doctrine does not affect or limit transmissions of a sound recording with a similar effect. the moral rights of the copyright owner, and applies only when the Subject to the provisions of Section 212 of the IP Code, broadcasting purchaser has lawfully acquired the copyrighted work. organisations shall enjoy the exclusive right to carry out, authorise or prevent any of the following acts: a. the rebroadcasting of their broadcasts; 5 Copyright Enforcement b. the recording in any manner, including the making of films or the use of video tape, of their broadcasts for the purpose of 5.1 Are there any statutory enforcement agencies and, if communication to the public of television broadcasts of the so, are they used by rights holders as an alternative same; and to civil actions? c. the use of such recordings for fresh transmissions or for fresh recording. Yes. The IP Code grants visitorial powers to the IPO and allows it to undertake enforcement functions with the support of concerned 4.2 Are there any ancillary rights related to copyright, agencies such as the Philippine National Police, National Bureau of such as moral rights, and if so what do they protect, Investigation, Bureau of Customs, Optical Media Board and Local and can they be waived or assigned? Government Units. However, as IP rights remain private rights, there must be a complaint from the IP right owner. The author of a work shall, independently of the economic rights in Section 177 of the IP Code or the grant of an assignment or licence 5.2 Other than the copyright owner, can anyone else bring with respect to such right, have the right to: a claim for infringement of the copyright in a work? a. require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be In general, only intellectual property rights owners have the right to indicated in a prominent way on the copies, and in connection bring actions for infringement. For copyright, the right to bring an with the public use of his work; action for infringement belongs to the copyright owner. However, b. make any alterations to his work prior to publication, or to since intellectual property rights are assignable, it is possible that the withhold it from publication; right to bring an action for infringement may likewise be assigned. c. object to any distortion, mutilation or other modification The assignment of such right, however, must be expressly provided. of, or other derogatory action in relation to, his work which would be prejudicial to his honour or reputation; and 5.3 Can an action be brought against ‘secondary’ infringers d. restrain the use of his name with respect to any work not of as well as primary infringers and, if so, on what basis his own creation or in a distorted version of his work. can someone be liable for secondary infringement? An author may waive his moral rights by a written instrument, but no such waiver shall be valid where its effect is to permit another: Under the IP Code, an action for infringement may be brought a. to use the name of the author, or the title of his work, or against a person who: otherwise to make use of his reputation with respect to (a) directly commits an infringement; any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the (b) benefits from the infringing activity of another person who literary or artistic reputation of another author; or commits an infringement if the person benefiting has been given notice of the infringing activity and has the right and b. to use the name of the author with respect to a work he did not ability to control the activities of the other person; or create. (c) with knowledge of the infringing activity, induces, causes or When an author contributes to a collective work, his right to have materially contributes to the infringing conduct of another. his contribution attributed to him is deemed waived unless he expressly reserves it. 5.4 Are there any general or specific exceptions which Independently of a performer’s economic rights, the performer shall, can be relied upon as a defence to a claim of as regards his live aural performances or performances fixed in sound infringement? recordings or in audio-visual works or fixations, have the right to claim to be identified as the performer of his performances, except where The following may be raised as a defence to a claim of infringement: the omission is dictated by the manner of the use of the performance, 1. The copyright owner cannot recover damages for acts of and to object to any distortion, mutilation or other modification of his infringement committed more than four years before the performances that would be prejudicial to his reputation. institution of the action for infringement.

2. Non-liability under Section 184 of the IP Code, which 3. The acts alleged to be copyright infringement constitute fair provides that the following acts shall not constitute copyright use under Section 185 of the IP Code, which provides that the infringement: fair use of a copyrighted work for criticism, comment, news (a) The recitation or performance of a work, once it has been reporting, teaching (including a limited number of copies for lawfully made accessible to the public, if done privately classroom use), scholarship, research, and similar purposes is and free of charge or if made strictly for a charitable or not an infringement of copyright. Decompilation, which is religious institution or society. understood to be the reproduction of the code and translation of the forms of the computer program to achieve the inter- (b) The making of quotations from a published work if they operability of an independently created computer program are compatible with fair use and only to the extent justified with other programs, may also constitute fair use to the extent for the purpose, including quotations from newspaper that such decompilation is done for the purpose of obtaining articles and periodicals in the form of press summaries: the information necessary to achieve such interoperability. provided that the source and the name of the author, if Philippines appearing on the work, are mentioned. 4. The acts alleged to constitute copyright infringement constitute permissible copying or reprographic reproduction (c) The reproduction or communication to the public by mass by exempt institutions under Section 184 and Section 188 of media of articles on current political, social, economic, the IP Code, which provide that any library or archive whose scientific or religious topics; lectures, addresses and other activities are not for profit may, without the authorisation works of the same nature, which are delivered in public, of the author or copyright owner, make a limited number of if such use is for information purposes and has not been copies of the work, as may be necessary for such institutions expressly reserved, provided that the source is clearly to fulfil their mandate, by reprographic reproduction in the indicated. following cases: (d) The reproduction and communication to the public of (a) Where the work by reason of its fragile character or rarity literary, scientific or artistic works as part of reports of cannot be lent to users in its original form. current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose. (b) Where the works are isolated articles contained in composite works or brief portions of other published (e) The inclusion of a work in a publication, broadcast, or works and the reproduction is necessary to supply them, other communication to the public; sound recording when this is considered expedient, to persons requesting or film, if such inclusion is made by way of illustration their loan for purposes of research or study instead of for teaching purposes and is compatible with fair use, lending the volumes or booklets which contain them. provided that the source and the name of the author, if appearing in the work, are mentioned. (c) Where the making of such limited copies is in order to preserve and, if necessary in the event that it is lost, (f) The recording made in schools, universities, or educational destroyed or rendered unusable, replace a copy, or to institutions of a work included in a broadcast for the use replace, in the permanent collection of another similar of such schools, universities or educational institutions, library or archive, a copy which has been lost, destroyed provided that such recording be deleted within a reasonable or rendered unusable and copies are not available with the period after it was first broadcast and, further, provided publisher. that such recording may not be made from audio-visual works which are part of the general cinema repertoire of 5. In the case of computer programs, the reproduction is feature films except for brief excerpts of the work. permissible under Section 189 of the IP Code, which provides that reproduction in one (1) back-up copy or adaptation (g) The making of ephemeral recordings by a broadcasting of a computer program shall be permitted, without the organisation by means of its own facilities and for use in authorisation of the author of, or other owner of copyright in, its own broadcasts. a computer program, by the lawful owner of that computer (h) The use made of a work by, or under the direction or program, provided that the copy or adaptation is necessary control of the Government, by the National Library or by for: educational, scientific or professional institutions where (a) the use of the computer program in conjunction with a such use is in the public interest and is compatible with computer for the purpose and to the extent for which the fair use. computer program has been obtained; and (i) The public performance or communication to the public (b) archival purposes, and for the replacement of the lawfully of a work, in a place where no admission fee is charged in owned copy of the computer program in the event that the respect of such public performance or communication, by lawfully obtained copy of the computer program is lost, a club or institution for charitable or educational purpose destroyed or rendered unusable. only and whose aim is not profit making, subject to such other limitations as may be provided in the Regulations. (j) Public display of the original or a copy of the work 5.5 Are interim or permanent injunctions available? not made by means of a film, slide, television image or otherwise on screen or by means of any other device or Yes, an aggrieved IP owner may request for the issuance of interim process, provided that either the work has been published and permanent injunctions. or the original or the copy displayed has been sold, given away or otherwise transferred to another person by the (i) A preliminary injunction may be granted by the Trial Court author or his successor in title. at any time after the commencement of the action and before judgment, when it is established that: (a) the plaintiff is (k) Any use made of a work for the purpose of any judicial entitled to the relief demanded, and the whole or part of such proceedings, or for the giving of professional advice by a relief consists in restraining the commission or continuance legal practitioner. of the acts complained of, or in the performance of an act (l) The reproduction or distribution of published articles or or acts, either for a limited period or perpetually; (b) the materials in a specialised format exclusively for the use commission or continuance of some act complained of during of a blind, visually- or reading-impaired person, provided the litigation or the non-performance thereof would probably that such copies and distribution shall be made on a non- work injustice to the plaintiff; or (c) the defendant is doing, profit basis and shall indicate the copyright owner and the threatens, or is about to do, or is procuring or suffering to be date of the original publication. done, some act probably in violation of the plaintiff’s rights

respecting the subject of the action, and tending to render the (c) whether the defendant acted in bad faith; judgment ineffectual, and only when: (x) the complaint in the (d) the need for deterrence; action is verified, and shows facts entitling the plaintiff to (e) any loss that the plaintiff has suffered or is likely to suffer by the relief demanded; and (y) the plaintiff files with the clerk reason of the infringement; and or judge of the court in which the action is pending a bond executed to the party enjoined, in an amount to be fixed by (f) any benefit shown to have accrued to the defendant by reason the court, to the effect that the plaintiff will pay to such party of the infringement. all damages which he may sustain by reason of the injunction In the case that the infringer was not aware and had no reason to if the court should finally decide that the plaintiff was not believe that his acts constitute an infringement of copyright, the entitled thereto. A preliminary injunction may also be court at its discretion may reduce the award of statutory damages obtained from the Bureau of Legal Affairs (BLA) of the IPO to a sum of no more than 10,000 pesos (approximately US$235), based on substantially the same grounds and requirements as Philippines mentioned above. provided that the amount of damages to be awarded shall be doubled against any person who: (ii) A permanent (final) injunction would be granted if the plaintiff prevails in the action before the Trial Court or the (a) circumvents effective technological measures; or BLA. Judgments by the Trial Court granting an injunction (b) having reasonable grounds to know that it will induce, are enforceable after their rendition and are not stayed by enable, facilitate or conceal the infringement, remove or alter an appeal unless otherwise ordered by the trial court. On any electronic rights management information from a copy appeal from the judgment of the Trial Court, the appellate of a work, sound recording or fixation of a performance, or court at its discretion may order the suspension, modification distribute, import for distribution, broadcast, or communicate or restoration of the injunction. The stay of execution shall to the public works or copies of works without authority, be upon such terms as to bond or otherwise as may be knowing that electronic rights management information has considered proper for the security or protection of the rights been removed or altered without authority. of the adverse party. On the other hand, judgments by the BLA (including those granting a permanent injunction) may, upon motion of the prevailing party with notice to the adverse 5.7 What are the typical costs of infringement party or motu proprio, and upon filing of an approved bond, proceedings and how long do they take? be executed even before the expiration of the time to appeal has lapsed, upon good reasons to be stated in the BLA Order. Depending on varied factors, the costs of filing and prosecuting an The execution pending appeal may be stayed by the filing infringement action before the Trial Court range from US$100,000 of an approved counterbond in an amount to be fixed by the to US$300,000, while it would cost anywhere between US$80,000 BLA Director. and US$100,000 if filed before the BLA. The length of the proceedings depends on a variety of factors, 5.6 On what basis are damages or an account of profits including the complexity of the legal and technical issues calculated? involved, the number of witnesses to be presented, the number of postponements of trial sought by the parties, as well as the caseload The liability of the defendant in a copyright infringement action of the Trial Court and/or BLA handling the case. It may take as long for actual damages includes legal costs and other expenses of the as three (3) to five (5) years (from filing of the complaint) before a plaintiff which he may have incurred due to the infringement, decision is issued by the Trial Court. Administrative proceedings as well as the profits the defendant may have made due to such in the BLA usually take around one (1) to three (3) years from the infringement. In proving profits, the plaintiff shall be required to filing of the complaint for a case to be resolved on the merits. prove sales only and the defendant shall be required to prove every element of cost which he claims or, in lieu of actual damages and 5.8 Is there a right of appeal from a first instance profits, such damages which to the court shall appear to bejust judgment and if so what are the grounds on which an and shall not be regarded as penalty, provided that the amount of appeal may be brought? damages to be awarded shall be doubled against any person who: (a) circumvents effective technological measures; or The decision of the Trial Court may be appealed to the Court of (b) having reasonable grounds to know that it will induce, Appeals on questions of facts and law. enable, facilitate or conceal the infringement, remove or alter Yes. Final orders or decisions of the Trial Court are, as a general any electronic rights management information from a copy of a work, sound recording, or fixation of a performance, or rule, appealable to the Court of Appeals. Where only questions of distribute, import for distribution, broadcast, or communicate law are raised or involved, the appeal shall be to the Supreme Court. to the public works or copies of works without authority, Final orders or decisions of the BLA Director may be appealed to knowing that electronic rights management information has the Director General of the IPO within thirty (30) days after the been removed or altered without authority. receipt of a copy thereof by the party affected. The decision or order The copyright owner may elect, at any time before final judgment is of the Director General of the IPO may be appealed to the Court of rendered, to recover instead of actual damages and profits, an award Appeals. of statutory damages for all infringements involved in an action, in a sum equivalent to the filing fee of the infringement action but 5.9 What is the period in which an action must be not less than fifty thousand pesos (approximately US$1,200). In commenced? awarding statutory damages, the court may consider the following factors: The copyright owner cannot recover damages for acts of infringement (a) the nature and purpose of the infringing act; committed more than four (4) years before the institution of the (b) the flagrancy of the infringement; action for infringement.

Any person who at the time when copyright subsists in a work has 6 Criminal Offences in his possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of: 6.1 Are there any criminal offences relating to copyright (a) selling, letting for hire, or by way of trade offering or infringement? exposing for sale or hire, the article; (b) distributing the article for the purpose of trade, or for any Yes, there are. other purpose to an extent that will prejudice the rights of the copyright owner in the work; or (c) trade exhibit of the article in public, 6.2 What is the threshold for criminal liability and what are the potential sanctions? shall be guilty of an offence and shall be liable on conviction to

imprisonment and a fine, as mentioned above. Philippines Any person infringing any of the relevant provisions of the IP Code In an infringement action, the court shall also have the power to on Copyright or aiding or abetting such infringement shall be guilty order the seizure and impounding of any article which may serve of a crime punishable by imprisonment plus a fine. In all cases, as evidence in the court proceedings, in accordance with the rules subsidiary imprisonment may be imposed in cases of insolvency. on search and seizure involving violations of intellectual property In determining the number of years of imprisonment and the amount rights issued by the Supreme Court. of the fine, the court shall consider the value of the infringing materials that the defendant has produced or manufactured, and 7 Current Developments the damage that the copyright owner has suffered by reason of the infringement. The respective maximum penalty shall be imposed when the infringement is committed by: 7.1 Have there been, or are there anticipated, any (a) the circumvention of effective technological measures; significant legislative changes or case law (b) the removal or alteration of any electronic rights management developments? information from a copy of a work, sound recording, or fixation of a performance, by a person, knowingly and There are no significant legislative changes or case law developments without authority; or at the moment. (c) the distribution, importation for distribution, broadcast, or communication to the public of works or copies of works, 7.2 Are there any particularly noteworthy issues around by a person without authority, knowing that electronic the application and enforcement of copyright in rights management information has been removed or altered relation to digital content (for example, when a work without authority. is deemed to be made available to the public online, hyperlinking, etc.)?

Currently, there are no significant developments concerning these issues.

Enrique T. Manuel Vida M. Panganiban-Alindogan SyCip Salazar Hernandez & Gatmaitan SyCip Salazar Hernandez & Gatmaitan SyCipLaw Center, 105 Paseo de Roxas SyCipLaw Center, 105 Paseo de Roxas Makati City 1226 Makati City 1226 Philippines Philippines

Tel: +632 982 3500 / 982 3600 / 982 3700 Tel: +632 982 3500 / 982 3600 / 982 3700 Email: [email protected] Email: [email protected] URL: www.syciplaw.com URL: www.syciplaw.com

Enrique T. Manuel, a Senior Partner and Head of the Intellectual Vida M. Panganiban-Alindogan is a Partner at SyCip Salazar Philippines Property Department at SyCip Salazar Hernandez & Gatmaitan Law Hernandez & Gatmaitan Law Offices, one of the largest general Offices, one of the largest law firms in the Philippines, has been an practice law firms in the Philippines. Her practice area includes the Intellectual Property practitioner for almost 30 years. Mr. Manuel is a management, prosecution and enforcement of intellectual property member of the Board of Trustees of the Intellectual Property Association rights. Ms. Panganiban-Alindogan is the treasurer of the Licensing of the Philippines (IPAP), the national organisation of lawyers and Executives Society of the Philippines. She is a member of the practitioners engaged in the practice of intellectual property law in the Intellectual Property Association of the Philippines, the Asian Patent Philippines. Mr. Manuel is likewise a member of the Board of Trustees Attorneys Association and the International Trademark Association. of the Licensing Executives Society of the Philippines, the local society Ms. Panganiban-Alindogan received her Bachelor of Laws degree of LES International, a worldwide federation of professionals involved from the San Beda College of Law in 1995. She was admitted to the in the transfer of technology, industrial and intellectual property Philippine Bar in 1996. rights. He is a member of the Asian Patent Attorneys Association, the International Trademark Association and the International Association for the Protection of Intellectual Property (AIPPI).

SyCip Salazar Hernandez & Gatmaitan (SyCipLaw) was founded in 1945. It is the largest law firm in the Philippines. It has offices in Makati City, the country’s business and financial centre, as well as Cebu, Davao and the Subic Freeport. We offer a broad and integrated range of legal services, covering the following fields: banking, finance and securities; special projects; corporate services; general business law; tax; intellectual property; employment and immigration; and dispute resolution. We have specialists in key practice areas such as mergers and acquisitions, energy, power, infrastructure, natural resources, transportation, government contracts, real estate, insurance, international arbitration, mediation, media, business process outsourcing, and technology. We represent clients from almost every industry and enterprise, and the firm’s client portfolio includes local and global business leaders. We also act for governmental agencies, international organisations, and non-profit institutions.

Russia

Vash Patent LLC Aleksej Robinov

character), official translations, State emblems and official signs 1 Copyright Subsistence (flags, armorial bearings, decorations, monetary signs and other State symbols and official signs), works of folklore, or communications 1.1 What are the requirements for copyright to subsist in concerning events and facts that have informational character (art. a work? 1259 (3) of the Russian Civil Code).

For a work to be protected by copyright law in Russia, it must meet 1.3 Is there a system for registration of copyright and if the following requirements: 1) originality: the work should be a result so what is the effect of registration? of intellectual activity of its author; 2) creativity: the work should be produced as a result of human creative labour; and 3) fixation in Russian legislation does not provide for a unified State register a tangible medium of expression: the work should be expressed in of copyright. A scientific, literary or artistic work is eligible for any objective form, including in written form, oral form (in the form copyright by virtue of the mere fact of its creation. It shall not of a public speech, public performance, and in any other form), in require either registration of the work or the performance of any the form of a depiction, a sound or video recording, or in a three- other act or formality. dimensional form (art. 1259 (3) of the Russian Civil Code). However, in order to have his rights recognised, the author may It is also important to note that copyright does not extend to ideas, register his copyright by the following means: concepts, principles, methods, processes, systems, means, solutions ■ by publishing a copy of the work (this method is not an of technical, organisational or other tasks, inventions, facts, or official registration; however, it is one of the most effective programming languages (art. 1259 (5) of the Russian Civil Code). preventive measure against copyright infringement); ■ by depositing the work with the organisations involved in the 1.2 On the presumption that copyright can arise in collective management of copyright and neighbouring rights literary, artistic and musical works, are there any in Russia (e.g. the Russian Authors Society); and/or other works in which copyright can subsist and are ■ by notarisation of the evidence of the creation of the work there any works which are excluded from copyright (e.g. notarisation of a manuscript of the work). protection? With regard to software, databases and all types of computer programs, these works are officially registered in Rospatent with the In accordance with the law of Russia, the following works are issuance of the state registration certificate. protected by copyright: literary works (including all types of computer programs); dramatic or dramatic-musical works and other works with a scenario; choreographic and mimed works; musical works with or 1.4 What is the duration of copyright protection? Does without accompanying text; audiovisual works (cinematographic, this vary depending on the type of work? television and video films, static projections, slide shows and other cinematographic and television productions); works of painting and As a general rule, the duration of copyright protection under the law sculpture, graphic and design works, cartoon strips and other works of the Russian Federation lasts for the author’s lifetime plus 70 years of figurative art; works of applied art and stage design; works of starting from January 1 of the year following the year of the death architecture, urban planning and park and garden design; photographic of the author. Thus, art. 1281 of the Russian Civil Code establishes works and works obtained by processes analogous to photography; five methods of calculation of this period: geographical, geological and other maps, plans and sketches, and 1) the exclusive right in a work created in co-authorship shall be also three-dimensional works relating to geography, topography and effective for the whole life of the author outliving the other other sciences; derived works (translations, adaptations, annotations, co-authors plus 70 years, counting from January 1 of the year analyses, summaries, reviews, stage adaptations, arrangements following the year of his death; and other transformations of scientific, literary and artistic works); 2) for a work made public anonymously or under a pseudonym, collections (encyclopaedias, anthologies, data bases) and other the term of validity of the exclusive right shall expire after 70 composite works which, by reason of the selection or arrangement of years counting from January 1 of the year following the year their contents, constitute the result of creative effort. that it was lawfully made public; Copyright protection does not cover official documents (laws, 3) the exclusive right in a work made public after the death of the author shall be effective during the course of 70 years court decisions, other texts of legislative, administrative or judicial after the work was made public, counting from January 1 of

the year following the year of it being made public, on the condition that the work was made public within the course of 2.2 Where a work is commissioned, how is ownership of 70 years after the death of the author; the copyright determined between the author and the commissioner? 4) if the author of a work was repressed and posthumously rehabilitated, the term of validity of the exclusive right shall be considered extended and the 70-year period shall be According to the law of the Russian Federation, the commissioner calculated from January 1 of the year following the year of retains the copyright where there is no express or implied term to the rehabilitation of the author of the work; and contrary (art. 1296 of the Russian Civil Code). 5) if the author worked during the time of the Great Patriotic War or participated in it, the term of validity of the exclusive

Russia 2.3 Where a work is created by an employee, how is right established by the present article shall be extended by ownership of the copyright determined between the four years. employee and the employer? Upon the expiration of the term of validity of the work, whether made public or not, the work enters the public domain. Therefore, As a general rule, in Russia, an employee as an author owns personal the work may be used freely by any person without any consent or non-property rights in respect of the work created within the scope permission and without payment of authors’ remuneration. In such of his/her employment duties. The exclusive right in respect of a case, authorship, the name of the author, and the inviolability of this work shall belong to the employer unless a labour contract or the work shall be protected perpetually. other contract between the employer and the employee provides otherwise. It is important to note that if the employer has not started 1.5 Is there any overlap between copyright and other to use the work created by the employee within three years, has not intellectual property rights such as design rights and assigned the ownership rights to the work to a third party, nor has database rights? he informed the author of keeping the work in secrecy, the exclusive right on the work shall belong to the employee. Yes, for example, the work can be protected by copyright and registered as a trademark at the same time. As a general rule, 2.4 Is there a concept of joint ownership and, if so, what trademarks are not protected by copyright except when the work rules apply to dealings with a jointly owned work? has the characteristics of originality. In these cases, the problem of distinguishing arises. To prevent problems caused by this Yes, the law of the Russian Federation provides for the joint distinction, a person filing an application for registration ofa ownership of the work. Copyright of a work created by two or trademark should obtain the written consent from the copyright more individuals is owned by each of the authors; thus, each of the owner regarding the use of the work as a protected trademark. This authors can use the work at his or her own discretion, where there document should also provide for the waiver of personal rights in is no express term to the contrary in the agreement among authors. respect of the copyrighted work. The income from the joint use of the copyrighted work shall be With regard to a design solution, the author has an opportunity to shared among all the authors equally, unless otherwise provided for protect his work both as an industrial design under patent law and by an agreement among them. as a design work in accordance with the norms of copyright. In general, the patent form of design protection is broader and fuller than the protection by copyright, as it highlights the most valuable 3 Exploitation features of the work.

The same applies for database rights: the exclusive right over 3.1 Are there any formalities which apply to the transfer/ a database arises from the moment of its creation without any assignment of ownership? registration (art. 1261), at the same time the Russian Civil Code provides for the possibility of its official registration in Rospatent The transfer/assignment of ownership of copyright shall be carried (art. 1259.4 and art. 1334.3). out by means of a written agreement signed by both parties. Under this agreement, the author (or other right holder) transfers an 1.6 Are there any restrictions on the protection for exclusive right on the work to the recipient of such right. Such an copyright works which are made by an industrial agreement can be paid or free of charge, but it must contain either process? conditions on the amount of remuneration or an indication of the gratuitous transfer of exclusive rights under the contract. No; the law of the Russian Federation does not provide for any The official registration of such an agreement is not required. The restrictions on the protection for copyright works which are made only exception to this rule is the registration of contracts concluded by an industrial process. with respect to a registered computer program or database.

2 Ownership 3.2 Are there any formalities required for a copyright licence?

2.1 Who is the first owner of copyright in each of the Copyright licences should be in a written form; thus, an agreement works protected (other than where questions 2.2 or granting a right to use a work in a periodical printed publication may 2.3 apply)? be concluded in oral form. A licence agreement should contain an indication of the work and By default, the first owner of copyright is the author of the work (the the list of methods of its authorised use by the licensee. A fee-based person by whose creative labour the work was made). licence contract shall indicate the amount of fee charged for the use of the work or the procedure for calculating it.

A licence granting a right to use a computer program or database of authors’ fees from libraries, educational institutions, business may be concluded by a contract of accession between each user and centres and other organisations. the relevant right holder, the terms of the contract being available Russian Society for Performers’ Right Protection – administers on the acquired copy of the program or database or on the package rights of authors, performing artists, producers of sound recordings thereof. The use of the program or database by the user, as it is and audiovisual works related to remuneration for reproduction defined in the terms, shall be deemed the user’s consent tothe of sound recordings and audiovisual works for personal purposes, conclusion of the contract. rights of performing artists related to remuneration for the public Under a contract granting a right to use a work agreed by the author performance and broadcasting of sound recordings published for or other right holder with a publisher, the licensee shall commence commercial purposes, rights of producers of sound recordings the use of the work within the term set in the contract. If this duty related to remuneration for the public performance and broadcasting Russia is not observed, the licensor is entitled to waive the contract without of sound recordings published for commercial purposes, rights of compensation to the licensee for the losses due to such waiver. performing artists related to remuneration for the making of relevant performances public, and rights of producers of sound recordings related to remuneration for the making public of sound recordings. 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in Russian Phonogram Association – secures protection of rights questions 3.4 to 3.6)? of performing artists and producers of sound recordings, including from the standpoint of remuneration. According to the Russian Civil Code, the duration of the licence contract shall not exceed the term of validity of the exclusive right to 3.5 Where there are collective licensing bodies, how are the result of intellectual activity. In case the duration of the licence they regulated? contract is not defined in the contract, the licence contract shall be considered to be concluded for five years. With respect to sub- In Russia, activities of the collective licensing bodies are governed licences, under a general rule of the Russian law, the scope of the by the Russian Civil Law, laws on non-commercial organisations sub-licensed rights may not exceed the scope of the rights granted and the charters of the respective organisations. Such bodies to the sub-licensor under the original licence agreement with the function under the control of the Ministry of Culture of the Russian rights holder. In the case of an international licensing relationship, Federation or under the control of the respective officials from the Russian law states that the contractual parties are free to set up a the territorial divisions of the Ministry of Culture of the Russian licensing contract by inserting certain terms and conditions effective Federation. under the international licensing practice, provided that the same do not run afoul of the Russian law, including on royalty rates and on the duration of the contractual term. 3.6 On what grounds can licence terms offered by a collective licensing body be challenged?

3.4 Which types of copyright work have collective The licence terms offered by a collective licensing body can be licensing bodies (please name the relevant bodies)? challenged by the applicant before a collective licensing body itself or in court only on the standard grounds, e.g. if the terms of a licence The collective licensing bodies operating in Russia are the following: are not consistent with the law of the Russian Federation, or if such Russian Authors’ Society – administers rights in published musical terms violate the rights or legitimate interests of the applicant or the works and excerpts from dramatic musical works, the rights of rights and legitimate interests of a third party. authors of musical works, the royalty resale rights, the rights related to remuneration of authors, performing artists, producers of sound recordings and audiovisual works, and manages literary and other 4 Owners’ Rights rights.

Russian Organization for Intellectual Property – administers 4.1 What acts involving a copyright work are capable of related rights, including the remuneration of authors, performing being restricted by the rights holder? artists, producers of sound recordings and audiovisual works, rights related to remuneration of performing artists for the public According to the Russian Civil Law, the list of rights of the right performance, broadcasting of sound recordings published for holder is ‘non-exhaustive’. In particular, art. 1229 of the Russian commercial purposes, and rights related to remuneration of producers Civil Code states that the right holder may at his discretion permit of sound recordings for the public performance and broadcasting of or prohibit other persons to use the result of intellectual activity or sound recordings published for commercial purposes. means of individualisation. Thus, absence of a prohibition shall not Art Copyright Management Society – administers royalty be considered a consent (permission). resale rights, and rights related to reproduction of artistic works, photographic works and manuscripts. 4.2 Are there any ancillary rights related to copyright, Russian Union of Right Holders – administers rights related to such as moral rights, and if so what do they protect, the remuneration of authors, performing artists, producers of sound and can they be waived or assigned? recordings and audiovisual works and provides support to right holders in terms of the enforcement of IP rights. The author of the work has the following moral rights (personal non- Russian Authors’ Legal Society COPYRUS – administers rights proprietary rights): to claim authorship of that work (the right of related to remuneration of authors, publishers and other right holders authorship); to use and authorise the use of the work with or without for the reproduction of works, including digital reproduction, the author’s name and pseudonym (the right of author to the name); monetary issues with foreign authors’ societies, and collection to carry out alterations or modifications to the work (the right of

integrity); to publish, publicly display, publicly perform, broadcast committing such activities or doing necessary preparations. Hence, or otherwise make the work available to the public, or to authorise copyright owners can enforce the so-called “threats to copyright any of the aforementioned (the right of publication); and to recall the infringement” by prosecuting the importation, reproduction and decision on publication of the work on the condition of payment of distribution of counterfeited/pirated works against such infringers. damages to the respective assignee or licensee (the right of recall). The moral rights are not subject to assignment or licensing. Such 5.4 Are there any general or specific exceptions which moral rights also cannot be pledged or collateralised in favour of a can be relied upon as a defence to a claim of third party. Waiver of such rights shall be null and void. The moral infringement? rights are protected perpetually.

Russia The Russian law provides for a number of cases where the 4.3 Are there circumstances in which a copyright owner copyrighted work can be used by a third party without the rights is unable to restrain subsequent dealings in works holders’ consent. For example: limited reproduction of works for which have been put on the market with his consent? personal use (with certain exceptions); reasonable quotation of the works that have been lawfully made public; public not-for- The Civil Law of Russia provides for the doctrine of exhaustion of profit performances of copyrighted works in social institutions; rights with regard to copyright and related rights. According to this public performance of musical works during an official or religious doctrine, if the legitimately published copyrighted work has been ceremony, or funeral; creation of parodies or caricatures based on put onto the Russian market by way of sale or disposed of otherwise, the works that have been lawfully made public; making limited subsequent distribution of the same shall be allowed without the changes to a computer program or a database in order for them right holder’s consent and without payment of compensation. If the to function properly on a certain computer, as well as making one copyrighted work has been first put onto the Russian market by a archive or backup copy of a computer program or a database solely third party without the right holder’s consent, subsequent dealings for the instances of the original copy failure or loss. with such work are prohibited and may be prosecuted. In addition, the Russian law limits liability of: Internet service providers engaged in online usage and transmission of copyrighted 5 Copyright Enforcement content; persons engaged in the transmission of content in networks (Internet access providers); persons providing the possibility to place content or information required for obtaining such content in 5.1 Are there any statutory enforcement agencies and, if networks (website and platform operators); and persons providing so, are they used by rights holders as an alternative the possibility to access content placed in networks (Internet hosting to civil actions? providers).

As an alternative to civil action, the right holder can apply to the 5.5 Are interim or permanent injunctions available? following statutory enforcement agencies:

The Russian Antimonopoly Service and its territorial divisions, Both interim and permanent injunctions are available to rights which monitor compliance with competition rules in the sphere of holders in copyright infringement cases. Also, the right holder can intellectual property. claim damages or monetary compensation (statutory damages) and The Russian Customs Offices, which counteracts the flow of publication of court orders in the course of civil proceedings. counterfeit goods into Russia on the basis of the Customs Code of the Russian Federation, the Customs Register of objects of 5.6 On what basis are damages or an account of profits intellectual property and cooperation with the possessors of legal calculated? rights of brands. The Russian Federal Service for Supervision in the Sphere To claim damages, the right holder must prove the following factors: of Telecommunications, Information Technologies and Mass 1) the amount of the sustained damages; 2) the fact of copyright Communications (Roskomnadzor), which has the authority to infringement; and 3) the nexus between the damages and the block access to web pages/websites that contain infringing content relevant copyright infringement. If the right holder fails to prove under the provisions of the “Russian Antipiracy Law”. one of these factors, the damages shall not be awarded. Instead of damages, and regardless of the fact of losses, the right 5.2 Other than the copyright owner, can anyone else bring holder is entitled to claim monetary compensation (statutory a claim for infringement of the copyright in a work? damages) using the following options: 1) in the amount of RUB 10,000 to 5,000,000 (to be determined at the discretion of the A claim for infringement of copyright in a work can be brought by court); 2) in the amount equal to double the amount of copies of the the copyright owner, the assignee/successor-in-title and the holder copyrighted work; or 3) in the amount equal to double the amount of of the exclusive licence. Non-exclusive licensees cannot bring lawful use of the copyrighted work (the double cost of a copyright actions against copyright infringements. licence). Monetary compensation will be awarded only if the fact of relevant copyright infringement is proved by the claimant. The author of the work can also claim moral damages. 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary 5.7 What are the typical costs of infringement infringement? proceedings and how long do they take?

The law of the Russian Federation does not provide for the The average costs of the infringement proceedings in the court of “secondary” infringement; however, the law allows the right first instance may be around USD 3,000 to 5,000. The proceedings holder to prevent infringing activities from the side of any person

usually take about four to seven months. If the infringement matter is appealed and further passes all instances, including the Russian 6.2 What is the threshold for criminal liability and what Supreme Court, as available under the law, the overall typical costs are the potential sanctions? of the same may be around USD 10,000 to 15,000, and the case can be ongoing for up to two years before eventually being settled. According to art. 146 of the Russian Criminal Code, appropriation of authorship (plagiarism) shall be punishable with a fine of up to RUB 200,000 or in the amount equal to the wage or another income 5.8 Is there a right of appeal from a first instance of the convicted person for a period of up to 18 months, or with judgment and if so what are the grounds on which an obligatory work for a period of up to 480 hours, or by corrective appeal may be brought? labour for a term of up to one year, or with arrest for a period of up Russia to six months. Illegal use of objects of copyright or neighbouring The first instance judgment can be appealed to the competent court rights, as well as the acquisition, storage or carriage of counterfeited of appeals. Generally, the grounds for modification or cancellation copies of works or phonograms for the purpose of sale carried out of the decision of the court of first instance are the following: on a large scale, shall be punishable by a fine of up to RUB 200,000, 1) incomplete clarification of the circumstances relevant to the or in the amount equal to a wage/salary or other income of the case; 2) failure to prove the circumstances relevant to the case; convicted person for a period of up to 18 months, or by obligatory 3) inconsistency of the findings referenced in the court decision labour for a term of up to 480 hours, or by corrective labour for a towards the circumstances of the case; or 4) violation or incorrect term of up to two years, or by compulsory labour for a term of up to application of the substantive law or procedural law. The incorrect two years, or by deprivation of liberty for the same term. application of the substantive law shall mean the following: 1) non- application of the laws to be applied; 2) application of the laws that shall not be applied; or 3) misinterpretation of the laws. 7 Current Developments Violation or incorrect application of procedural rules will be the grounds for cancellation of the decision of the court of first instance in the event such violation resulted in or could lead to a wrong 7.1 Have there been, or are there anticipated, any significant legislative changes or case law decision. The grounds for cancellation of the decision of the court of developments? first instance are the following: 1) the trial of the matter by a wrong composition of judges; 2) consideration of the case in the absence of The most recent major legislative changes in the area of copyright any of the parties (litigants) if they were not properly notified of the and neighbouring rights took place with the 2014 Russian Civil time and place of the hearings; 3) violation of the rules related to the Law reform. As part of the reform, the amended Russian Civil language of court proceedings; or 4) other grounds. Code introduced new provisions regarding open licences, defined a Further, the decision of the court of appeals may be appealed to the website as a compilation and specified the “fair use” dealings with competent courts of cassation, and finally may be appealed to the the copyrighted works on the Internet. Furthermore, there were Russian Supreme Court. many significant changes in the Russian Civil Code with respect to moral rights, exclusive rights, software/database protection, 5.9 What is the period in which an action must be technical means of copyright protection and liability for copyright commenced? infringement. In 2016, there were several changes related to the procedural issues A copyright infringement claim should be filed within three years with regard to the protection of copyright: the compulsory procedure following the date on which the copyright owner became aware of of sending a claim letter 30 days prior to filing a claim with a the infringement and the identity of the defendant. competent court in case of copyright infringement was introduced. Regarding the recent intellectual property litigation cases concerning 6 Criminal Offences copyrights, the Supreme Court’s determination No. 308-ЭС14-1400 of 08/06/2016 can be pointed out. According to this decision, the storage of a work in electronic memory can be considered as a 6.1 Are there any criminal offences relating to copyright separate way of using the work. The Court held that the storage of a infringement? computer program as a special object of copyright in the computer’s memory in the absence of evidence of the legitimacy of storage is a Yes, under the Criminal Law of Russia, the following copyright way of misusing the computer program. This conclusion was based infringements constitute a criminal offence: appropriation of on art. 1.4 of the the WIPO Copyright Treaty and art. 9 of the Berne authorship (plagiarism); and illegal use of objects of copyright or Convention. neighbouring rights, as well as the acquisition, storage or carriage of counterfeited copies of works or phonograms for the purpose of 7.2 Are there any particularly noteworthy issues around sale. In order to qualify for criminal prosecution, the infringement the application and enforcement of copyright in should cause significant damage or be recurrent. The Criminal relation to digital content (for example, when a work Code punishes serious violations with fines and imprisonment. is deemed to be made available to the public online, Providing sufficient damage and providing the title under the hyperlinking, etc.)? Russian procedural rules are major obstacles to getting criminal investigations started in most cases, especially those involving In Russia, the most noteworthy act regarding copyright in the digital copyright infringements. area is the Federal Law No. 187-FZ “On Amendments to Certain Legislative Acts of the Russian Federation Concerning Protection of

Intellectual Property Rights in Information and Telecommunication Networks” dated July 2, 2013 (the “Russian Antipiracy Law”). Aleksej Robinov The law regulates a procedure for blocking the infringing online Vash Patent LLC resources (domain names, websites) on the grounds of distribution 27, bld. 2, placement IV, room 7 Sushchevskaya str. of illegal video content on the Internet and allows copyright owners 127055, Moscow to hold Internet service providers, as well as domain holders, liable Russia for copyright infringement. Tel: +7 499 2725207 Further, since May 1, 2015, the following provision entered into Email: [email protected] force: “if the Internet site on a certain site has repeatedly noted the URL: http://vashpatent.ru http://vashpatent.com Russia illegal placement of information that contains objects of copyright and (or) related rights; or the information necessary for their receipt Aleksej A. Robinov, Partner at Vash Patent LLC. through the Internet, such a site may be subject to permanent Patent attorney of Russia №1758. blocking on the basis of the Moscow City Court decision” (art. 15.6 Eurasian patent attorney №402. of the Law on Information). Dr. Aleksej Robinov specialises in intellectual property law, as well as In January this year, it was made public that the Ministry of litigation and arbitration. He has broad experience in the sphere of IP Communications and Mass Communications of the Russian law and in the field of public administration: from 2001 till 2014 Aleksej Federation had prepared several amendments to the Law on worked for Rospatent system in particular in The Chamber for Patent Information regarding the way of blocking websites containing Disputes of the Russian Patent and Trademark Office and the Federal Institute for Industrial Property. prohibited content. These amendments, in particular, provide that Roskomnadzor would be given the authority to independently In 2010 he was awarded the Certificate of Honour by the Federal Institute for Industrial Property. determine the way of blocking a website that falls into its “black lists”. At present, this decision is taken by the operator. As a Partner at Vash Patent LLC, Aleksej represents foreign and Russian companies in court trials and administrative disputes. A frequent author and lecturer on IP law, Aleksej teaches international law and international IP law at the Moscow State Institute of International Relations (University) of the Ministry of Foreign Affairs of the Russian Federation (MGIMO).

VASH PATENT LLC, is an IP law firm, practising in trademark, patent and copyright protection and prosecution in Russia, the CIS, and the EAPO countries. The company’s leading activities include IP prosecution and litigation, representation in court trials and administrative disputes. Our company employs only highly qualified Russian and Eurasian Patent Attorneys. The firm’s clientele is represented by businesses and individuals from Russia and abroad. We provide legal support and assist in all IP aspects, including but not limited to preparing applications to Russian and foreign patent agencies, conducting any exclusive patent-related research, and representing interests before the Chamber for Patent Disputes, Courts, and in the antimonopoly authority. We see our mission as helping our clients to make clear any complicated situation by solving any kind of problems. Very often a complicated situation appears to be a simple one, when its solution is approached in cooperation with an experienced specialist.

Senegal Léon Patrice Sarr

LPS L@w Ndèye Khady Youm

1 Copyright Subsistence 1.4 What is the duration of copyright protection? Does this vary depending on the type of work?

1.1 What are the requirements for copyright to subsist in a work? The Copyright Act distinguishes between moral rights and patrimonial rights. A moral right is imprescriptible. The duration of patrimonial rights is the entire life of the author and 70 years after Under Senegalese law, for copyright to subsist in a work, the work their death. must be a “work of mind” (“œuvre de l’esprit”) and it must be original. Under Article 7 of the Act N°2008-09 dated January 25, 2008 relating In the case of a “collaboration work”, the duration of patrimonial to copyright and related rights (the Copyright Act), “originality” is rights is the entire life of the last surviving collaborator and 70 years defined as the footprint of the personality of the author. after his death. In the case of a “postum work”, the duration is 70 years starting 1.2 On the presumption that copyright can arise in from the publication of the work. literary, artistic and musical works, are there any In the case of an anonymous or pseudonym work, the duration other works in which copyright can subsist and are of patrimonial rights is 70 years starting from its publication. If there any works which are excluded from copyright the work has not been published during the 70 years following its protection? completion, the duration of the patrimonial rights is 70 years starting from the completion date of the work. Under Article 6 of the Copyright Act, “work of mind” includes literary, artistic and musical work, as well as maps, plans, sketches and plastic works relating to geography, topography, architecture 1.5 Is there any overlap between copyright and other and science. intellectual property rights such as design rights and database rights? The Copyright Act provides that copyright also subsists in works derived from a pre-existent work provided it is original. Therefore, Yes, there is an overlap between copyright and other intellectual copyright subsists in: property rights. An author can accumulate copyright, design rights ■ translations and adaptations; and and a trademark provided the work meets the conditions required. ■ anthologies and collections of works or diverse data, such as databases and computer programs. 1.6 Are there any restrictions on the protection for However, under Articles 9, 10, and 11 of the Copyright Act, copyright works which are made by an industrial copyright protection is excluded from: process? ■ the official legislative, administrative or judicial texts and their official translations; There is no specific provision contained in the Copyright Act which ■ ideas, procedures, methods of functioning or mathematical restricts the protection of a work made by an industrial process. concepts as such; and ■ information; specifically, daily information. 2 Ownership

1.3 Is there a system for registration of copyright and if so what is the effect of registration? 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 apply)? There is no system of registration. Article 2 of the Copyright Act provides that a work is protected as of its creation. However, in practice, authors may be well advised to seek registration of their The first owner of copyright is the author. The author, pursuant to work in order to secure proof of their ownership and priority. The Article 12 of the Copyright Act, is the person who created the work. best practice is to register their work with the Senegalese Copyright However, in the case of publication of the work, the author is, under Office (“Sénégalaise du Droit d’Auteur et des Droits Voisins SODAV Article 14 of the Copyright Act, the person under whose name the ex Bureau Sénégalais du Droit d’Auteur BSDA”). publication is created, unless the contrary is proven.

namely assigned, whereas the assigned right must be specified as to 2.2 Where a work is commissioned, how is ownership of its scope and purpose, its duration and its territory of use. the copyright determined between the author and the commissioner? The assignment can be free. However, pursuant to Article 65 of the Copyright Act, when a price is fixed, it must be proportional to the revenue made out of the exploitation of the work. The Copyright Article 22 of the Copyright Act provides that when a work is Act provides exceptions when means of calculation do not exist, the commissioned, the transfer of the ownership on the material support use of the work is an accessory to the object exploited or the control of the work does not include the transfer of patrimonial rights. It fees are above the expected result. means that the author remains the owner of the copyright. The above-mentioned formalities do not apply to a commissioned

Senegal work. 2.3 Where a work is created by an employee, how is ownership of the copyright determined between the employee and the employer? 3.2 Are there any formalities required for a copyright licence? There are two types of employees: those employed by an individual or a private entity called “salarié”; and those employed by the State Licence agreements are subject to the above-mentioned formalities. called “fonctionnaire”. Employees are the owners of the copyright on works they create. 3.3 Are there any laws which limit the licence terms However, pursuant to Article 18 of the Copyright Act, patrimonial parties may agree (other than as addressed in rights on works created by salarié in the course of employment are questions 3.4 to 3.6)? presumed assigned to the employer by reason of the employment agreement to the extent justified by the normal activities at the There is no specific provision restricting the licence terms parties time of creation of the work. The employer must pay salarié an may agree, except for the general principle which states that moral additional amount separate from the salary in the case he exploits rights cannot be assigned. the work. If the employer and the salarié fail to agree on the amount of the additional payment, the amount is fixed by the Courts. 3.4 Which types of copyright work have collective Furthermore, pursuant to Article 20 of the Copyright Act, to the licensing bodies (please name the relevant bodies)? strict extent necessary to the accomplishment of a public interest mission, patrimonial rights on works created by fonctionnaire in the Pursuant to Article 112 of the Copyright Act, collective licensing course of employment or under instructions received are presumed bodies can be created for each directory of copyright work. Since assigned to the administration to which they belong, starting from February 4, 2016, the “Senegalaise des Droits d’Auteurs et des the date of creation. Droits Voisins, SODAV” has been the collective licensing body in charge of activities relating to the collection and distribution of copyrights. However, the Copyright Act provides that authors are 2.4 Is there a concept of joint ownership and, if so, what rules apply to dealings with a jointly owned work? free to create other collective licensing bodies.

The Copyright Act recognises the concept of joint ownership on 3.5 Where there are collective licensing bodies, how are collaborative work (“œuvre collaborative”). Pursuant to Article 23 they regulated? of the Copyright Act, “collaborative work” is defined as a work that is created by two or several authors without consideration of the fact Collective licensing bodies are constituted and regulated under the that the work is undivided or is composed of separate works. provisions of the Senegalese Civil and Obligations Code relating The ownership of the copyright is undivided between the authors. to civil companies. Specific provisions included in the Copyright Thus, the exercise of copyright must be done on mutual agreement. Act and its application decree (Decree N°2015-682 dated May 26, In the case authors fail to find the mutual agreement, Courts are 2015) also apply. The Ministry of Culture can control the validity competent. However, in case of breach of the copyright on the of their statutes. Their common control is done by the “Commission collaborative work, each co-author is entitled to go to Court and Permanente de Contrôle des Sociétés de Gestion Collective”. claim compensation. Pursuant to Article 25 of the Copyright Act, each co-author whose 3.6 On what grounds can licence terms offered by a contribution is identifiable can, unless agreed otherwise, exploit collective licensing body be challenged? it separately to the extent that the exploitation does not harm the exploitation of the collaborative work. The Copyright Act does not cover this issue. However, collective licence terms are subject to common law and can be challenged on any available pertinent ground. 3 Exploitation 4 Owners’ Rights 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? 4.1 What acts involving a copyright work are capable of Only patrimonial rights can be assigned. Pursuant to Article 62 being restricted by the rights holder? of the Copyright Act, with respect to the author, the assignment is proved by written or an equivalent mode. In addition, Article 63 As mentioned above, any exploitation of a copyright work shall of the Copyright Act provides that each patrimonial right must be be namely assigned. Therefore, any act not included into the

assignment is capable of being restricted by the rights holder and considered as an act of infringement. 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary 4.2 Are there any ancillary rights related to copyright, infringement? such as moral rights, and if so what do they protect, and can they be waived or assigned? The Copyright Act does not provide concerning “secondary” infringers. However, anyone infringing copyrights can be The Copyright Act provides moral rights and related rights to prosecuted. copyright. Pursuant to Article 27 of the Copyright Act, moral rights

are the expression of the link between the work and its author. Senegal 5.4 Are there any general or specific exceptions which Moral rights are divided into four components: disclosure; can be relied upon as a defence to a claim of authorship; respect of the work; and a right of reconsider. infringement? The author shall solely decide when the work shall be made available to the public. The author must be displayed to the public – whatever Yes. Articles 38 to 46 of the Copyright Act provide limited the use of the work – and has the right to control and prevent any exceptions which can be relied upon as a defence to a claim of change capable of affecting the integrity and the quality of the infringement. They are: free communication in a family circle or work. The right of reconsider allows for the author to claim for the during a religious service in rooms reserved for that purpose; copies withdrawal of the work from the market following compensation. or reproductions strictly reserved for private use; backup copies of a Article 86 of the Copyright Act lists related rights. They are granted computer program; analyses and quotations, parody and educational to: performers; phonogram and video producers; radio-television use; press reviews; and use of graphic and plastic work located in organisations; and publishers. Relating rights are divided into moral a public area. rights and patrimonial rights. Moral rights are subject to the same restriction and characteristics listed above, but patrimonial rights 5.5 Are interim or permanent injunctions available? can be assigned. Yes. Article 132 of the Copyright Act provides that the court may 4.3 Are there circumstances in which a copyright owner order the following injunctions: is unable to restrain subsequent dealings in works ■ suspension of the manufacturing of unauthorised which have been put on the market with his consent? reproduction; ■ immediate seizure of unauthorised reproduced copies, The copyright owner cannot restrain subsequent dealings in works already manufactured or during manufacturing, of incomes, that have been put on the market with his consent. as well copies illicitly used; ■ suspension of any unauthorised communication to the public; and 5 Copyright Enforcement ■ seizure of income deriving from any unauthorised reproduction or communication to the public. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative 5.6 On what basis are damages or an account of profits to civil actions? calculated?

The statutory enforcement agency is the “Brigade Nationale de Pursuant to Article 152 of the Copyright Act, damages are calculated Lute contre la Piraterie et la Contrefaçon, BNLCP”, created by by losses and moral prejudice, as well the profits illegally made and Decree N°2006-1398 dated December 28, 2006 and vested with the expenses, including court costs, caused by the act of violation. the power to investigate, establish and prosecute violations relating to copyright. However, the BNLCP has no power of sanction. It reports the violations and their authors to the Prosecutor who can 5.7 What are the typical costs of infringement refer the case to a Criminal Court or an Investigating Judge. BNLCP proceedings and how long do they take? is used alternatively or in addition to civil actions. The customs also control and seize upon request, or on their sole initiative, the goods Costs of infringement proceedings vary a lot depending on the they detain. circumstances of each case. There are no standard legal costs. A proceeding on the merits at first instance may take between two months and two years until a judgment is rendered. 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? 5.8 Is there a right of appeal from a first instance Yes. Pursuant to Article 127 of the Copyright Act, in addition to judgment and if so what are the grounds on which an the copyright owner, collective licensing bodies and professional appeal may be brought? associations legally constituted can also claim for their members the assignee of a copyright to the extent of the right assigned. Yes. The Appeal Court will review the entire case. Therefore, the Appeal Court is entitled to reverse or confirm the first decision in all or part of its provisions.

In the case of condemnation on the ground of one of the offences 5.9 What is the period in which an action must be above-mentioned, the Court orders the destruction of illegal copies commenced? and the confiscation of the equipment specially installed to realise the infringement. The Court can order the display and publication of The statute of limitation is 10 years for civil actions, commencing the judgment or extracts of the judgment. In the case of recidivism from the date when the owner knows or should have known about on the ground of infringement of the exploitation and moral rights the existence of the infringement. However, in the case that the and distribution, import and export of illicit copies, the Court owner starts proceedings with an infringement seizure, he has 30 can order the temporary or permanent closure of establishments days starting from the date of the seizure to refer the case to Court, operated by the infringer and his accomplices. and if not, the release of the seizure can be obtained. Senegal The statute of limitation is three years for criminal actions. In principle, the starting point is when the infringing activity has 7 Current Developments ceased. 7.1 Have there been, or are there anticipated, any significant legislative changes or case law 6 Criminal Offences developments?

6.1 Are there any criminal offences relating to copyright The significant developments have been the adoption of Decree infringement? N°2015-682 dated May 26, 2015 and the licence granted to SODAV on February 4, 2016. Yes. Criminal offences are listed by Articles 142 to 147 of the After the adoption of the Copyright Act, an application decree Copyright Act and include: was supposed to follow in order to set out the conditions that are ■ infringement of exploitation rights; to be met by collective licensing bodies in order for them to grant ■ distribution, import and export of illicit copies; a licence, determine the exercise of the rights and fight against forgery. Awaiting that decree, several copyright owners adopted on ■ infringement of moral rights; December 17, 2013 the bylaws of the first collective licensing body, ■ infringement of technical measures; and called the SODAV, which aimed to replace the BSDA. ■ failure to pay equitable remuneration and remuneration for The application decree was finally signed on May 26, 2015, and was private copying. warmly welcomed by copyright owners as it was the final step of an almost 10-year old process. 6.2 What is the threshold for criminal liability and what Immediately after, SODAV applied to be granted a licence to operate, are the potential sanctions? and on February 4, 2016, the licence was finally granted. Copyright owners much appreciated the introduction of the new act. Granting The Copyright Act has no provision relating to the threshold for the licence to SODAV was also the death of the BSDA, created by criminal liability. Therefore, the claimant will only be required to the former Copyright Act N°73-52 dated December 4, 1973. demonstrate that the defender voluntarily infringed the copyright. The sanctions of the infringement of the exploitation and moral rights and distribution, import and export of illicit copies are 7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in imprisonment of one month to two years and a fine of between relation to digital content (for example, when a work 1 to 5 million francs CFA. The sanctions for infringement of is deemed to be made available to the public online, technical measures and failure to pay equitable remuneration and hyperlinking, etc.)? remuneration for private copying are imprisonment of one to three months and a fine of 500,000 francs CFA, respectively. In the case To the best of our knowledge, there are no noteworthy issues of recidivism, the sanctions are doubled. regarding the application and enforcement of copyright in relation to digital content.

Léon Patrice Sarr Ndèye Khady Youm LPS L@w LPS L@w Cité Keur Gorgui, Immeuble ElyséeII Cité Keur Gorgui, Immeuble ElyséeII 5ème étage, appartement 18 5ème étage, appartement 18 Dakar Dakar Senegal Senegal

Tel: +221 33 848 79 88 Tel: +221 33 848 79 88 Email: [email protected] Email: [email protected] URL: www.lps-law.com URL: www.lps-law.com Senegal Léon Patrice is the Managing Partner of LPS L@w. His experience Ndèye Khady is an Associate at LPS L@w. She is hard-working with various renowned Senegalese and foreign law firms and his and always eager to serve. She always delivers a satisfactory ability to work in several branches of law gives him an international performance. stature. His prompt capacity to understand and formulate innovative Her practice areas include: solutions allows him to successfully complete very complex cases. ■■ Corporate and Commercial. His practice areas include: ■■ Banking and Finance. ■■ Information and Technology. ■■ Information and Technology. ■■ Intellectual Property. ■■ Intellectual Property. ■■ Mergers and Acquisitions. ■■ Litigation, Arbitration and ADR. ■■ Energy and Natural Resources.

LPS L@w is known to offer services above customers’ expectations. Our reputation reflects our passion for the work, the cutting-edge training of our team and our experience in international organisations. Therefore, we are adequately prepared to satisfy both international standards and local market needs.

South Africa Vicky Stilwell

KISCH IP Zama Buthelezi

that are eligible for copyright protection, and as such, the Copyright 1 Copyright Subsistence in Cinematograph Films Act is a voluntary system of registration. The registration of cinematograph films is beneficial in that it easily 1.1 What are the requirements for copyright to subsist in and effectively provides cinematograph film copyright owners with a work? proof of their rights in court proceedings. The official fee payable for making an application for the registration of a cinematograph Copyright subsists automatically, provided that the following film is currently R510.00 (approximately $40). requirements are met: (i) the work must be original (the work must be the product of 1.4 What is the duration of copyright protection? Does the creator’s own efforts and skill, and not copied or adapted this vary depending on the type of work? from another source); (ii) the work must be reduced to a material form (i.e. written The duration of copyright is a generous one compared to other down, recorded, represented in digital data or signals, or types of intellectual property. The general term of copyright is 50 otherwise reduced to material form); and years; however, the time period from which the 50 years run varies (iii) the author must be a qualified person meaning that in the case according to the type of work. of an individual, a South African citizen (or a citizen of a For instance, for literary, musical and artistic works (other than Berne Convention country), or someone who is domiciled or resident in the Republic (or in a Convention country) or, in photographs), copyright endures for the life of the author and 50 the case of a juristic person, a body incorporated under the years from the end of the year in which the author dies. However, laws of South Africa (or a convention country); or the work if the work has not been published, performed in public, offered must be first published in or made in South Africa (or in a for sale to the public and/or broadcast, the term of copyright shall Berne Convention country), even though the author is not a continue to subsist for a period of 50 years from the end of the year qualified person. in which the first of the aforementioned acts are done. In the case of cinematograph films, photographs and computer 1.2 On the presumption that copyright can arise in programs, copyright endures 50 years from the end of the year in literary, artistic and musical works, are there any which the work is made available to the public with the copyright other works in which copyright can subsist and are owners consent, or is made (where no publication takes place). there any works which are excluded from copyright protection? In the case of sound recordings, copyright endures 50 years from the end of the year in which the recording is first published. In addition to literary, artistic and musical works, copyright In the case of broadcasts, copyright endures for 50 years from the can subsist in the following works: cinematograph films; sound end of the year in which the broadcast first takes place. recordings; broadcasts; programme-carrying signals; published editions; and computer programs. 1.5 Is there any overlap between copyright and other The Act does not exclude any specific works from copyright intellectual property rights such as design rights and protection. database rights?

Yes, there is an overlap between copyright and other forms of 1.3 Is there a system for registration of copyright and if intellectual property. so what is the effect of registration? For example, jewellery can be protected by means of a registered There is no provision in South Africa for the registration of copyright, design in terms of the Designs Act No. 195 of 1993. A design except in the case of cinematograph films. The registration of registration protects the physical appearance of an article, typically cinematograph films is governed by the Registration of Copyright in the shape and/or configuration and/or pattern and/or ornamentation. Cinematograph Films Act 62 of 1977. The Registrar of Copyright Jewellery is simultaneously capable of protection by way of controls the film registration office. copyright through the Copyright Act (as an artistic work, if it meets There is no consequence in failing to register cinematograph films the requirements set out in question 1.1 above) and by way of trade as the Copyright Act 98 of 1978 lists cinematograph films as works marks through the Trade Marks Act No. 194 of 1993. With regard

to trade marks, shape marks are capable of protection and there person who commissions the work – this is in terms of Section 21 are numerous examples of shape marks that have been filed and/or (1) (c) of the Copyright Act. registered in the jewellery sector. However, where other works not specified above are commissioned, Similarly, a logo may be subject to copyright protection, but may it is assumed that the general rule will apply, i.e. the copyright also qualify for protection and/or registration as a trade mark. vests with the author. For example, where a graphic designer is commissioned to design a logo for a trade mark, there is no exception for the commissioning of such works and, therefore, the 1.6 Are there any restrictions on the protection for copyright works which are made by an industrial standard practice is to transfer the ownership of copyright by way of process? an assignment agreement to ensure that the copyright is owned by the person commissioning the design of the logo.

Yes, there is. Section 15 (3) (A) of the copyright Act provides that South Africa where a three-dimensional version of an artistic work has been made 2.3 Where a work is created by an employee, how is available to the public with the consent of the copyright owner (i.e. ownership of the copyright determined between the an authorised reproduction), the copyright in the artistic work will employee and the employer? not be infringed by a person who makes a three-dimensional copy of the authorised reproduction, provided that the article in question Where a work is created by an employee, the ownership of the primarily has a utilitarian purpose and is made by an industrial copyright will vest in the employer, provided that the author made process. or created the work during the course of his employment. This is This provision thus allows for reverse engineering. applicable subject to an agreement to the contrary. In previous case law, where the Court had to determine the phrase “course of employment”, the Court considered numerous factors, 2 Ownership including whether there was a causal connection between the employment and the creation of the works. 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.4 Is there a concept of joint ownership and, if so, what 2.3 apply)? rules apply to dealings with a jointly owned work?

The author is the person who creates or makes the work. Copyright is categorised as movable property in the Copyright As a general rule, first ownership of copyright vests in the author; Act and it follows from its inherent nature that it is incorporeal however, there are certain exceptions applicable, which are movable property. In the absence of a provision to the contrary in discussed below: the Copyright Act, joint ownership or co-ownership is regulated by Where a literary or artistic works is made by an author in the course the common law principles relating to co-ownership. of his employment by the proprietor of a newspaper, magazine or Joint or co-ownership arises where use or control of copyright similar periodical under a contract of service or apprenticeship, the belongs to a multiplicity of persons. In this regard, joint or co- copyright belongs to the proprietor of the newspaper, magazine, etc. ownership is of an undivided share of the whole copyright in a work, for the purpose of being so published, but in all other respects the or some of the components rights comprising the copyright. Joint or copyright subsisting in the work vests in the author. co-ownership can arise from the joint authorship of a work or by any A person who commissions a photograph, the painting or drawing of of the means of transmission of copyright. a portrait, the making of a gravure, the making of a cinematograph A co-owner of copyright may not use or exploit the rights comprising film or a sound recording, and pays for it pursuant to the commission his copyright, either himself or through a licensee, without the or agrees to pay for it in money or money’s worth, will be the owner consent of the other co-owners. A co-owner thus has the right to of the copyright subsisting in the work so made. veto over the exploitation of the work which is the subject of the Where in a case not falling within the above-mentioned exceptions, copyright by other co-owners. Each co-owner of copyright can, a work is made in the course of the author’s employment by another however, enforce the copyright, e.g. the exclusive right to perform person under a contract of service or apprenticeship, that other one or more restricted acts, without the co-operation of the other person (i.e. the employer) shall be the owner of any copyright co-owners. subsisting in the work. It has been decided that in proceedings where a reasonable royalty is Where the work is made by or under the direction or control of the claimed, all co-owners must be joint, otherwise the co-owner would state or an international organisation, copyright is conferred and be restricted to claiming the portion of the proceeds that he or she vests in the state or in the relevant international organisation. would be entitled to if the work had been duly licensed.

2.2 Where a work is commissioned, how is ownership of 3 Exploitation the copyright determined between the author and the commissioner? 3.1 Are there any formalities which apply to the transfer/ Where a work is commissioned, the ownership of copyright is assignment of ownership? dependent on the type of work commissioned. Yes, assignments of copyright must be in writing and signed by or In this regard, where the work commissioned (and paid for or agreed on behalf of the assignor in order to be of any effect. Failure to to be paid for) is a photograph, the painting or drawing of a portrait, comply with these requirements will render the assignment null and the making of a gravure, the making of a cinematograph film or void. a sound recording, the ownership of copyright will vest with the

In particular, the Collective Society Regulations expressly state 3.2 Are there any formalities required for a copyright that the aim of a collecting society shall be to administer public licence? playing rights effectively and efficiently, to maximise the economic exploitation of the rights entrusted by the rightsholders for their An exclusive licence to do an act which is subject to copyright shall direct benefit and not to generate or accumulate unneeded profits not have any effect unless it is in writing signed by or on behalf of in the hands of the collecting society itself, and to distribute the the licenser or, in the case of an exclusive sublicence, the exclusive proceeds of such exploitation equitably amongst its members. A sublicence, as the case may be. collecting society shall distribute at least 80% amongst its members A non-exclusive licence to do an act which is subject to copyright and not more than 20% shall be retained by the collecting society may be written or oral, or may be inferred from conduct, and may be after distribution to defray its costs or apply otherwise. revoked at any time, provided that such a licence granted by contract As such, should a collecting society (i.e. licensing body) propose South Africa shall not be revoked, either by the person who granted the licence licence terms with the effect that it distributes less than 80% of the or his successor in title, except as the contract may provide, or by a proceeds of exploitation to its members and/or retain more than further contract. 20% of the proceeds for itself, this will be a valid ground on which Failure to comply with these requirements will render the copyright the licence term may be challenged. licence null and void. 4 Owners’ Rights 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in questions 3.4 to 3.6)? 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? There are no laws that limit the licence terms that parties may agree on. The general law of contract will thus apply. Copyright is infringed by any person, not being the copyright owner and acting without the copyright owner’s authorisation, who does or causes any act to be done in South Africa which the owner of 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? the copyright has the exclusive right to do or authorise to do. The restricted acts essentially amount to copying and/or exploiting the work commercially. Musical works are the most prominent types of works having collective licensing bodies in South Africa. The most widely known There are two types of infringement in South Africa: collective licensing bodies dealing with music are SAMRO (South 1) Primary infringement: takes place where a person, without African Music Rights Organisation) and SAMPRA (South African the copyright owner’s authorisation, does or causes to be Music Performance Rights Association), both being responsible done any of the restricted acts set out below in relation to a for the collection of royalties from users of music and for the particular work. distribution of payment of such royalties to artists/copyright owners 2) Secondary infringement: takes place where certain acts who are members. are done without the permission of the copyright owner in connection with direct infringement of copyright. There are Other collective licensing bodies in South Africa are listed below: two forms of secondary infringement: ■ Christian Copyright Licensing International South Africa. (i) dealing with infringing copies; and ■ Christian Video Licensing International South Africa. (ii) permitting an infringing public performance of a work to ■ Dramatic, Artistic and Literary Rights Organisation take place. (DALRO). The following acts are restricted in relation to literary or musical ■ Association of Independent Record Companies (AIRCO). works: ■ National Organisation for Reproduction Rights in Music in ■ reproducing the work in any manner or form; Southern Africa (NORM). ■ publishing the work if it is previously unpublished; ■ International Independent Artist Rights Organisation ■ performing the work in public; (iIARO). ■ broadcasting the work; ■ causing the work to be transmitted in a diffusion service, 3.5 Where there are collective licensing bodies, how are unless the service transmits a lawful broadcast, including the they regulated? work, and is operated by the original broadcaster; and ■ making an adaptation of the work or doing any of the above Collective licensing bodies are regulated by the Collective Society acts in relation to an adaptation of the work. Regulations that are established in terms of Section 39 (cA) of the Copyright Act. The following acts are restricted in relation to artistic works: ■ reproducing the work in any manner or form; ■ publishing the work if it was previously unpublished; 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? ■ including the work in a cinematograph film or a television broadcast; The terms and conditions in a licence offered by a collecting society ■ causing a television or other programme, which includes must enable the collecting society to comply with its obligations the work, to be transmitted in a diffusion service, unless the service transmits a lawful broadcast, including the work, and under the Copyright Act, Performers Protection Act and the is operated by a single broadcaster; and Collective Society Regulations. As such, any licence terms that may be deemed as going against the collective societies obligations ■ making an adaptation of the work or doing any of the above acts in relation to an adaptation of the work. under the aforesaid legislation are challengeable.

The following acts are restricted in relation to cinematograph films: ■ reproducing the work in any manner or form, including 4.2 Are there any ancillary rights related to copyright, making a still photograph from it; such as moral rights, and if so what do they protect, and can they be waived or assigned? ■ causing the film, in so far as it consists of images, to be seen in public, or, in so far as it consists of sounds, to be heard in public; Yes, moral rights and performers’ protection rights are two ancillary rights related to copyright in South Africa. These ancillary rights ■ broadcasting the film; are discussed below. ■ causing the film to be transmitted in a diffusion service, unless the service transmits a lawful broadcast, including the Moral rights film, and is operated by the original broadcaster; The Copyright Act provides that notwithstanding the transfer of ■ making an adaptation of the work or doing any of the above copyright in a literary, musical or artistic work, or in a cinematograph acts in relation to an adaptation of the work; and film or computer program, the author retains the right to claim South Africa ■ letting or offering or exposing for hire by way of trade, authorship of the work and to object to any distortion, mutilation directly or indirectly, a copy of the film. or other modification of the work where such action would be prejudicial to his honour or reputation. The following acts are restricted in relation to sound recordings: ■ making, directly or indirectly, a record embodying the sound The waiver of moral rights by an author is recognised in South recording; Africa; however, moral rights cannot be assigned due to their nature. ■ letting or offering or exposing for hire by way of trade, The Performers Protection Act 11 of 1967 grants a measure of directly or indirectly, a reproduction of the sound recording; protection to performers (i.e. actors, singers, musicians, dancers) ■ broadcasting the subject matter embodied in the sound who sing, act, deliver, declaim, play or otherwise perform in respect recording by means of the use of the sound recording; of their performances of literary, musical, dramatic, dramatico- ■ causing the subject matter of the sound recording to be musical and artistic works. The protection granted by the Performers transmitted in a diffusion service, unless the service transmits Protection Act is supplementary to copyright, i.e. copyright protects a lawful broadcast, including the sound recording, and is literary, musical and artistic works as such, while performers’ operated by the original broadcaster; and protection protects a person giving a rendition of such a work. ■ communicating the subject matter embodied in the sound No specific provision is made for the assignment of performers’ recording to the public. rights in South Africa. The following acts are restricted in relation to a broadcast: ■ reproducing, directly or indirectly, the broadcast in any 4.3 Are there circumstances in which a copyright owner manner or form, including, in the case of a television is unable to restrain subsequent dealings in works broadcast, making a still photograph from it; which have been put on the market with his consent? ■ rebroadcasting the broadcast; and ■ causing the broadcast to be transmitted in a diffusion service, The principle of exhaustion of rights or the first-sale doctrine in unless such service is operated by the original broadcaster. copyright is not expressly provided for in South African copyright The following acts are restricted in relation to programme-carrying law. However, parallel importation is acceptable in South Africa, signals: provided that a conspicuous notice is affixed to the goods, making the consumer aware. This can be said to be recognition of the ■ undertaking or authorising the direct or indirect distribution of programme-carrying signals by any distributor to the principle of exhaustion of rights. general public or any section thereof in South Africa, or from Copyright law has, however, been used to prevent parallel imports South Africa. (although this has proved to be extremely onerous). The Copyright The following acts are restricted in relation to published editions: Act provides that copyright is infringed where someone imports an ■ making or authorised the making of a reproduction of the article into South Africa knowing that the making of that article in edition in any manner. South Africa would have been an infringement if the company that made it had in fact made it in South Africa. The following acts are restricted in relation to computer programs: In order to use this provision in a decided case, one of the tasks ■ reproducing the computer program in any manner or form; undertaken was to assign the manufacturers copyright to the ■ publishing the computer program if it was previously authorised distributor in South Africa, so as to meet the requirement unpublished; that had the manufacturer that made the article made it in South ■ performing the computer program in public; Africa, the importation of that article into South Africa would have ■ broadcasting the computer program; been an infringement of copyright now owned by the authorised ■ causing the computer program to be transmitted in a diffusion distributor. service, unless such service transmits lawful broadcast, In the context of the digital age and particularly in the hyperlinking including the computer program, and is operated by the of literary works, the copyright owner would be unable to restrain original broadcaster; the subsequent dealings in the form of hyperlinking, where such ■ making an adaptation of the computer program or doing any hyperlinking falls under the fair dealing provision of the Copyright of the above acts in relation to an adaptation of the computer Act. For instance, where such hyperlinking is used for the criticism program; and or review of a work or another work, or for reporting current events ■ letting or offering or exposing for hire by way of trade, – if the source is mentioned, as well as the name of the author if directly or indirectly, a copy of the computer program. it appears on the work – the copyright owner will not be able to restrain the hyperlinking.

musical or artistic work, or with a broadcast or published edition, 5 Copyright Enforcement does not infringe copyright when it is for the below purposes: (i) research or private study by, or the personal private use of, 5.1 Are there any statutory enforcement agencies and, if the person using the work; so, are they used by rights holders as an alternative (ii) for the purposes of criticism or review of that work or of to civil actions? another work; or (iii) for the purposes of reporting current events: The Counterfeit Goods Act No. 37 of 1997 is a statute that ■ in a newspaper, magazine or similar periodical; or is intended to enable owners of certain intellectual property, ■ by means of broadcasting or in a cinematograph film. including copyright, to take action against the counterfeiting of their products and to provide for effective enforcement measures Paragraphs (ii) and (iii) above also apply to cinematograph films, South Africa in order to achieve this. The Counterfeit Goods Act provides for sound recordings and computer programs. the search, seizure, detention and destruction of infringing goods. Other defences to copyright infringement in literary or musical The Counterfeit Goods Act makes provision for the appointment of works include use for judicial proceedings, quotations and “inspectors” (namely, police officials having the rank of Sergeant illustrations for teaching. In the case of illustrations for teaching or higher, certain Customs and Excise officials and any persons and quotations, the requirement is that such use must be compatible designated as an inspector by the Minister of Trade and Industry). with fair practice and the source is quoted, including the name of the The Counterfeit Goods Act has been used by intellectual property author if it appears on the work. rights holders as an alternative to copyright infringement Parody is not recognised as a specific defence in South African proceedings. It is a quick and effective remedy that ensures that the copyright law. infringing articles are in fact removed from the marketplace. The Counterfeit Goods Act also provides for a system of registration 5.5 Are interim or permanent injunctions available? with Customs (an enforcement agency) for the detention and seizure of goods suspected to be counterfeit goods (i.e. goods infringing on copyright and/or trade marks of the registered intellectual property Yes, South African copyright law provides for interdicts as a remedy brand holder). for copyright infringement. Private enforcement, on the other hand, is only possible if the If a copyright holder is able to clearly establish their right (a clear intellectual property rights holder happens to become aware of the right), the court may grant a final interdict. If, however, a rights infringement. With private enforcement, the infringing articles holder is only able to establish prima facie proof of its right (the cannot be seized by the enforcement authorities. court is satisfied that the copyright holder has a right on the face of it), the court may grant an interim interdict. The rights owner gets involved in identifying whether the infringing article was made under or with its consent. This is an important determination when assessing whether the goods suspected are, in 5.6 On what basis are damages or an account of profits fact, counterfeit goods. calculated?

The damages to which a copyright holder is entitled in infringement 5.2 Other than the copyright owner, can anyone else bring proceedings are the normal delictual damages which involve a claim for infringement of the copyright in a work? compensation for patrimonial loss.

Yes, an exclusive licensee and exclusive sub-licensee may bring As a substitute for accounts of profit, a reasonable royalty was claims for copyright infringement, although they must first give introduced as a form of compensation in South Africa. A reasonable notice in writing to the copyright owner, of their intention to do so. royalty is the amount of money which would have been payable by a licensee in respect of the wok or type of work concerned. An author of a work (who is not also the copyright owner of the work) may institute proceedings for the infringement of moral rights, but not a copyright infringement action. 5.7 What are the typical costs of infringement proceedings and how long do they take?

5.3 Can an action be brought against ‘secondary’ Costs are very difficult to estimate as these types of matters infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary are charged on a professional time basis and will depend on infringement? the complexity of the matter and/or how vigorously the other side defends the proceedings. As such, we can only provide an This answer is discussed under section 4 above. estimate based on matters that we have dealt with in the past. In our experience, a rough estimation of the costs for copyright infringement proceedings will be approximately $12,000–$15,000. 5.4 Are there any general or specific exceptions which This amount excludes the Advocate’s (Counsel’s) costs for settling can be relied upon as a defence to a claim of the papers and arguing the matter in court. This estimate estimation, infringement? however, is made with the assumption that no interlocutory proceedings are launched during the proceedings which may lead Yes, the Copyright Act provides certain general and special to further costs. exceptions from the protection of certain types of works. Copyright infringement proceedings are brought in the High Court The concept of fair dealing is a hotly debated topic in South of South Africa and they take approximately one year to reach African copyright law. Fair dealing is recognised in Section 12 of finalisation, provided that everything runs smoothly and there are the Copyright Act. In this regard, any fair dealing with a literary, no interruptions and/or appeals.

5.8 Is there a right of appeal from a first instance 6 Criminal Offences judgment and if so what are the grounds on which an appeal may be brought? 6.1 Are there any criminal offences relating to copyright infringement? Yes, there is a right of appeal from the High Court. In High Court matters, the general rule is that while you are entitled The Copyright Act provides for certain types of infringement of to appeal against a judgment or an order, you are not entitled to copyright that constitute criminal offences. The Act provides that appeal against a ruling. any person who, at the time when copyright subsists in a work, A judgment or an order has the following three attributes: without the authority of the copyright owner: 1. it is final in effect and not susceptible to alteration bythe 1. makes for sale or hire; South Africa court of first instance; 2. sells or lets for hire or by way of trade offers or exposes for 2. it is definitive of the rights of the parties in that it grants sale or hire; definitive and distinct relief; and 3. by way of trade exhibits in public; 3. it has the effect of disposing of at least a substantial portion of 4. imports into the Republic otherwise than for his own private the relief claimed in the main proceedings. or domestic use; If these three attributes are not met, the decision is considered to be 5. distributes for purposes of trade; or a ruling and, thus, it is not subject to appeal. 6. distributes for any other purposes to such extent that the There are two grounds on which an appeal may be lodged: owner of copyright is prejudicially affected, 1. a party is dissatisfied with the judgment of the court of first articles which he knows to be infringing copies shall be guilty of instance because of the findingof fact made by the court; or an offence. 2. a party is dissatisfied with the judgment of the court of first The Act also provides that any person who, at a time when copyright instance because of the findingof law made by the court. subsists in a work, makes or has in his possession a plate (including If a party wishes to lodge an appeal against a judgment of the High any stereotype, stone, block, mould, matrix, transfer, negative, Court, sitting as the court of first instance, it must apply to that same record, disk, storage medium or any vision of a work whatsoever judge who gave the judgment for leave (i.e. permission) to appeal. If used to make copies) knowing that it is to be used for making the judge refuses to grant leave to appeal, the party may petition the infringing copies of a work shall be guilty of an offence. President of the Supreme Court of Appeal to grant leave to appeal. Any person who causes a literary or musical work to be performed The appeal will be heard by a full bench of the High Court (i.e. three in public, or who causes a broadcast to be rebroadcast or transmitted High Court judges). in a diffusion service, or who causes a programme-carrying signal If the appeal is turned down by the full court, the party will then to be distributed, knowing that copyright subsists in a work, the require special leave to appeal to the Supreme Court of Appeal. broadcast or signal, and that performance, rebroadcast, transmission This application is made to the President of the Supreme Court of or distribution, as the case may be, constitutes infringement of the Appeal. The Supreme Court of Appeal is the final court of appeal in copyright, shall be guilty of an offence. respect of non-constitutional matters. 6.2 What is the threshold for criminal liability and what 5.9 What is the period in which an action must be are the potential sanctions? commenced? Knowledge is a requirement for criminal liability. In terms of Section 11 of the Act, the period of prescription of debt Any person convicted of an offence shall be liable, in the case of shall be three years in respect of a “normal” debt, thus, debt not due a first conviction, to a fine not exceeding R5,000 (approximately in respect of a mortgage bond, judgment debt or debt owed to the $380), or to imprisonment for a period not exceeding three years or State. to both, for each article to which the offence relates. In any other Law suits must thus be brought within three years, otherwise the case, a person convicted of an offence shall be liable to a fine not claim prescribes. The Prescription Act 68 of 1969 states that exceeding R10,000 (approximately $760), or to imprisonment for prescription shall only commence once the debt is due. The Act a period not exceeding five years, or both, for each article to which does not define the word debt, but it is established law that a wide the offence relates. meaning is given to the term debt and it includes both the general meaning and debt resulting from a delict. 7 Current Developments With regard to a debt that arose as a result of a delict, it is difficult to calculate when the debt arose; however, Section 12 (3) of the Prescription Act states that: 7.1 Have there been, or are there anticipated, any “A debt shall not be deemed to be due until the creditor significant legislative changes or case law has knowledge of the identity of the debtor and of the facts developments? from which the debt arises: Provided that a creditor shall be deemed to have such knowledge if he could have acquired it Yes, the Copyright Amendment Bill (CAB) was introduced into by exercising reasonable care.” South Africa in July 2015. In May 2017, a revised version of the In terms of Section 12 (3), “knowledge” has been interpreted to CAB was introduced as a result of concerns expressed in the first mean the instance when the full facts necessary to institute a claim Bill. The significant anticipated changes in terms of the CAB, are present. A creditor must thus immediately proceed to institute which have a bearing on what is discussed above in terms of the legal action to mitigate against the risk of the claim prescribing, as current Act, are mentioned below: soon as they have the full facts necessary to institute a claim.

With regard to ownership of commissioned works, the CAB has The CAB proposes further exceptions to copyright infringement. included the commissioning of the making of an audiovisual fixation Notably, “the reasonable use of work for cartoon, parody, satire, (which is proposed as one of the definitions of artistic works) and pastiche, tribute or homage” has been proposed as one of these it provides that the ownership of copyright shall be guided by exceptions. contract, and if there is no valid contract in place, ownership shall The CAB also proposes certain unenforceable contractual terms, in vest in the commissioner, but the author will have an exclusive particular, where the term purports to prevent or restrict the doing of licence to exercise any right which would, apart from the licence, be any act which by virtue of the Act would not infringe copyright, or exercisable exclusively by the author. purports to renounce a right or protection afforded by the Act. Copyright owned by or vested in or under the state may not be assigned and all copyright assignments are now limited to be valid 7.2 Are there any particularly noteworthy issues around for a period of 25 years from the date of the agreement of such

South Africa the application and enforcement of copyright in assignment. relation to digital content (for example, when a work The CAB proposes that the author of artistic works shall enjoy an is deemed to be made available to the public online, inalienable right to receive royalties on the commercial resale of his hyperlinking, etc.)? work subsequent to the first transfer of the user of that work (this is termed a “resale royalty right”). The only inalienable authors’ rights The Copyright Act, as it currently stands, is outdated and does not in the current Act are moral rights. specifically cater for the digital age. This is essentially one of the reasons why the CAB has been proposed and, in particular, why The CAB now expressly recognises parallel importation, and thus the CAB proposed an “open” fair use provision as opposed to the formally introduces the doctrine of international exhaustion of right “closed” fair dealing provision of the current Act. in copyright law.

Vicky Stilwell Zama Buthelezi KISCH IP KISCH IP 5 Inanda Greens Business Park 5 Inanda Greens Business Park 54 Wierda Road West, Wierda Valley 54 Wierda Road West, Wierda Valley Sandton Sandton South Africa South Africa

Tel: +27 324 3027 Tel: +27 324 3027 Email: [email protected] Email: [email protected] URL: www.kisch-ip.co.za URL: www.kisch-ip.co.za

Vicky Stilwell is a director in KISCH IP’s trade mark department and Zama Buthelezi is an associate in KISCH IP’s trade mark department. has 13 years’ experience. She is a qualified trade mark practitioner She is a qualified trade mark practitioner and is a fellow member of the and is the current president of the South African Institute of Intellectual South African Institute of Intellectual Property Law (SAIIPL). Property Law (SAIIPL). Zama specialises in trade mark and copyright prosecution and litigation, Vicky specialises in trade mark and copyright matters, including trade including trade mark searching, filing and prosecution of trade mark mark searching, brand selection and implementation strategy, filing applications, trade mark maintenance, trade mark opposition and and prosecution of trade mark applications, trade mark maintenance, copyright infringement matters, assignments, formalities and brand assignments and formalities and brand portfolio management, as portfolio management. well as in domain name registration and enforcement strategy and implementation. Vicky also specialises in commercial intellectual property and intellectual property licensing matters including conducting intellectual property due diligence investigations and advising on and drafting commercial intellectual property agreements and licence agreements.

As a comprehensive IP specialist firm, KISCH IP services includes patents, trade marks, copyright and will also take care of the commercialisation of your IP. The firm safeguards the IP rights of all entities – from start-ups to multinationals – not only in South Africa and Africa, but across the globe. It prides itself on providing a unique service in a competitive industry and offering a highly personalised service, accomplished by a base of attorneys and support staff with a high level of skill and expertise.

Switzerland Frédéric Serra

FRORIEP Legal SA Melina Haralabopoulos

of work. For computer programs, protection expires 50 years after 1 Copyright Subsistence the author’s death. For all other works, protection expires 70 years after the author’s death. In case of joint authorship where the 1.1 What are the requirements for copyright to subsist in individual contributions may not be separated, the relevant time is a work? the death of the last surviving joint author. In cases where the author is unknown, protection expires 70 years after the publication of the Irrespective of its value or purpose, a work enjoys copyright work or, if it has been published in instalments, 70 years after the protection if it consists of a literary or artistic intellectual creation final instalment. with an individual character, which somehow requires a certain degree of originality (Art. 2 of the Federal Act on Copyright and 1.5 Is there any overlap between copyright and other Related Rights, “CopA”). There are no formal requirements such intellectual property rights such as design rights and as registration. database rights?

1.2 On the presumption that copyright can arise in There can be overlaps between copyright and trademark and/or literary, artistic and musical works, are there any design rights. Indeed, some copyrightable works can also benefit other works in which copyright can subsist and are from other intellectual property rights. For example, under certain there any works which are excluded from copyright circumstances, logos can enjoy both copyright and trademark protection? protection, luxury jewellery creations can enjoy both copyright and design protection. In some instances, copyrightable works can also Art. 2 (2) CopA provides a non-exhaustive list of works deemed be enforced through the Federal Act against Unfair Competition as “literary” or “artistic”. Those include, amongst others, scientific (“UCA”). works, works with technical content, works of architecture and choreographic works. Computer programs are also considered as 1.6 Are there any restrictions on the protection for “works” and hence qualify for copyright protection. copyright works which are made by an industrial Works that do not fall within the meaning of literary or artistic process? intellectual creation with an individual character are excluded from protection. The following works are expressly excluded from There is no restriction, provided that the work is created by a human copyright protection: acts, ordinances, international treaties and being. The author can use any available tools, as long as there is a other official enactments; means of payment; decisions, minutes human influence on the result. Without any human activity, there and reports issued by authorities and public administrations, patents can be no copyrighted work. specifications and published patent applications. 2 Ownership 1.3 Is there a system for registration of copyright and if so what is the effect of registration? 2.1 Who is the first owner of copyright in each of the There is no system for copyright registration in Switzerland. works protected (other than where questions 2.2 or Copyright protection arises as soon as the work is created and meets 2.3 apply)? the requirements for copyright protection (Art. 2 (1) CopA). To prove the date of creation, one may wish to have it stamped by a The initial copyright owner of a work is the author, defined as the notary public or sent to oneself by registered letter, which should natural person who has created the work. There is a presumption remain sealed. that the author is the person whose name, pseudonym or distinctive sign appears on the copies or the publication of the work (Art. 8 (1) CopA). 1.4 What is the duration of copyright protection? Does this vary depending on the type of work? Swiss law also grants copyright-related rights (so-called “neighbouring rights”, see question 4.1) to performers, broadcasters The duration of copyright protection varies depending on the type and producers of sound and video recordings.

2.2 Where a work is commissioned, how is ownership of 3.2 Are there any formalities required for a copyright the copyright determined between the author and the licence? commissioner? There are no formalities required for a copyright licence. However, Since copyright initially vests with the author, the commissioner a written agreement is advisable for evidence purposes and to avoid will not automatically acquire ownership of the copyright on the possible interpretation disputes. work created by the author. However, copyright is assignable and the parties can agree (orally or in writing) that the copyright on the 3.3 Are there any laws which limit the licence terms commissioned work be assigned to the commissioner (see question parties may agree (other than as addressed in 3.1). If there is no agreement governing the ownership or the use questions 3.4 to 3.6)?

Switzerland of the copyright, the commissioner shall, however, be entitled to limited rights in accordance with the purpose of the agreement The general limitations to contractual freedom also apply to licence (“principle of assignment limited to the purpose”). terms. Therefore, the licence terms must not be impossible, unlawful or immoral (Art. 20 of the Swiss Code of Obligations, “CO”). Art. 2.3 Where a work is created by an employee, how is 27 of the Swiss Civil Code (“CC”), which prohibits excessive ownership of the copyright determined between the restrictions, also applies to licence agreements. For example, a free employee and the employer? licence of all copyright on any and all works of an author, including any future works for his/her lifetime, would be considered excessive There is no “work for hire” concept in Switzerland. Therefore, and thus void under Art. 27 CC. contrary to designs and patents, copyright vests with the employee The UCA and antitrust laws can also set limits to the licence terms. who has created the work. However, copyright can be assigned to the employer by contract (in the employment agreement or another contract). See also question 3.1. 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? There is an exception for computer programs created by an employee under an employment contract as part of his/her duties The main collective licensing bodies in Switzerland include: or contractual obligations. In this case, although ownership vests ProLitteris for literary, photographic and plastic art works; SSA with the employee, the employer alone is entitled to exercise the for dramatic, literary and musical works; SUISSIMAGE for exclusive rights of use (Art. 17 CopA). audio-visual works; and SWISSPERFORM for related rights of performers, phonogram and audio-visual fixations producers, radio 2.4 Is there a concept of joint ownership and, if so, what broadcasters. rules apply to dealings with a jointly owned work?

3.5 Where there are collective licensing bodies, how are The concept of joint authorship does exist under Swiss law (Art. they regulated? 7 CopA). In case of joint ownership, copyright belongs to all the authors jointly. Unless they have agreed otherwise, the joint authors Licensing bodies are subject to the supervision of the Swiss Federal may only use the work with the consent of all joint authors. Such Institute of Intellectual Property. Authorisations are granted for five consent may not be withheld for reasons contrary to the good faith years and are renewable. Licensing bodies are regulated by Art. 40 principle. The individual contributions can be separated and the ff CopA, which provides amongst others that collective licensing authors have not agreed otherwise, each joint author may use his/ bodies have an obligation to the owners of rights to assert those her own contribution independently, provided that such use does not rights that fall within their field of activities. They are non-profit impair the exploitation of the joint work. and shall draw up and publish tariffs for the remuneration that they In case of copyright infringement, each joint author may bring an collect. After deduction of costs and funds used for social welfare action independently, but may only ask for relief for the benefit of purposes, the proceeds must be distributed to the rights owners and all. other beneficiaries in proportion to the revenue derived from the individual works and/or performances. 3 Exploitation 3.6 On what grounds can licence terms offered by a collective licensing body be challenged? 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? The tariffs of the licensing bodies must be approved by the Federal Arbitration Commission for the Exploitation of Copyrights and There is no formal requirement for the transfer/assignment of Related Rights (the “Arbitration Commission”). The decision ownership, which may even be concluded orally. The only exception of the Arbitration Commission may be appealed to the Federal is where the transfer/assignment arises in the framework of the Administrative Court and further to the Supreme Court on limited splitting of a company or a transfer of assets within the meaning of grounds, amongst others violation of the equitableness principle or the Swiss Merger Act. In such cases, the agreement must be made that the tariffs cover a right that is not to be managed exclusively by in writing and approved by the shareholders meeting. the licensing body. For evidence purposes and to avoid possible interpretation disputes, it is advisable to enter into a written agreement.

4 Owners’ Rights 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work?

4.1 What acts involving a copyright work are capable of being restricted by the rights holder? The exclusive licensee is entitled to bring a claim for infringement, unless this is expressly excluded in the licence agreement. Collective societies can also file a claim in their field of activity. The rights owner has the exclusive right to decide whether, when and how his/her work is used. The following acts are, in particular, capable of being restricted: producing copies of the work; offering, 5.3 Can an action be brought against ‘secondary’ transferring or otherwise distributing copies of the work; reciting, infringers as well as primary infringers and, if so, performing or presenting a work; broadcasting the work by radio, on what basis can someone be liable for secondary Switzerland television or similar means; retransmitting the work by means of infringement? technical equipment; and making the work available, broadcasted and retransmitted perceptible. The author of a computer program An action can be brought against anyone who participates to may also restrict the rental of the work. the infringement, which includes secondary infringers such as accomplices and abettors. Swiss law also protects neighbouring rights of performers, broadcasters and producers of sound and video recordings. 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of 4.2 Are there any ancillary rights related to copyright, infringement? such as moral rights, and if so what do they protect, and can they be waived or assigned? Art. 19 ff CopA provides a catalogue of exceptions. Such exceptions are subject to conditions and include amongst others private use, Moral rights do exist under Swiss Law. They include the right archive and backup copies, temporary copies, quotations, museum to recognition of authorship (paternity right), the right of first catalogues, etc. Creation of parodies can also be relied upon as a disclosure, the right to the integrity of the work (alteration of the defence (Art. 11 (3) CopA). work, creation of a derivative work, inclusion in a collective work), the right of access and exhibition, as well as the protection against destruction. 5.5 Are interim or permanent injunctions available? As a general rule, moral rights are not assignable. However, the author can waive or allow a third party to exercise certain moral Such injunctions are available. rights, which has the consequences of limiting the scope of these Interim injunctions can be filed prior to or simultaneously with rights. For example, the author can authorise a third party, such as a claim on the merits. Such injunction has to be filed with the a publisher, to have the work first published. The author can also competent Court, which rules as sole cantonal instance. The waive its paternity right or authorise a third party to publish the work applicant must provide prima facie evidence that a right to which under such third party’s name. Moreover, the author can authorise a he/she is entitled has been violated or a violation is anticipated, and third party to alter his/her work or use it to create a derivative work, that such violation threatens to cause him/her a harm that cannot be with the caveat that the author may oppose any distortion of the easily repaired, which is usually the case in copyright infringement. work consisting of a violation of his/her personality rights. In case of special urgency, the Court may order the interim measures immediately without hearing the opposing party. 4.3 Are there circumstances in which a copyright owner A permanent injunction can only be ordered within the framework is unable to restrain subsequent dealings in works of a claim on the merits. which have been put on the market with his consent?

According to the international exhaustion principle, physical copies 5.6 On what basis are damages or an account of profits of a work that have been put on the market by the author or with calculated? his/her consent can freely circulate. Therefore, copyright owners cannot prevent parallel imports of such physical copies. Financial compensation is rather difficult to obtain. There are three different legal grounds to claim damages: tort (Art. 41 CO); An exception to this rule was implemented to protect movie theatres unjust enrichment by the infringer (Art. 62 CO); and remittance (Art. 12 (1bis) CopA). It provides that, unless authorised by the of the profits made by the infringer (Art. 423 CO). Each ground author, copies of audio visual works such as movies may not be is subject to specific conditions. Loss of profits based on tort law further transferred or rented (including by video on demand) during is usually extremely difficult to prove, as even a decrease of the the first broadcasting period in movie theatres. turnover is usually not sufficient. One may therefore prefer to claim the net profit made by the infringer based on unjust enrichment 5 Copyright Enforcement or remittance of the profit. Whatever the legal ground, only the damage or profit that is a direct result of the infringement is relevant. Other factors that may have influenced the customer’s decision in 5.1 Are there any statutory enforcement agencies and, if buying a counterfeit may negatively impact the calculation of so, are they used by rights holders as an alternative damages or profits claimed: for instance, if the counterfeit is sold to civil actions? under a third party’s trademark, the consumer’s decision to purchase it may be based on such trademark and have no connection with the Rights holders enforce their rights through civil or criminal actions counterfeited work. or with the assistance of custom authorities. There are no statutory enforcement agencies as an alternative to such actions.

5.7 What are the typical costs of infringement 6 Criminal Offences proceedings and how long do they take?

6.1 Are there any criminal offences relating to copyright The costs of infringement proceedings (including Court fees and infringement? attorneys’ fees) in the first instance vary significantly but can be roughly between CHF 30,000 and CHF 100,000. The amount Copyright infringement is considered a criminal offence (Art. depends on many factors including the complexity of the dispute, 67 CopA). Other related criminal offences include omission of the number and length of submissions and evidences filed by the source, infringement of related rights, offences relating to technical parties and the number of hearings held by the Court. The Court will protection measures and to rights-management information and usually request the plaintiff to pay an advance of costs. The amount unauthorised assertion of rights. Switzerland of Court fees depends on the value in dispute. The losing party bears the Court fees and usually has to pay a financial indemnity covering part of the prevailing party’s attorneys’ fees. 6.2 What is the threshold for criminal liability and what are the potential sanctions? The duration of the first instance proceedings also depends on the above-mentioned factors. It usually takes between one and three The infringer must have acted wilfully. Depending on the relevant years to obtain a judgment in first instance. offence, the sanctions can be a custodial sentence of up to five years The costs of appeal proceedings before the Federal Supreme Court and/or a fine. are usually lower than in first instance proceedings. As there are no hearings, appeal proceedings take in general six months to one year. 7 Current Developments 5.8 Is there a right of appeal from a first instance judgment and if so what are the grounds on which an 7.1 Have there been, or are there anticipated, any appeal may be brought? significant legislative changes or case law developments? Since High and Commercial Courts rule as sole instance in intellectual property matters, an appeal may only be brought before The Swiss Federal Council has expressed the need to modernise the Federal Supreme Court. The grounds of appeal are confined Swiss copyright law and has appointed a working group which to the violation of federal or international law. The appellant can proposed a series of recommendations, including the implementation only challenge the facts if they were established in an “obviously of “stay down” obligations for the host providers in order to prevent incorrect manner” or in violation of the law by the previous Court. infringing uploads. The processing of data for the prosecution of copyright infringement should also be permissible. The report also 5.9 What is the period in which an action must be includes a series of other measures, such as the extension of the commenced? protection period for neighbouring rights, a royalty-free exception for scientific purposes and the use of orphan works. An action on the merits for injunctive relief or declaratory judgment The Federal Department of Justice should provide the Federal can be filed at any time, subject to the rights not being forfeited. Council with its proposed amendments by the end of 2017. The There is no specific time period for the forfeiture of rights, which date of entry into force of the revision, if any, has not been set yet. may however happen if the plaintiff has tolerated the infringement for an extensive period of time (several years). 7.2 Are there any particularly noteworthy issues around Whereas there is no time limit for filing interim measures, such the application and enforcement of copyright in request is subject to the condition of urgency, which requires that relation to digital content (for example, when a work the applicant acts promptly upon discovery of the infringement. is deemed to be made available to the public online, hyperlinking, etc.)? Damages claims related to copyright infringement become time- barred one year from the date on which the plaintiff became aware of the damage and of the identity of the infringer, but in any event 10 Once a copyrighted work is disclosed with the consent of the years after the date on which the damage was caused. author(s), its downloading is legal and cannot be restricted.

Frédéric Serra Melina Haralabopoulos FRORIEP Legal SA FRORIEP Legal SA Rue Charles-Bonnet 4 Rue Charles-Bonnet 4 P.O. Box 399 P.O. Box 399 1211 Geneva 12 1211 Geneva 12 Switzerland Switzerland

Tel: +41 22 836 63 00 Tel: +41 22 836 63 00 Email: [email protected] Email: [email protected] URL: www.froriep.com URL: www.froriep.com

Frédéric has been a partner at FRORIEP’s Geneva office since 2011. Melina has been working as an associate in FRORIEP’s Intellectual Switzerland He is a highly experienced litigation lawyer in all fields of intellectual Property Group since 2013. She advises mainly on intellectual property, including unfair competition, and has extensive experience property matters, both contentious and non-contentious. Her expertise in complex non-contentious intellectual property matters. He advises includes negotiating and drafting IP-related agreements, in particular on licence and assignment agreements, film production agreements, licence, assignment and R&D agreements. She also has experience sponsorship, endorsement and product-placement agreements, IT- in intellectual property and unfair competition litigation before Swiss related transactions, research collaborations, development contracts courts, including in trademark-related disputes. and technology transfers. Melina graduated from the Universities of Geneva and Basel in 2011 His one-year secondment to the fully integrated in-house IP team of a (bilingual Master of Laws, magna cum laude) and was admitted to major player in the luxury goods industry gave him in-depth knowledge the Geneva Bar in 2013. She also completed a LL.M. degree in of the legal and business needs of in-house counsels and a pragmatic Law, Science and Technology from Stanford Law School in 2017 approach to providing a wider range of protection, exploitation and (Fulbright Scholar). During her year at Stanford, she was a member enforcement options. of a Copyright Policy Practicum and conducted a team study for the U.S. Copyright Office regarding the revision of computer software Frédéric is recommended by The Legal 500 2016 as “knowledgeable registration. and business-minded” and has been named an “IP Star” by Managing Intellectual Property magazine. World Trademark Review’s WTR 1000 2017 qualifies him as a “contentious whizz” and a “favourite among technology players”.

FRORIEP is a Swiss law firm with a unique international presence and perspective, where the highest standards of professional excellence, thoroughness and efficiency go hand-in-hand with a cultural diversity, dynamism and entrepreneurial spirit that sets us apart. The FRORIEP IP team can demonstrate an outstanding track record of innovative and sometimes pioneering thinking, applying their knowledge and expertise to find the best solutions on a client’s behalf. Our clients’ intellectual property is often of very significant value. We have developed a team with the knowledge base and expertise to help our clients make the most out of these valuable assets. The industries of our key clients range from luxury goods and medical devices to pharmaceuticals, IT/software, media and financial services. IP litigation and transactions form a significant portion of our IP team’s work. We also regularly and successfully represent our clients in IP and unfair competition litigation.

Taiwan Yu-Li Tsai

Deep & Far Attorneys-at-Law Lu-Fa Tsai

1 Copyright Subsistence 1.4 What is the duration of copyright protection? Does this vary depending on the type of work?

1.1 What are the requirements for copyright to subsist in a work? There are two aspects to copyright protection, one being moral rights, and the other economic rights. “Work” under Taiwan’s copyright law means a creation that is There is no limit to the duration of a copyright relating to moral made within a literary, scientific, artistic, or other spiritual domain. rights. (Copyright Act, Article 5(1)(1).) Economic rights generally last for the life of the author and 50 years Under this provision, the requirements for copyright to subsist in a after the author’s death. (Copyright Act, Article 30(1).) Where a work are generally as follows: (a) a creation from human spirit; (b) work is first publicly released between the 40th and 50th years after a creation having originality or being an independent creation with the author’s death, the economic rights shall last for a term of 10 at least some minimal degree of creativity; (c) a creation having a years beginning from the time of the public release. (Copyright Act, specific expression; and (d) a creation presenting individuality of the Article 30(2).) author within a literary, scientific, artistic, or other spiritual domain. The economic rights in a work authored by a juristic person last for 50 years after the public release of the work, but if the work is not 1.2 On the presumption that copyright can arise in publicly released within 50 years of the completion of the creation, literary, artistic and musical works, are there any the economic rights shall subsist for 50 years after completion of the other works in which copyright can subsist and are creation. (Copyright Act, Article 33.) there any works which are excluded from copyright In addition, the economic rights for photographic works, audiovisual protection? works, sound recordings, and performances last for 50 years after the public release of the work. (Copyright Act, Article 34(1).) Copyright can also subsist in the following works: (a) dramatic Similar to the case of a juristic person, however, if the work is not and choreographic work; (b) photographic work; (c) pictorial and publicly released within 50 years of the completion of the creation, graphical works; (d) audiovisual work; (e) sound recordings; (f) the economic rights shall subsist for 50 years after the completion of architectural work; and (g) computer programs. (Copyright Act, the creation. (Copyright Act, Article 34(2).) Article 5(1).) In addition, derivative work, compilation work, and performances 1.5 Is there any overlap between copyright and other are also protected under certain conditions provided in relevant intellectual property rights such as design rights and articles. (Copyright Act, Article 6(1); Article 7(1); Article 7bis(1).) database rights? The following items shall not be the subject matter of copyright: (a) the constitution, acts, regulations, or official documents; (b) There are possible overlaps between copyright and trademark translations or compilations made by central or local government rights. For example, a trademark can be protected by copyright and agencies for the works referred to in (a); (c) slogans and common trademark rights simultaneously. symbols, terms, formulas, numerical charts, forms, notebooks, or There are possible overlaps between copyright and patent rights. almanacs; (d) oral and literary works for news reports which merely For example, an original and creative appearance of a product can communicate facts; and (e) test questions and spare test questions be protected by copyright and a design patent simultaneously. In thereof for all kinds of examinations held pursuant to acts or addition, computer software can be protected by copyright and a regulations. (Copyright Act, Article 9(1).) patent simultaneously.

1.3 Is there a system for registration of copyright and if 1.6 Are there any restrictions on the protection for so what is the effect of registration? copyright works which are made by an industrial process? No registration is required, and the author of a work shall generally enjoy copyright upon completion of the work. (Copyright Act, If a product made with the help of an industrial process has Article 10(1).) originality and spiritual creativity, the original product may be

protected by copyright. Copies of the product, which are made by another pure industrial process, however, cannot be protected 2.4 Is there a concept of joint ownership and, if so, what by copyright, because products made by mass production are only rules apply to dealings with a jointly owned work? copies of the original product. A joint work is a work that has been completed by two or more persons where the creation of each person cannot be separately 2 Ownership exploited. (Copyright Act, Article 8.) Moral rights in a joint work may not be exercised without the 2.1 Who is the first owner of copyright in each of the consent of all the joint authors. Where a need arises, a joint author works protected (other than where questions 2.2 or shall not refuse consent without a legitimate reason. Authors of a Taiwan 2.3 apply)? joint work may select an author from among the joint authors to be their representative for the purpose of exercising moral rights. “Author” means a person who creates a work, and is normally the Limitations imposed on the representing powers of the representative first owner of copyright. (Copyright Act, Articles 3(1)(1) and 3(1) referred to in the preceding paragraph shall not be effective against a (2).) third party acting in good faith. (Copyright Act, Article 19.) Where a person’s name or a pseudonym familiar to the public Economic rights in a joint work subsist for 50 years after the death is presented in a normal way as the author on the original or a of the last surviving author. (Copyright Act, Article 31.) published copy of a work, or in connection with a public release of In the case of a joint work, each author’s share of the ownership a work, the person shall be presumed to be the author of the work. of such a work shall be as stipulated by the joint authors; where no (Copyright Act, Article 13(1).) stipulation has been made, ownership shares shall be determined according to the degree of each author’s creative contribution. Where the degree of each author’s creative contribution is not clear, 2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the it shall be presumed that each author owns an equal share. Where commissioner? an author of a joint work abandons its share of the ownership of the work, that share shall be apportioned among the other joint Where a work is completed by a person under commission, except authors in proportion to their respective shares. The provisions of in circumstances where it is set out otherwise, such commissioned the preceding paragraph shall apply mutatis mutandis where the person is the author of the work; however, where an agreement author of a joint work dies with no heir or dies with no successor. stipulates that the commissioning party is the author, such agreement (Copyright Act, Article 40.) shall govern. (Copyright Act, Article 12(1).) Joint economic rights in a work shall not be exercised without the Where the commissioned person is the author pursuant to the consent of all the joint economic rights holders; no economic rights provisions of the preceding paragraph, enjoyment of the economic holder shall transfer its share to another person or establish a pledge rights to such work shall be assigned through contractual stipulation of its share in favour of a third party without the consent of all other to either the commissioning party or the commissioned person. joint economic rights holders. To this end, a joint economic rights Where no stipulation regarding the enjoyment of economic rights holder shall not refuse consent without a legitimate reason. The joint has been made, the economic rights shall be enjoyed by the economic rights holders of a work may select a representative from commissioned person. (Copyright Act, Article 12(2).) among themselves to exercise their economic rights. Limitations imposed on the representing powers of such representative shall not Where the economic rights are enjoyed by the commissioned be effective against a third party acting in good faith. The second and person pursuant to the provisions of the preceding paragraph, third paragraphs of the article mentioned in the preceding paragraph the commissioning party may exploit the work. (Copyright Act, shall apply mutatis mutandis to joint ownership of economic rights. Article 12(3).) This means that the commissioning party may (Copyright Act, Article 40bis-I.) freely exploit the work as originally intended. Any exploitation beyond the original intention needs a licence or permission from the Each holder of a copyright in a joint work may, pursuant to the commissioned person. provisions discussed in this chapter, separately demand remedies from the infringer, and may also claim damages based on its share of copyright ownership. The provisions of the preceding paragraph 2.3 Where a work is created by an employee, how is shall apply mutatis mutandis to joint holders of economic rights ownership of the copyright determined between the and plate rights of a joint work that arise out of other relationships. employee and the employer? (Copyright Act, Article 90.)

Where a work is completed by an employee within the scope of employment, such employee is the author of the work; however, 3 Exploitation where an agreement stipulates that the employer is the author, such agreement shall govern. (Copyright Act, Article 11(1).) 3.1 Are there any formalities which apply to the transfer/ Where the employee is the author of a work pursuant to the assignment of ownership? provisions of the preceding paragraph, the economic rights to such work shall be enjoyed by the employer; however, where an Moral rights belong exclusively to the author and shall not be agreement stipulates that the economic rights shall be enjoyed by transferred or succeeded. (Copyright Act, Article 21.) the employee, such agreement shall govern. (Copyright Act, Article 11(2).) Economic rights may be transferred in whole or in part to another person and may be jointly owned with other persons. The transferee The term “employee” in the preceding two paragraphs includes civil of economic rights obtains economic rights within the scope servants. (Copyright Act, Article 11(3).) of the transfer. The scope of the transfer of the economic rights

shall be as stipulated by the parties; rights not clearly covered by mediation approved by the court, a party may initiate invalidating such stipulations shall be presumed not to have been transferred. or cancelling proceedings before the approving court. (Copyright (Copyright Act, Article 36.) Specifically, although there is no Act, Article 82quinquies(1).) Licence terms offered by a collective express formality requirement, clear stipulation of economic rights licensing body may be challenged on the grounds that the calculating transfer between or among parties is required for a successful basis of compensation is unreasonable, the rate of compensation is transfer. too high, or the amount of compensation is too much. (Copyright Act, Article 82(1)(2).)

3.2 Are there any formalities required for a copyright licence? 4 Owners’ Rights Taiwan The economic rights holder may license others to exploit the work. The territory, term, content, method of exploitation, and 4.1 What acts involving a copyright work are capable of other particulars of the licence shall be stipulated by the parties; being restricted by the rights holder? particulars not clearly covered by such stipulations shall be presumed not to have been licensed. (Copyright Act, Article 37.) Reproduction, public recitation, public broadcast, public presentation, Again, although there is no express formality requirement, clear public performance, public transmission, public display, adaptation, stipulation of copyright licence between parties is required for a distribution, rental publication, and public release are capable of licence to be effective. being restricted by the rights holder. (Copyright Act, Article 22.)

3.3 Are there any laws which limit the licence terms 4.2 Are there any ancillary rights related to copyright, parties may agree (other than as addressed in such as moral rights, and if so what do they protect, questions 3.4 to 3.6)? and can they be waived or assigned?

No, there are no laws which limit the licence terms that parties may The author of a work shall enjoy the right of publicly releasing the agree to. work. (Copyright Act, Article 15(1).) The author of a work shall have the right to indicate its name, a 3.4 Which types of copyright work have collective pseudonym, or no name on the original or copies of the work when licensing bodies (please name the relevant bodies)? the work is publicly released. The author has the same right to a derivative work based on its work. (Copyright Act, Article 16(1).) Sound recordings and musical works have collective licensing The author has the right to prohibit others from distorting, mutilating, bodies. modifying, or otherwise changing the content, form, or name of the The collective licensing bodies for sound recordings include the work, thereby damaging the author’s reputation. (Copyright Act, Association of Recording Copyright Owners (ARCO) and the Article 17.) Recording Copyright and Publications Administrative Society of Moral rights belong exclusively to the author and shall not be Chinese Taipei (RPAT). transferred or succeeded. (Copyright Act, Article 21.) The collective licensing bodies for musical works include the Music Copyright Association Taiwan (MCAT), the Music Copyright 4.3 Are there circumstances in which a copyright owner Society of Chinese Taipei (MUST) and the Music Copyright is unable to restrain subsequent dealings in works Intermediary Society of Taiwan (TMCS). which have been put on the market with his consent?

A person who has obtained ownership of the original of a work 3.5 Where there are collective licensing bodies, how are they regulated? or a lawful copy thereof within the territory under the jurisdiction of the Republic of China may distribute it by means of transfer of ownership. (Copyright Act, Article 59bis.) This reflects the The specialised agency in charge of copyright matters shall establish principle of exhaustion – that once a work is legally owned by a a Copyright Review and Mediation Committee to handle the third party, the original owner can no longer exercise any economic following matters: (1) examination of rates of compensation under rights on the work while the third party may use the work freely. the provisions of Article 47, paragraph 4; (2) mediation of disputes between copyright collective management organisations and users concerning compensation; (3) mediation of disputes concerning 5 Copyright Enforcement copyright or plate rights; and (4) other consultation in connection with copyright examination and mediation. Dispute mediation referred to in (3) of the preceding list, and involving criminal 5.1 Are there any statutory enforcement agencies and, if matters, shall be limited to cases actionable only upon complaint. so, are they used by rights holders as an alternative (Copyright Act, Article 82.) There is a Copyright Collective to civil actions? Management Organisation Regulation governing establishment, organisation, rights and obligations, incentives, guidance and The competent authority of copyright matters in Taiwan is the supervision of copyright collective management organisations. Ministry of Economic Affairs. The Ministry of Economic Affairs shall appoint a specialised agency in charge of copyright matters. (Copyright Act, Article 2.) The specialised agency is the Intellectual 3.6 On what grounds can licence terms offered by a Property Office also in charge of patents, trademarks and integrated collective licensing body be challenged? circuit layouts.

Where there are grounds for invalidation or cancellation of a civil

There is no statutory enforcement agency. Nevertheless, as In determining whether the exploitation of a work complies with the mentioned in questions 3.4 to 3.6, the collective licensing bodies reasonable scope referred to in the provisions of Articles 44 through serve as a kind of enforcement agency and are relatively successful 63, or other conditions of fair use, all circumstances shall be taken in sound recordings and music works. Such mechanism may be a into account, and in particular the following facts shall be noted good reference for solutions for other works. The court is ultimately as the basis for determination: (1) the purposes and nature of the in charge of both civil actions and enforcement proceedings. exploitation, including whether such exploitation is of a commercial nature or is for non-profit educational purposes; (2) the nature of the work; (3) the amount and substantiality of the portion exploited in 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? relation to the work as a whole; and (4) the effect of the exploitation on the work’s current and potential market value. (Copyright Act, Article 65(2).) Taiwan An exclusive licensee may, within the scope of the licence, exercise rights in the capacity of the economic rights holder, and may perform The general exceptions which can be relied upon as a defence litigious acts in its own name. The economic rights holder may not to a claim of infringement under the Copyright Act include the exercise rights within the scope of an exclusive licence. (Copyright following categories: (1) use for operation of state organs; (2) use Act, Article 37(4).) for education or academic purposes; (3) use for preservation of culture or promotion of literature and arts; (4) use for circulation After the death of the author, unless otherwise specified by a will, the of information; (5) use for social activity; (6) use for circulation of following persons, in the order indicated, shall be entitled to request commodities; and (7) use for personal non-profit purposes. remedies in accordance with Article 84 and the second paragraph of the preceding article for actual or likely violations of Article 18: (1) spouses; (2) children; (3) parents; (4) grandchildren; (5) brothers 5.5 Are interim or permanent injunctions available? and sisters; and (6) grandparents. (Copyright Act, Article 86.) A copyright holder or plate rights holder may petition the customs 5.3 Can an action be brought against ‘secondary’ authorities to suspend the release of import or export goods that infringers as well as primary infringers and, if so, infringe their copyright or plate rights. (Copyright Act, Article on what basis can someone be liable for secondary 90bis(1).) infringement? Attached goods shall be confiscated by the customs authorities where the applicant has obtained a final and unappealable civil An internet service provider shall be entitled to the application of judgment deciding that the goods infringe copyright or plate rights. Article 90sexies to Article 90novies regarding the limitation on The owner of the attached goods shall be held liable for such costs as liability only if the service provider: (1) by contract, electronic container demurrage, warehousing, loading and unloading, as well transmission, automatic detective system or other means, informs as for expenses connected with destruction of the goods. (Copyright users of its copyright or plate right protection policy, and takes Act, Article 90bis(5).) concrete action to implement it; (2) by contract, electronic When the customs authorities, in the course of executing their transmission, automatic detective system or other means, informs duties, discover import/export goods that in appearance are users that in the event of repeated alleged infringements of up obviously suspect to copyright infringement, they may within to three times, the service provider shall terminate the service in one business day notify the rights holder and notify the importer/ whole or in part; (3) publicly announces information regarding exporter to produce authorisation materials. After receiving notice, its contact window for receipt of notification documents; and (4) the rights holder shall proceed to customs within four hours for accommodates and implements the technical measure described in air export goods and within one business day for air import goods (3). (Copyright Act, Article 90quinquies(1).) and sea import/export goods to assist with verification. Where the A connection service provider that, after receiving notification by rights holder is unknown or cannot be notified, or the rights holder a copyright holder or plate rights holder of alleged infringement fails to proceed to customs within the time limit as notified to assist by a user, has forwarded the notification to that particular user with verification, or the rights holder determines that the goods by electronic mail is deemed to have met the requirement in (1). in question are not infringing, and if there is no violation of other (Copyright Act, Article 90quinquies(2).) customs clearance regulations, customs shall release the goods If a copyright holder or plate rights holder has provided technical forthwith. (Copyright Act, Article 90bis(11).) measures which have been developed based on a broad consensus Where the goods are determined to be suspected infringing goods, and are used to identify or protect copyrighted or plate-righted works, customs shall take measures to suspend the release of the goods. the internet service provider shall accommodate and implement (Copyright Act, Article 90bis(12).) the measures if the technical measures have been ratified by the If, within three business days after customs has taken measures to competent authority. (Copyright Act, Article 90quinquies(3).) suspend the release of the goods, the rights holder has not petitioned customs for attachment under paragraphs 1 to 10, or has not initiated 5.4 Are there any general or specific exceptions which civil or criminal proceedings to protect the rights, and if there is can be relied upon as a defence to a claim of no violation of other customs clearance regulations, customs shall infringement? release the goods forthwith. (Copyright Act, Article 90bis(13).)

The general exception which can be relied upon as a defence to a claim of infringement is fair use. That is, fair use of a work shall not constitute infringement on economic rights in the work. (Copyright Act, Article 65(1).)

by means of reproducing the work without authorisation shall be 5.6 On what basis are damages or an account of profits punished by imprisonment for not more than three years, detention, calculated? or in lieu thereof or in addition thereto, a fine not more than 750,000 New Taiwan Dollars. (Copyright Act, Article 91(1).) With regard to the damages referred to in the preceding paragraph, A person who infringes the economic rights of another person by the damaged party may make claim in any of the following manners: means of reproducing the work without authorisation with the intent (1) in accordance with the provisions of Article 216 of the Civil to sell or rent shall be imprisoned for not less than six months and Code; provided that, when the damaged party is unable to prove not more than five years, and in addition thereto, may be fined not damages, it may base the damages on the difference between the less than 200,000 and not more than 2 million New Taiwan Dollars. amount of expected benefit from the exercise of such rights under (Copyright Act, Article 91(2).) Taiwan normal circumstances and the amount of benefit from the exercise of the same rights after the infringement; and (2) based on the amount A person who infringes the economic rights of another person of benefit obtained by the infringer on account of the infringing by distributing the original work or a copy thereof by transfer of activity; however, where the infringer is unable to establish costs ownership without authorisation shall be punished by imprisonment or necessary expenses [of the infringing act or articles], the total for not more than three years, detention, or in lieu thereof or in revenue derived from the infringement shall be deemed to be its addition thereto, a fine not more than 500,000 New Taiwan Dollars. benefit. (Copyright Act, Article 88(2).) (Copyright Act, Article 91bis(1).) Therefore, there are four bases on which the damages are calculated A person, who distributes or publicly displays or possesses for in accordance with the above provision, i.e.: (1) actual damage an intended distribution a copy, knowing that it infringes work approach; (2) differential approach; (3) gained benefit approach; economic rights shall be imprisoned for not more than three years and (4) total revenue approach. and, in addition thereto, may be fined not less than 70,000 and not more than 750,000 New Taiwan Dollars. (Article 91bis(2).) A person who infringes the economic rights of another person 5.7 What are the typical costs of infringement proceedings and how long do they take? without authorisation by means of public recitation, public broadcast, public presentation, public performance, public transmission, public display, adaptation, compilation, or leasing The typical costs of infringement proceedings include court fees and shall be punished by imprisonment for not more than three years, counsel fees. It typically takes one year per court instance (at most detention, or in lieu thereof or in addition thereto, a fine not more three instances from the Intellectual Property Court to the Supreme than 750,000 New Taiwan Dollars. (Article 92.) Court) for infringement proceedings. The court fees are roughly equal to 1% of the damages in the first instance and 1.5% in both the second and third instances. On average, the counsel fees range from 6.2 What is the threshold for criminal liability and what US$3,000 to 10,000 in each instance. are the potential sanctions?

It is required that a person shall not intentionally infringe another 5.8 Is there a right of appeal from a first instance judgment and if so what are the grounds on which an person’s economic rights or plate rights. On the contrary, a work appeal may be brought? exploited only for personal reference or under fair use does not constitute infringement of copyright. The first instance court is the Intellectual Property Court. In the first The potential sanctions include imprisonment for up to several instance, fact issues and law issues can be brought. years, detention, and/or a fine. The second instance court is also the Intellectual Property Court. In this court, fact issues and law issues can be also be brought. 7 Current Developments The final instance court is the Supreme Court. In the final instance, only law issues can be brought. 7.1 Have there been, or are there anticipated, any significant legislative changes or case law 5.9 What is the period in which an action must be developments? commenced? There will be a significant legislative change to Taiwan Copyright The right to claim damages as provided in Articles 85 and 88 expires Law. On September 9, 2016, the TIPO sent a draft amendment if not exercised within two years of the time the person having the of Taiwan Copyright Law to the Executive Yuan for preliminary right to make the claim learns of its right to claim damages and knows examination before formally sending a formal bill to the Legislative the identity of the obligor, or within 10 years of the occurrence of Yuan for approval. The amendment was described by the TIPO as the infringement. (Copyright Act, Article 89bis.) The two-year and “comprehensive amendments” and covers quite a few orientations 10-year periods are extinctive prescriptions. summarised as follows: (1) In accordance with the needs of scientific and technological development (e.g., Internet and communication equipment), 6 Criminal Offences consolidating and amending the provisions regarding various property rights (e.g., public recitation, public broadcast, public presentation, public performance, public transmission). 6.1 Are there any criminal offences relating to copyright infringement? (2) Revisiting the rationality and flexibility of the attribution of the author (e.g., employer and employee, commissioning entity and commissioned entity). There are many criminal offences relating to copyright infringement. A person who infringes the economic rights of another person

(3) Amending the provisions of moral rights of a perished legal person to facilitate the utilisation of works. 7.2 Are there any particularly noteworthy issues around (4) Clarifying the relevant provisions related to distribution the application and enforcement of copyright in relation to digital content (for example, when a work rights and rental rights to facilitate market harmony. is deemed to be made available to the public online, (5) Adjusting the protections for performers and sound hyperlinking, etc.)? recordings. (6) Amending the provisions related to the restrictions of In view of the progress of digital broadcasting and transmission property rights. technologies, the content that can be transmitted by broadcast or (7) Adding a provision related to the compulsory licensing transmission is no longer confined to traditional sound or video. against work where the property rights owner is unknown Other content, such as literature and computer programs, which Taiwan and initiating the registration of property rights. can be digitised can also be considered content for broadcast or (8) Amending the provisions related to statutory compensations. transmission. Therefore, in the drafted amendment of Taiwan (9) Amending the provisions related to border measures. Copyright Law, the words “sound” or “video” in original article (10) Revisiting and amending the inopportune or inappropriate clauses have been deleted so that such clauses can be conveyed to provisions related to criminal liabilities. the public to mean any form of broadcast or transmitted content.

Yu-Li Tsai Lu-Fa Tsai Deep & Far Attorneys-at-Law Deep & Far Attorneys-at-Law 13th Floor, 27, Sec. 3 13th Floor, 27, Sec. 3 Chung San N. Road Chung San N. Road Taipei Taipei Taiwan Taiwan

Tel: +886 2 2585 6688 Tel: +886 2 2585 6688 Email: [email protected] Email: [email protected] URL: www.deepnfar.com.tw URL: www.deepnfar.com.tw

Mr. Tsai, a patent attorney in Deep & Far Attorneys-at-Law, graduated Mr. Tsai earned his LL.B. and LL.M. from the National Taiwan from the Department of Electrical Engineering of National Taiwan University, which is the nation’s top university and the most widely- University (NTUEE) and immediately attended the Graduate Institute known College of Law in Taiwan. Whilst undertaking his LL.M. degree, of Communication Engineering (GICE) of NTU, where he received he also passed the Bar examination. a Master’s degree following two years of research. During his time Mr. Tsai extensively majored in civil and commercial law, including at GICE, he gained knowledge and skills relating to patent matters family law, civil procedure law, corporate law, note law, insurance law and passed the Bar examination for patent attorneys. Mr. Tsai also and maritime law. attended and gained an IP Master’s degree from the Law School of the University of New Hampshire, also known as the Franklin Following graduation, Mr. Tsai joined Deep & Far Attorneys-at-Law. Pierce Center for Intellectual Property. After graduation, he had the Although this firm has built its reputation as experts in the IP field, opportunity to work for InterDigital, Inc. in Delaware for a short period, it is nevertheless still active in handling other legal affairs. He was and then passed the U.S. Patent Registration Examination. He has encouraged to expand the legal departments of the firm with the goal also passed China Patent Agent Examination. Mr. Tsai is concurrently of helping Deep & Far become a more comprehensive law firm. majoring a Master’s degree in law at National Chiao Tong University. Mr. Tsai also earned an LL.M. degree from the University of Göttingen.

Deep & Far Attorneys-at-Law was founded in 1992 and deals with all aspects of law, with a particular focus in all aspects of intellectual property rights (IPRs), including patents, trademarks, copyrights, trade secrets, unfair competition, and/or licensing, counselling, litigation and/or transaction thereof. Deep & Far prosecutes worldwide patent matters for local clients. For international or foreign clients, Deep & Far prosecutes patent matters mainly in Taiwan, significantly in China & Hong Kong, and with minor representation in Macau, Singapore, Korea and Japan. Deep & Far prosecutes in every field, such as mechanics, chemistry, pharmacy, biology, electronics, optics, telecommunications, and computer sciences.

Turkey Altuğ Güzeldere

Güzeldere & Balkan Law Firm Didem Ataün

There are no works which are expressly excluded from copyright 1 Copyright Subsistence protection.

1.1 What are the requirements for copyright to subsist in 1.3 Is there a system for registration of copyright and if a work? so what is the effect of registration?

Under Turkish law, specifically Law No. 5846 on “Intellectual According to Article 13 of Law No. 5846, film producers and and Artistic Works” (“Law No. 5846” or “the Law”), any kind phonogram producers are obliged to record and register their of intellectual and artistic product bearing the specialty of its productions, including cinematic and musical works, in order to author or deemed to be a scientific and literary, music, artistic or prevent any breach of their rights in relation thereto, for easy proof cinematographic work is defined as a “work”. of evidence in determining their ownership rights and to pursue their The right to copy any work’s original or copies thereof by virtue of powers of benefit in relation to their economical rights. Such record any form or method, completely or partially, directly or indirectly, and registry would not result in creating any right on the mentioned temporarily or permanently is exclusively vested in the “author” works. of the work. Therefore, the copyright can subsist in any of the For the same purpose, upon request of any author, all works aforementioned categories of work. protected under Law No. 5846 can be recorded and registered and Reproduction of the work’s original, or a recording of the work any power of benefit in relation thereto can be recorded as well. Such on any kind of device that enables the transmission and repetition recording and registration will be made only upon the statement of of signs, voices and images which are already known or will be the author for which the Turkish Ministry of Culture and Tourism developed in the future, any kind of voice and music recordings, (the “Ministry”) cannot be held liable. Those who were aware of along with the implementation of plans, projects and guidelines in the non-existence of, or would be expected to know about such non- relation to architectural works, are also considered as copying. The existence, or made false statements about the economical and moral same rule applies for reliefs and perforated moulds. rights of a work during the actions constituting grounds for any To the extent that a computer program requires a temporary copying, record and registry, are subject to legal and penal sanctions provided the copyright also covers acts of downloading, displaying, running, by Law No. 5846. transmission and storage of the program. The Ministry has published a regulation for determining the Please note that the copyright counts as an “economic right” terms and conditions in relation to the recording and registration that enables the author of the work to benefit from the work of intellectual and artistic works in the Turkish Official Gazette economically. In addition to copyright, the economic rights are the dated May 17, 2006, numbered 26171. According to its Article right of adaptation, the right of distribution, the right of performance 5, the mentioned regulation repeats the mandatory recording and and the right to publicly communicate the work by the devices registration requirements for cinematic and musical works; in enabling the transmission of signs, sounds and/or images. addition, computer games are considered under the same umbrella, since they include moving and audio-visual images within a certain mise en scène or scenario. 1.2 On the presumption that copyright can arise in literary, artistic and musical works, are there any other works Except for works subject to compulsory recording and registration in which copyright can subsist and are there any requirements, authors may, at their own discretion, have their works which are excluded from copyright protection? works fall under other categories recorded and registered within the Ministry. This process requires the author, during the application, Except for those mentioned under question 1.1 above, there is no to submit those documents as listed under the regulation. Among special category stipulated by Law No. 5846 in which the copyright such documents, a special undertaking needs to be submitted can subsist. However, the main four categories (scientific, literary, by the relevant author to the Ministry indicating the ownership musical and artistic or cinematographic works) have sub-categories, over the work or production and assuming any kind of legal and which can also be subject to copyright. Although the main four penal liabilities in the event that it is proven otherwise. Finally, categories of works are “numerus clausus”, any intellectual and any agreement authorising the use and transfer of the economical artistic work that would be deemed to fall under any of such right in relation to a work can be submitted to the Ministry for its categories would be considered as a “work” by way of interpretation. recording and registration at the author’s discretion.

Moreover, Turkey is a signatory of the International Convention Additionally, the Industrial Property Law, numbered 6769 (“IP for the Protection of Performers, Producers of Phonograms and Law”), was published in Official Gazette number 29944 on 10 Broadcasting Organizations signed in Rome, dated October 26, January 2017 and the majority of provisions entered into effect on 1961, and the Universal Copyright Convention dated September 6, the same date. The new IP Law reconciles provisions which were 1952. Under this legislation, when copies of materials, including previously addressed by different statutory decrees concerning the works or productions recorded and registered with the Ministry, protection of industrial designs, geographic signs, patent rights and are publicly released, for productions including audio recordings, trademarks. the letter (p) has to be affixed, whereby other copies of work and According to the Article 58 of the IP Law, any protection granted productions have to bear © together with the release or commercial under IP Law for any design does not harm the protection granted circulation date and the name or title of the author. Additionally,

by Law No. 5846 if the terms and conditions sought by the said law Turkey productions including musical works have to use the International are maintained. This protection was granted in the same way for the Standard Recording Code (ISRC) granted by the International designs with the annulled statutory decrees. Moreover, according Federation of the Phonographic Industry (IFPI) and the International to Article 6/6 of the IP Law, trademark registration application, Standard Musical Work Code (ISWC) granted by the International which includes someone else’s personal name, commercial name, Confederation of Authors and Composers Societies (CISAC). All photograph, copyrights or any other intellectual property rights, of the transactions for granting such codes are pursued by a local shall be rejected upon the application of the right holder. institution or union authorised by IFPI or CISAC. Unfortunately, none of the above-mentioned recordings and 1.6 Are there any restrictions on the protection for registrations grant a right over the works. However, there is no copyright works which are made by an industrial doubt that the author of the relevant work would be one step ahead process? in proving its ownership against those who would allege to be the real owner of such work. As mentioned above, if the copyright works are also subject to the protection of the IP Law concerning the protection of industrial 1.4 What is the duration of copyright protection? Does designs, they will also be subject to the limitations stipulated in the this vary depending on the type of work? above-mentioned law. According to the Article 59/3 of the IP Law, the circumstances where In general, the protection term for any author lasts for their lifetime a design right is restricted are: (i) where the design has special or and for a further period of 70 years upon her/his death. In the event non-commercial purpose; (ii) practice implementations; (iii) where that there are several authors, this term expires 70 years after the copying is required for educational or referencing purposes, provided death of the last surviving author. Work(s) that has/have become that it complies with the good faith rules governing commercial public upon the death of its/their author(s) is/are protected for 70 practice, it does not threaten the ordinary usage of the design years following the death of the related author. unnecessarily and a reference is given; and (iv) when equipment of In the event that the author of a work cannot be designated as per the vessels or aircrafts registered within foreign countries and located provisions of Law No. 5846, the author would be deemed to be the temporarily within the boundaries of the Republic of Turkey needs issuer. In the event that there lacks an issuer, the multiplier would be to be repaired, repair of spare parts and accessories imported for the authorised to use the rights and authorisations of the author on their repair of such vehicles, and repair of the mentioned vehicles. behalf. In such cases, the protection period would last for 70 years after the work has become public, unless the author reveals her/his name before such term expires. In the event that the first author is 2 Ownership a legal entity, the protection term is 70 years following the public release of the work. 2.1 Who is the first owner of copyright in each of the Moreover, the protection term would not begin before the relevant works protected (other than where questions 2.2 or work becomes public, and the terms would be calculated from the 2.3 apply)? first day of the year which follows the year during which the relevant work first became public. In cases where the author has died, the Ownership of copyright under Turkish law is determined pursuant commencement date of the protection term would be deemed the to the general definition of the owner of a work, which is stipulated first day of the year following the year of the author’s death. In the under Law No. 5846 as the “person who creates it”. event of collective ownership, the protection term begins from the There are also circumstances defined by Law No. 5846 pursuant to decease date of the last surviving author. which the ownership of a work can be presumed based on whether the name of the owner is published or not. For example, until it is 1.5 Is there any overlap between copyright and other proven otherwise, any person using her/his name or her/his famous intellectual property rights such as design rights and alias in any copy of a published work or affixed the same under the database rights? original copy of an artistic work shall be deemed to be the owner of such work. If the owner of a published work cannot be determined Under Law No. 5846, any use of drawings, pictures, models, designs pursuant to the foregoing rule, the publisher – and if the publisher and similar works, such as industrial models and pictures, does not cannot be determined, thus, the copier of such work – can use the prevent their qualification of being an intellectual and artistic work. rights and authorisations granted to the owner of the work. Any database, which has emerged from the compilation of data and materials chosen for a certain purpose or particular plan and readable 2.2 Where a work is commissioned, how is ownership of through a device or having any other form, is also deemed to be a the copyright determined between the author and the work under Law No. 5846. However, the protection provided for commissioner? such database does not cover the data and materials included within the database. If a work is commissioned, the person who created the work will

be the owner of such work. The relationship between the author and the commissioner shall be determined according to the general 3 Exploitation principles of an attorneyship agreement stipulated under the Turkish Code of Obligations (TCO). Except for the moral rights, the 3.1 Are there any formalities which apply to the transfer/ commissioner will be entitled to use the economic rights in relation assignment of ownership? to such work. On the other hand, if there are several contributors to the creation of Except for moral rights, any owner of a work or her/his inheritors a work, there are two options to determine the author of the work. If are entitled to assign the economic rights granted thereto to third the work can be separated, each part thereof shall be deemed to be parties as limited or unlimited by time, location or content, with or without any consideration. Also, the usage of economic rights can

Turkey the work of the person who created such part. However, if the work cannot be separated, the union of persons who created the work shall be left to any third party, which has been granted a licence thereon. be deemed to be the author of such work. Transfer/assignment of moral rights is prohibited by Law No. 5846. Even if the parties would contract otherwise, such contract enabling 2.3 Where a work is created by an employee, how is the transfer/assignment of moral rights would be deemed to be ownership of the copyright determined between the invalid. Any contract in relation to the transfer of economic rights employee and the employer? must be in writing and indicate the rights constituting subject matter thereof. In other words, the contract should list which economic According to Article 18 paragraph 2 of Law No. 5846, unless it is rights are being transferred/assigned to the other party. not understood otherwise from the private agreement or the content Please note that any transfer or assignment of works that are not yet of the work, rights upon works created by officers, employees and created will be deemed to be null and void. However, the owner can workers during their performance of their work are used by their grant an undertaking to a third party for creating a work, which is employers or assignors. subject to cancellation within one year following the notification. The same rule applies to the bodies of legal entities. Thus, any Pursuant to the Article 148 of the IP Law, industrial property law can person who created a work during the performance of her/his job be assigned, bequeathed, be subject of the licensing, hypothecated, shall be deemed to have automatically assigned the economic rights, be subjected to pledge, confiscated or can be subject of the other including the copyright upon such work, to her/his employer, unless legal transactions. On the other hand, according to the same article, the parties have agreed otherwise or unless it can be interpreted that geographical indications and traditional good names shall not be such work is not related to the person’s employment. subject of the licensing, assignment, transition, confiscation and It is also a common practice in Turkey to include a provision in other similar legal transactions and shall not be subjected to pledge. the employment agreement which obliges the employee/worker to These legal transactions are required to be in written form and an assign any work that they created during the performance of their assignment agreement shall only be effective if the agreements are employment automatically to the legal entity. However, certainly, approved by the notary. the moral rights of such works would still be vested in the employee/ Pursuant to the Article 106 of the IP Law, patent applications and worker, since such rights are not transferable under Law No. 5846. patent assignments shall be effective for the third persons after recording the applications or assignments regarding the patents, 2.4 Is there a concept of joint ownership and, if so, what licences and voluntary and compulsory legal transactions regarding rules apply to dealings with a jointly owned work? patent applications or the patents to the trade registry.

Law No. 5846 recognises the concept of joint ownership and applies 3.2 Are there any formalities required for a copyright different methods in dealing with a jointly-owned work depending licence? on whether the related work is separable or inseparable. In the event that any work created by more than one person is separable, each As mentioned above, granting the use of an economic right such person shall be deemed to be the owner of the work created thereby. as copyright shall be subject to a written “licence agreement”. In Unless otherwise agreed, any of the joint owners can demand the the event that the owner of the work is also allowed to grant such others to contribute to the changing of the work or publication licence to third parties, this licence will be called a non-exclusive thereof. If the others would not agree to such request without any licence. just cause, the court can grant such permission. The same rule However, on the contrary, if the licence granted to the third party applies to the usage of the economic rights. cannot be granted to someone else, such licence will be called an On the other hand, in the event that any work created by more than exclusive licence. Unless otherwise stipulated in the law or contract, one person’s contribution would constitute an inseparable work, the any licence would be deemed to be a non-exclusive licence. owner of the work would be deemed to be the union of the persons that created such work. The provisions of ordinary partnership shall apply to the union. 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in In the event that any of the joint owners would not permit any questions 3.4 to 3.6)? transaction to be made by the union without any just cause, such permission may be granted by the competent court. Each of the As mentioned above, there are certain circumstances where the joint owners can act individually where benefits of the union are agreement of the parties would be deemed either null and void or infringed. If the work created by the contribution of several persons invalid. In this case, any transfer of the moral rights or the granting constitutes an inseparable work, unless otherwise agreed under an of a licence thereon would be deemed to be null and void. agreement or service conditions or any applicable law in effect when Any work that has not yet been created cannot be transferred and the work was created, rights over the joint work will be used by the assigned or be subject to a licence; however, an undertaking can individual or legal entity which brought the joint owners together, be given which is subject to cancellation within a one-year period. provided that rights on cinematic works are reserved.

There are also circumstances where economic rights or certain b. İLESAM (Collecting Society of Science and Literature copies of a work cannot be subjected to a pledge or attachment Work Owners of Turkey). except for the mandatory provisions under the Turkish Bankruptcy c. BİYESAM (Collecting Society of Information and and Enforcement Law. Software Work Authors). d. ÇEVBİR (Collecting Society of Interpreters). 3.4 Which types of copyright work have collective e. YAYBİR (Collecting Society of Publishers’ Copyright licensing bodies (please name the relevant bodies)? and Licensing). f. TBYM (Collecting Society of Printing and Publishing of Owners of works, owners of neighbouring rights, copiers and Turkey).

broadcasters of non-periodical publications, and right holders of g. DEKMEB (Collecting Society of Study and Culture Turkey scientific-literature works who assigned the economic rights from Books Publishers). owners or right holders of works as per a contract and in compliance h. EĞİTİMYAYBİR (Collecting Society of Education with Law No. 5846 are entitled to establish several collective Publishers). licensing bodies. Such licensing bodies may protect their members’ 5. Radio and Television joint benefits, administrate and pursue the rights granted by Law No. a. RATEM (Collecting Society of Radio and Television 5846, and collect fees and distribute the same to the right holders, Broadcasters). provided that they follow the by-laws and statutes issued by the 6. Artistic Works Ministry and approved by the Council of Ministers. a. Collecting Society of Artistic Work Owners. Certain collective licensing bodies must obtain the permission of 7. Theatre the Ministry in the event that their number of executives exceeds a certain limit provided by law or there is already another collective a. TOMEB (Collecting Society of Theatre Artists). licensing body established in the same subject. Please find below the names of the collective licensing bodies in 3.5 Where there are collective licensing bodies, how are Turkey: they regulated? 1. Federation As mentioned above, Article 42 of Law No. 5846 permits the a. YAYFED (Federation of Publisher Collecting Society). establishment of collective licensing bodies provided that they 2. Cinema pursue by-laws and statutes issued by the Ministry and approved a. BSB (BSB Collecting Society of Cinematographic Works by the Council of Ministers. Collective licensing bodies and Authors). federations are legal entities subject to private law. Their members b. SESAM (Collecting Society of Cinematographic Works cannot be forced to subscribe capital, to contribute to loss and profit Authors of Turkey). or to undertake legal responsibility. c. SETEM (Collecting Society of Cinematographic and Establishment of the collective licensing bodies and federations, Television Works Authors). their control, supervision, minimum number of members required d. SİNEBİR (Collecting Society of Cinematographic Works to convene their first general assembly, other discretionary organs, Authors). constitution type of their councils, the number of members, e. FİYAB (Collecting Society of Film Producers). conditions for becoming a member, exiting from membership and f. SE-YAP (Collecting Society of Cinematographic Works dismissal, determination of areas to establish branches, their relations Producers). with governmental institutions and foundations, private individuals g. TESİYAP (Collecting Society of Television and Cinema and legal entities within the country or abroad, their rights and Film Producers). authorities in relation to the same, their financial relationship with h. BİROY (Collecting Society of Cinema Artists). their members, distribution of royalty fees and compensations, i. ASİTEM (Collecting Society of Anatolian and other issues are regulated under the “By-Laws on Collective Cinematographic and Television Works Authors). Licensing Bodies and Federations of Owners of Intellectual and Artistic Works and Neighbouring Right Holders” published in the j. SENARİSTBİR (Collecting Society of Scenario and Dialog Writers Cinematographic Works Authors). Turkish Official Gazette numbered 23653 and dated April 1, 1999. 3. Music a. MESAM (Collecting Society of Music Works Authors of 3.6 On what grounds can licence terms offered by a Turkey). collective licensing body be challenged? b. MSG (Collecting Society of Group of Music Works Authors). While making a contract, any collective licensing body has to act c. MÜYOR-BİR (Collecting Society of Music Performers). in good faith in relation to the rights that they are administering and they have to apply the discounts or easy terms of payment they d. MÜZİKBİR (Collecting Society of Neighbouring Right require as they deem fit with respect to their financial and/or the Owner Phonogram Producers). moral benefits. e. MÜ-YAP (Mü-Yap Collecting Society of Neighbouring Right Owner Phonogram Producers). In addition to such general rule, collective licensing bodies have to act within the certificate of authority that they have been granted f. MÜYA-BİR (Collecting Society of Neighbouring Right Owner Phonogram Producers). by their members. Moreover, the collective licensing bodies have to take certain criteria into consideration when making a contract 4. Science-Literature in relation to the usage of works, performances, setups, and a. BESAM (Collecting Society of Science and Literature publications along with tariffs, which can be listed as follows: Work Owners). (i) ensuring of continuation in the transmission of the works as widespread within the public;

(ii) determining of reasonable fees to be paid in consideration sole authority in deciding whether a work can be publicly presented to the usage of works in publications by taking national and or published with or without the name of the owner or with the alias international applications; thereof. Unless the permission of the owner has been obtained, no (iii) not creating terms and conditions distorting competition; abbreviation, addition or other changes can be made to the work. (iv) broadcasting area (national, regional, local) and the size of Moreover, artists interpreting, presenting, narrating, singing, playing audience; or otherwise performing a work in an original form, phonogram (v) frequency in the use of works; producers who record a performance or other voices for the first time, (vi) market shares; and radio and television broadcasters are deemed to be neighbouring (vii) the sole fee for the usage of each work; right holders by Law No. 5846, which are also the ancillary right

Turkey holders of the copyright. (viii) a fixed fee; and (ix) a unit fee based on second or moment. 4.3 Are there circumstances in which a copyright owner It is obvious that any collective licensing body, which acts in breach is unable to restrain subsequent dealings in works of the above-mentioned criteria, can face a lawsuit from the relevant which have been put on the market with his consent? beneficiary in terms of the general rules of the Turkish Codeof Obligations and Turkish Procedural Law. Any dispute between the Provided that the author holds rental and public lending rights, the collective licensing bodies and broadcasting institutions in relation resale of specific copies following their first sale or distribution to the agreement they entered into can be settled through arbitration within the country by way of transfer of ownership, as a result of the or a conciliation board to be constituted among the parties. right holder exercising their distribution right, is permitted.

4 Owners’ Rights 5 Copyright Enforcement

4.1 What acts involving a copyright work are capable of 5.1 Are there any statutory enforcement agencies and, if being restricted by the rights holder? so, are they used by rights holders as an alternative to civil actions? As explained above, copyright is an economic right that is exclusively vested in the right holder. The extent, form and terms Article 81 of Law No. 5846 assigns and authorises the Ministry and and conditions of the usage of such right can only be determined by its local authorities to inspect copies of works and check that the the person who creates the work. works are correctly labelled. It is further stipulated that in cities, There are circumstances provided by Law No. 5846 where usage inspection commissions can be established by local authorities of a work cannot be restricted due to public order, educational ex officio or upon the request of the Ministry to conduct such purposes or for news broadcasts, etc. However, upon the death inspection, if required. of the owner of the work, such restriction would cease unless the It is envisaged that such commissions comprise primarily general inheritors decide otherwise. law enforcement officers such as policemen or municipal police. On the other hand, since the moral rights are exclusively vested If required, representatives of other public institutions and in the owner of a work, the owner can prohibit the presentation or incorporations, along with collective licensing bodies, can also be publication of such work, if the public presentation or publication assigned to the mentioned commissions. In practice, generally, law would infringe the honour and reputation of the owner, even if the enforcement officers and personnel of Local Culture and Tourism owner has assigned the above-mentioned rights to any third party Directorates are members of such commissions. in writing. There is no requirement to apply to the above-mentioned local Moreover, as mentioned above, trademark registration application, commissions, since any intellectual property right infringement which includes someone else’s personal name, commercial name, is subject to complaint of the relevant right holder. However, the photograph, copyrights or any other intellectual property rights, local enforcement officers are only authorised to collect proof and to shall be rejected upon the application of the right holder (Article confiscate the products subject to infringement and the preliminary 6/6 of the IP Law). investigation would be conducted by the prosecutor. Therefore, in order to ensure that the infringers are imprisoned or have monetary fines inflicted upon them, a court decision will be required. 4.2 Are there any ancillary rights related to copyright, such as moral rights, and if so what do they protect, and can they be waived or assigned? 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? Authority for public presentation of the work, indicating the name and prohibition of any change in the work, is exclusively vested Infringement of the copyright in a work is subject to complaint by in the owner of the work and constitutes the moral rights thereof. any owner of the moral rights or economic rights of such work. None of the aforementioned rights can be waived or assigned. Also, collective licensing bodies can bring a claim for infringement As mentioned further above, any agreement which assigns or on behalf of its member. transfers these rights shall be deemed null and void. Authority for Additionally, the representatives of the Ministry and Turkish the presentation of the work gives the owner the right to decide Ministry of National Education would inform owners whom hold whether the work will be publicly presented or not, time for such moral and economic rights of a work of any infringement of the presentation, and method of the same. The owner of the work is the copyright in such work.

The first paragraph shall also apply to school radio broadcasts 5.3 Can an action be brought against ‘secondary’ made exclusively for schools and approved by the Turkish infringers as well as primary infringers and, if so, Ministry of Education. on what basis can someone be liable for secondary The permission of the author is necessary for making selected infringement? or collected works for purposes other than education. In all such cases, the name of the work and the author shall be Law No. 5846 does not distinguish between primary or secondary cited in the customary manner. infringers. Any right holder whose rights are protected under Law (5) Freedom of quotation: Quotations of a work are permitted No. 5846 can bring an action before a competent court of jurisdiction in the following cases: if she/he thinks that her/his rights are infringed by a third party. 1. quoting a few sentences or passages of a work, which has Turkey been made public, in an independent literary or scientific 5.4 Are there any general or specific exceptions which work; can be relied upon as a defence to a claim of 2. incorporating certain elements of a published composition, infringement? such as themes, patterns, passages or ideas, into an independent musical work; General or specific limitations provided by Law No. 5846 can be 3. reproducing works of fine art that have been made public relied upon as a defence to a claim of infringement, since in such and other published works in a scientific work for the cases the usage, distribution, copy, etc. of a work is permitted by purpose of explaining its content and to the extent justified law. by such purpose; and These limitations can be summarised as follows: 4. displaying works of fine art that have been made public by I. Due to Public Order projection or similar means in order to explain a subject at scientific conferences or lectures. The rights granted to the authors shall not prevent a work from being The quotation must be made in a manifest way. In scientific used as evidence in the court or before other authorities, or from works, it is necessary to mention not only the name of the being the subject matter of police or criminal proceedings. work and the author, but also the passage from which the Photographs may be reproduced and distributed in any form by quoted part has been taken. official authorities or on their instructions due to public security or (6) Contents of newspapers: Notwithstanding anything contrary for judicial reasons without the author’s consent. to Article 15 of the Press Law, daily news and information Reserved are the provisions of the public law that prohibit putting communicated to the public by the press or radio may be freely quoted. a work into commercial circulation by any means, its performance or exploitation in any other form or that make them subject to Articles or features on social, political or economic issues permission or control. published in newspapers or journals may be freely quoted in their original or adapted form in other newspapers or journals II. Due to Public Interest and may be broadcast by radio or disseminated by any (1) Legislation and court decisions: The reproduction, other means, except where the right to quote them has been distribution, adaptation or exploitation in any other form of expressly reserved. Even where the right to quote is reserved, laws, by-laws, regulations, notifications, circulars and court it is permitted to abridge such articles and features as a press decisions that have been officially published or announced is review and to so quote, broadcast by radio or disseminate permitted. them in any other manner. (2) Speeches: The reproduction, public recitation or broadcasting In all such cases, mention must be made of the name, the by radio and distribution by any other means of speeches and issue and the date of the newspaper, the journal, the agency addresses made in the Grand National Assembly and at other and any other source from which the quotations have been official assemblies and congresses, in courts of law orat taken from, together with the name, the pseudonym or the public meetings, is permitted for the purpose of giving news mark of the author of the articles. and information. (7) News: It is permitted to record parts of an intellectual or Where the nature of the event or of the situation does not so artistic work on devices enabling the transmission of signs, require, the names of the speakers do not need to be cited. sounds and/or images in relation to current events, provided The right to reproduce or distribute speeches and addresses that this has the nature of news and does not exceed the for purposes other than those mentioned in the first paragraph limits of giving information. The reproduction, distribution, belongs to the author. performance and broadcast by devices such as radio and television of passages quoted in such a manner are free. This (3) Freedom to perform: Published works may be freely freedom may not be used in a way which may prejudice the performed in all educational institutions for the purpose of legal interests of the right holder or which may conflict with face-to-face education and without directly or indirectly the normal exploitation of the work. aiming to profit from such performance, provided that the name of the author and the work is announced in the III. Due to the Interest of Individuals customary manner. (1) Personal use: It is permitted to reproduce all intellectual (4) Selected and collected works for educational and and artistic works for personal use without pursuing profit. instructional purposes: It is permitted to create selected or However, such reproduction may not prejudice the legitimate collected works, which are dedicated to educational purposes, interests of right holders without good reason or if the by way of recording quotations, to the extent justified by reproduction is in conflict with the normal exploitation of the the purpose, from published musical, literary and scientific work. works and works of fine art that have been made public. In the absence of specific contractual provisions, the Certain works may only be quoted to explain the content of reproduction and adaptation of a computer program by the the selected and collected work. However, this freedom may lawful acquirer is permitted where necessary for the use not be used in a way which would prejudice the legitimate of the computer program in accordance with its intended interests of the author without good reason or which would purpose, including for error correction. conflict with the normal exploitation of the work.

The loading, running and error correction of a computer Public premises which are used for works, performances, program by a person who has lawfully acquired the program phonograms, productions and broadcasts shall be classified may not be prohibited by contract. The making of a backup accordingly. In order to classify such premises, the following copy by a person having the right to use the computer is taken into account: the characteristics of the region where program may not be prevented by contract insofar as it is the public premises are located; the quality and quantity of necessary to ensure the use of such program. the premises; and whether or not the works, performances, The person who has acquired the right to use a computer phonograms, productions and broadcasts that are the subject program may observe, analyse or test the functioning of of intellectual property are an integral part of, or contributing the program in order to determine the ideas and principles to, the product or services supplied by the premises and underlying any element of the program while performing any similar issues.

Turkey of the acts of loading, displaying, running, transmitting or storing the program which they are entitled to do. 5.5 Are interim or permanent injunctions available? Where reproduction of the code and translation of its form in the sense of reproduction and adaptation of the computer Upon the request of the person whose rights have been violated or program are indispensable to obtain the information necessary to achieve the interoperability of an independently created are under threat of violation or of the collecting societies, the civil computer program with other programs, the performance court may order the other party, before or after the commencement of of such acts shall be permitted, provided that the following the proceedings, to perform certain acts or refrain from performing conditions are met: them, to open or close the premises where the act is being committed, 1. the acts are performed by the licensee or by another or may as a precautionary measure confiscate the reproduced copies person having the right to use a copy of the program or by of a work or moulds and other similar devices and prevent the a person authorised to do so in their name; manufacturing of such copies, if such an order is deemed necessary 2. the information necessary to achieve interoperability for the prevention of a substantial injury or an instantaneous danger was not made available to the persons specified in based on accomplished facts or any other reason, and if the claims subparagraph one; and asserted are considered to be strongly probable. It shall be stated in 3. the acts are confined to the parts of the program which are the order that non-compliance with the order shall result in criminal necessary to achieve interoperability. consequences as provided in Article 343 of the Law on Execution The conditions listed above do not entitle the information and Bankruptcy. obtained to be: The provision of Article 57 of the Customs Law numbered 4458 1. used for purposes other than to achieve the interoperability shall be applied during the import or export of the copies, which of the independently created computer program; require sanctions in case an infringement of rights is likely to occur. 2. given to others, except where necessary for the The procedure regarding the seizure of such copies by the Customs interoperability of the independently created computer Authorities shall be implemented in accordance with the related program; and provisions of the Customs Regulation. 3. used for the development, production or marketing of a computer program substantially similar in its expression or for any other act which infringes copyright. 5.6 On what basis are damages or an account of profits calculated? The provisions listed above may not be interpreted in a way that conflicts with the normal exploitation of the program or that unreasonably prejudice the right holder’s legitimate The right holders whose permission was not obtained may claim interests. the payment of compensation of up to three times the amount that (2) Right of composers: Works of fine art permanently placed could have been demanded if the right had been granted by contract, on public streets, avenues or squares may be reproduced by or up to three times the current value, which shall be determined drawings, graphics, photographs and the like, distributed, under the provisions of Law No. 5846, from persons who adapt, shown by projection in public premises or broadcast by radio reproduce, perform or communicate to the public via devices or similar means. For architectural works, this freedom is enabling the transmission of signs, sounds and/or images of the only valid for the exterior form. work, performance, phonogram or productions, or who distribute Works of fine art may be publicly exhibited by their owners reproduced copies thereof without written permission of the author or by others with the owner’s consent, unless the author has under Law No. 5846. expressly prohibited such exhibition. Works to be sold by auction may be exhibited to the public. 5.7 What are the typical costs of infringement Works exhibited in public premises or placed at an auction proceedings and how long do they take? may be reproduced and distributed by way of catalogues, guides or similar printed matter published for such purposes by persons organising the exhibition or auction. A lawsuit filed for the determination of the fact that a copyright is infringed will cost approximately 3,000 TL. In the event that The name of the author may be omitted in such cases unless there is a contrary customary usage. compensation is claimed, an amount equal to 6.831% of the compensation shall also be paid. Such figure does not include the (3) Principles concerning the use of public premises for official attorney fees that must be paid by the party that could not works, performances, phonograms, productions and broadcasts: Public premises where the entrance may or may prove its claims. The official attorney fee for such a lawsuit is either not be subject to a fee, shall conclude a contract, in accordance a fixed fee amounting to 2,600 TL for a claim that does not include with Article 52 of the Law, with the right holders, or collecting any amount of money or a variable percentage of the amount societies to which the right holders are members, in order to claimed, which is around 10%. Depending on the complexity of obtain permission for the use and/or communication of works, the case, the trial at the first instance court will take approximately performances, phonograms, productions and broadcasts 18 months. and make the payments for economic rights stated in such contracts in accordance with this article.

Such criminal offences are listed under Article 71 of Law No. 5846, 5.8 Is there a right of appeal from a first instance whereas preparation actions, which aim at circumventing protective judgment and if so what are the grounds on which an programmes, are listed separately from such offences under Article appeal may be brought? 72 of the same law.

It is possible to appeal any first instance decision as long as the appellant has a judicial benefit to do so and the judgment is among 6.2 What is the threshold for criminal liability and what the type of decrees subject to appeal. The Turkish Court of Appeals are the potential sanctions? can reverse the decision of the court of first instance where: the law or the contract between the parties has been implemented The threshold for criminal liability in relation to the infringement incorrectly; there is a non-conformity with causes of action; the of the moral, economic or related rights regarding intellectual and Turkey evidences upon which either party is reliant on for proving the same artistic works are differentiated depending on the type of criminal have been rejected without any judicial cause; and any mistake on offence, which can be listed as follows: judicial proceeding or deficiencies that would affect the judgment. Any person who, by infringing the moral, economic, and related Obtaining an enforceable decision after the appeal may take an rights regarding intellectual and artistic works protected under Law additional 18 months. No. 5846: (i) adapts, performs, reproduces, changes, distributes, communicates to the public by devices enabling the transmission of signs, sounds or images or publishes a work, performance, 5.9 What is the period in which an action must be commenced? phonogram or production without written permission of right holders or puts up for sale, sells, distributes by renting or lending or in any other way, buys for commercial purposes, imports or exports, Depending on whether there is a contract between the author and possesses or stores for non-private use any works adapted or a third party that infringed the rights of the author, the statutory reproduced unlawfully shall be sentenced to imprisonment from one limitations for commencing an action varies. If the infringement in year and up to five years or a judicial fine; (ii) gives a title to another relation to Law No. 5846 is based on a contract, it would be subject person’s work as his own work shall be sentenced to imprisonment to the general statute of limitations provided by the Turkish Code from six months to two years or a judicial fine (where the offence of Obligations, which is 10 years beginning from the date when the is committed by distributing or publishing, the upper limit of the receivable of the author becomes due. In the event that there is no penalty of imprisonment shall be five years and no judicial fine contract between the parties and the infringement would constitute may be imposed); (iii) cites from a work without referring to the at the same time an action in tort, it will be subject to statute of source shall be sentenced to imprisonment from six months to limitations of two years (commencing from the date when the right two years or a judicial fine; (iv) makes a declaration to the public holder became aware of the damage and the indemnitor) and 10 without permission of the right holders concerning the content of years (beginning from the occurrence of the tortious act) as per the a work which has not yet been made public shall be sentenced to Turkish Code of Obligations Article 72. imprisonment of up to six months; (v) makes reference to a work in In the event an infringement of rights is subject to Law No. 5846 an incorrect, incomplete or misleading manner shall be sentenced constitutes at the same time a crime, a longer criminal statute of to imprisonment up to six months; and (vi) reproduces, distributes, limitation shall be applied. Please also note that receivables arising publishes or broadcasts a work, performance, phonogram or a from a contract for work are subject to a statute of limitation production by using the name of a well-known other person shall period of five years, except in circumstances where the contractor be sentenced to imprisonment from three months to one year or a did not perform its obligations duly or at all as a result of its gross judicial fine. negligence. Persons who commit the offences mentioned above or breach the These actions shall be filed with the competent courts of jurisdiction conditions mentioned in the additional Article 4 of Law No. 5846, where the defendant is resident or where the action in tort occurred. and content providers who continue to infringe the rights recognised Additionally, actions in relation to the prevention and removal of under Law No. 5846 shall be sentenced to imprisonment from infringement shall be filed with the competent court of jurisdiction three months to two years unless this act constitutes another crime where the plaintiff is resident. Pursuant to the Article 76 of the Law, requiring a greater penalty. (Additional Article 4 of Law No. 5846: competent courts for the lawsuits and works arising from the legal information which identifies the work, the author of the work, the transactions regulated under the Law and criminal suits are the holder of any right in the work or information about the terms and courts addressed in the Article 156 of the IP Law and pursuant to conditions of the use of the work, and any numbers or codes that this article of the IP Law, competent courts are the intellectual and represent such information which are attached to a copy of a work or industrial rights civil court and intellectual and industrial criminal appear in connection with the communication of a work to the public courts. may not be removed or altered. The originals or copies of the works on which the information and numbers or codes representing this 6 Criminal Offences information have been altered or removed may not be distributed, imported for distribution, broadcast or communicated to the public.) Where any person who puts up for sale, sells or buys a work, 6.1 Are there any criminal offences relating to copyright performance, phonogram or production, which was produced, infringement? adapted, reproduced, distributed or broadcasted illegally, provides information as to from whom he obtained such item and enables Since copyright is a type of economic right, criminal offences them to be captured before the prosecution process, the penalty to relating to the infringement of the moral, economic or related rights be imposed may be omitted or reduced. regarding intellectual and artistic works shall also be deemed to be Any person, who produces, puts up for sale, sells or possesses an infringement of a copyright. for non-private use programs and technical equipment which aim

to override programs which have been developed to prevent the illegal reproduction of a computer program shall be sentenced to 7.2 Are there any particularly noteworthy issues around imprisonment from six months to two years. the application and enforcement of copyright in relation to digital content (for example, when a work is deemed to be made available to the public online, 7 Current Developments hyperlinking, etc.)?

The author has the exclusive right to communicate the original 7.1 Have there been, or are there anticipated, any version of a work or its copies to the public via a broadcast by significant legislative changes or case law organisations which use wire or wireless means, such as radio, developments? Turkey television, satellite or cable, or by devices enabling the transmission of signs, sounds and/or images including digital transmission, or As mentioned above, the Industrial Property Law, numbered 6769 by way of re-broadcasting by other broadcasting organisations (“IP Law”), was published in Official Gazette number 29944 on that obtain the work from such broadcasters. There is no specific 10 January 2017, which reconciles provisions that were previously provision in relation to the timing of the disclosure of a work via addressed by different statutory decrees concerning the protection of digital transmission; however, in general, any work disclosed to industrial designs, geographic signs, patent rights and trademarks. the public with the consent of the right holder shall be deemed to The Draft Law amending Law No. 5846 on Intellectual and Artistic have been made public. In terms of hyperlinking, the rules of the Works (“Draft Law”) that has been in progress on since November Regulation on the Terms and Conditions Regarding the Arrangement of 2016 was recently made available to the public for review. of Broadcasts on the Internet provide that the content provider is According to presentations of the former Turkish Minister of not liable for hyperlinking, as long as the content provider does not Culture and Tourism, it was expected that the Draft Law was going approve the content it provides a hyperlink to or it does not direct to be finalised before the end of legislative year of 2017 and it was the user to reach the content through such hyperlink. going to be transferred to the Turkish Grand National Assembly In cases where authors and related rights holders granted by the Law (“TBMM”) in the second half of the year. No. 5846 have been violated by providers of service and content Please note that the Draft Law is currently under final evaluation through the transmission of signs, sounds, and/or images including of Ministry of Culture and Tourism (“Ministry”) and will be sent to digital transmission, the works which are subject of the violation Prime Ministry right after the completion of the process. However, shall, upon the application of the right holders, be removed from the Directorate General of Copyrights estimates that the envisaged the content providers. Individuals or legal entities whose rights process will be extended as a consequence of the change of Minister have been violated shall to this end initially make contact with the of Culture and Tourism on July 19, 2017 (Güner Law Office, Note content provider and request that the violating content be ceased on the Draft Law regarding Intellectual and Artistic Works Law No. within three days. 5846, 2 August 2017). Should the violation continue, a request shall next be made to the public prosecutor requiring that the service being provided to the violating content provider be suspended within three days by the relevant service provider. The service being provided to the content provider shall be restored, if the violating content is ceased.

Altuğ Güzeldere Didem Ataün Güzeldere & Balkan Law Firm Güzeldere & Balkan Law Firm İnönü Cad. Dilaram Apt. No.19/9-11 İnönü Cad. Dilaram Apt. No.19/9-11 Gümüşsuyu Taksim Gümüşsuyu Taksim İstanbul İstanbul Turkey Turkey

Tel: +90 212 244 84 94 Tel: +90 212 244 84 94 Email: [email protected] Email: [email protected] URL: www.guzeldere-law.com URL: www.guzeldere-law.com Turkey Mr. Güzeldere is the founding and managing partner of Güzeldere Ms. Ataün is a Partner at Güzeldere & Balkan Law Firm and has been & Balkan Law Firm. Through his career, he has advised a number with the firm since the beginning of 2013. She is dedicated to advising of local and foreign corporations and banks (including Citibank and a series of project finance, private equity, mergers and acquisitions the former Turk Sakura Bank) regarding various aspects of Turkish in the Turkish market involving Turkish and foreign capital. She also law, drafted and concluded numerous contracts, and consummated counsels for general corporate matters, contracts law, commercial several privatisation transactions (including the block sale of law, and competition law. Before joining Güzeldere & Balkan Law NETAS Northern Electronic Telekomunikasyon A.S.). He provided Firm, Ms. Ataün worked as a senior lawyer in reputable Turkish legal guidance for the establishment of hydroelectric power plants law firms, as assistant legal counsel to T. Garanti Bankası A.Ş. for (including Entek Elektrik Uretimi Otoproduktor Grubu A.S.), created its credit card issuer GÖSAŞ, and legal manager of UK-based and cross-border electrical energy sales and purchase agreements, LSE-listed multinational company owned by Doğan Holding A.Ş. participated in mergers (including certain aspects of the merger of BP Ms. Ataün served reputable banks and multinationals in their project and Mobil involving Turkish law), project financing (such as the Izmit financing, leverage financing, restructured financing, acquisition Bay Bridge Crossing Project), acquisitions (most recently, the sale of financing, and general loan matters including BayernLB AG, WestLB certain shares of Cimentas to Cementir), and a number of joint venture AG, Eurohypo AG (hypothec bank of Commerzbank AG), TSKB, Kibar projects. Having participated in the legal aspects of the incorporation Holding A.Ş., Assan Tüketici Finansmanı A.Ş., Doğan Holding A.Ş. of the television channel “atv”, Mr. Guzeldere acquired significant Hürriyet Gazetecilik ve Matbaacılık A.Ş., Viking International Limited, intellectual property, media and advertisement law experience as part Transatlantic, 3 Seas Capital Partners, Trendfinance (local agent of his duties at Pekin & Pekin Law Firm between 1992 and 1996. He of HSH Nordbank AG), Garanti Payment Systems, among others. has also undertaken the incorporation of subsidiaries, branches and Furthermore, Ms. Ataün has either headed or co-headed several M&A liaison offices for foreign investors, and drafted and reviewed a wide transactions covering a variety of sectors such as telecommunications, variety of contracts, such as bank loan, construction, joint-venture, consumer finance, steel, stainless steel, concrete pumps, automotive, and financing agreements. Mr. Güzeldere is at the same timethe construction, pest controlling, mining, media & entertainment, on-line continuous consultant and a member of the advisory board of Evyap and offline printing, among others. Holding A.S., one of the most well-known Turkish family holdings, being a leading global soap and personal care products manufacturer and also leader in Turkish market.

Güzeldere & Balkan Law Firm is an Istanbul-based law firm offering a wide range of legal services to domestic and international clients since its inception in May 2000. It is a full-service law firm which covers all major practices including Corporate and Commercial Law, Contracts Law, Mergers and Acquisitions, Competition Law, Construction Law, Real Estate, Labour Law, Media & Entertainment, Intellectual and Industrial Property, Copyright, Litigation, and Debt Collection. The well-equipped team of lawyers has impressive credentials from leading Turkish and international institutions, a wealth of experience across the spectrum of Turkish corporate and commercial law, and a client portfolio comprising leading Turkish and multinational corporations. Güzeldere & Balkan Law Firm offers expertise to its clients in the automotive, media and entertainment, fast-moving consumer goods, cosmetics, energy and natural resources, telecommunications, chemistry, and technology sectors, among others.

Ukraine

Gorodissky & Partners (Ukraine) Nina Moshynska

1 Copyright Subsistence 1.3 Is there a system for registration of copyright and if so what is the effect of registration?

1.1 What are the requirements for copyright to subsist in a work? Copyright can be registered with the State Intellectual Property Service of Ukraine in order to certify the existence and the date of publication of a work or a copyright agreement. An applicant should Copyright subsists in original works of authorship fixed in pay an official fee for the certificate of copyright registration in the some material form from its creation, without the requirement amount of approximately EUR 5.60 for legal entities and EUR 2 for for registration or any other formalities. Copyright protection individuals. A registered copyright serves as prima facie evidence covers both published and unpublished works, both complete of the validity of a copyright. and incomplete, irrespective of their purpose, genre, volume and purpose. Copyright does not protect any ideas, theories, principles, Registration of the copyright has a number of advantages: methods, procedures, processes, systems, techniques, conceptions ■ presumption of authorship, for instance in case of any and discoveries regardless of the form in which they are expressed, disputes; described, explained, and illustrated in the work. Copyright also ■ it confirms proprietary rights of the author, e.g. for conclusion protects a part of a work that can be used individually and the of licence and other agreements; original name of a work. ■ an advantage in the protection against piracy; and ■ an advantage for positive dispute resolution, etc. 1.2 On the presumption that copyright can arise in Alongside that, failing to register a copyright does not deprive a literary, artistic and musical works, are there any copyright owner of the right to enforce a copyright. Copyright other works in which copyright can subsist and are registration in Ukraine is voluntary. there any works which are excluded from copyright protection? 1.4 What is the duration of copyright protection? Does Copyright can also subsist, inter alia, in computer programs, this vary depending on the type of work? software, databases, compilations of works resulting from creative work and other works. Copyright begins from the date of creation; in other words, it begins Copyright legislation stipulates works that are excluded from when the work is fixed in some material form. The duration of copyright protection, including: copyright protection is 70 years after the death of an author or the death of the last co-author. The duration of performers’ rights is 50 A. daily news that refers to press information; years from the date of the first record of the performance. The duration B. folklore; of sound/video recordings producers’ rights is 50 years from the date C. administrative, political, or legislative documents executed of first publication of the sound/video recording or first record, if the by state authorities (laws, rulings, decrees judgments, state record was not published during this period. Broadcast organisations’ standards, etc.) and translations thereof; rights last 50 years from the first public transmission of the broadcast. D. state symbols, state awards, symbols and signs of authority, military forces, symbols of local authorities, symbols and signs of enterprises, organisations and institutions; 1.5 Is there any overlap between copyright and other intellectual property rights such as design rights and E. banknotes; and database rights? F. transport schedules, TV schedules, telephone directories and other databases that do not meet the requirement of sui- An overlap may take place between copyright and other intellectual generis. property rights. Such cases occur when a work has more than one Drafts of works mentioned in clauses D and E are protected by protection, e.g. it is protected by both copyright and trademark copyright before official approval. law, copyright and patent law (for example, a copyrighted image can be also registered as a device or respective three-dimensional trademark, etc.), provided that the work complies with the requirements of protection.

Therefore, if a work meets the requirements for copyright, it can each co-author has a right to use his part at his discretion unless subsist in other IP objects such as a design or database. At the same it is otherwise agreed. Copyright royalties are equal unless it is time, please note that based on Ukrainian laws, databases shall otherwise agreed. Each co-author has a right to bring proceedings enjoy legal protection as copyrighted works. for copyright infringement.

1.6 Are there any restrictions on the protection for 3 Exploitation copyright works which are made by an industrial process? 3.1 Are there any formalities which apply to the transfer/ If a work created by an industrial process meets the requirements for assignment of ownership? Ukraine copyright, it can be protected by copyright. No such restrictions are envisaged by the law. The owner of a copyright has a right to transfer/assign proprietary rights to any person. Copyright is transferred on the ground of a copyright agreement. The scope of rights that are subject to transfer 2 Ownership should be prescribed in the agreement; otherwise such rights are not transferred. The law does not prescribe any formalities which apply 2.1 Who is the first owner of copyright in each of the to the transfer/assignment of copyright. works protected (other than where questions 2.2 or 2.3 apply)? 3.2 Are there any formalities required for a copyright licence? The first owner of copyright is the author. If other circumstances are not proved by means of evidence, it is considered that the author A copyright licence is granted on the ground of a copyright licence is prima facie the person indicated on the original or sample of a agreement, which must be concluded in written form. A licence work. In some situations, two or more people may be joint authors can be exclusive or non-exclusive. An exclusive licence provides and joint owners of the copyright. For example, it is considered that that the copyright owner can use the copyrighted object in the scope the principal director, scriptwriter, production designer, author of of rights that are not transferred and cannot grant licences of the the music specially made for a film, or the director of photography same scope to the other persons. A non-exclusive licence provides together are the joint authors and first owners of the copyright in a that the copyright owner may use his copyrighted work and grant film. licences to other persons. A copyright licence agreement concerning the publication of work 2.2 Where a work is commissioned, how is ownership of in periodicals (newspapers, magazines, etc.) can be concluded in the copyright determined between the author and the verbal form. commissioner? Rights that are not valid at the moment of agreement cannot be subject to a copyright licence agreement. The scope of proprietary If a work is commissioned, proprietary rights are owned by rights that are subject to the licence should be specified in the the author and the commissioner jointly, unless it is otherwise agreement; otherwise, such rights are reserved by the licensor. prescribed by an agreement between them. Proprietary rights to an artistic work belong to the author, unless it is otherwise prescribed by an agreement between the author and the commissioner. 3.3 Are there any laws which limit the licence terms parties may agree (other than as addressed in Conversely, the moral rights accorded to authors of works remain questions 3.4 to 3.6)? with the author or pass to his or her heirs upon his or her death. No laws limit the licence terms which parties may agree. Meanwhile, 2.3 Where a work is created by an employee, how is parties should agree at least the following terms: the licence period; ownership of the copyright determined between the the ways the work may be used; the licence territory; the amount employee and the employer? and terms of a payment; and other terms upon request of a party. At the same time, the conditions of a licence agreement that affect the Proprietary rights to a work created by an employee belong to author’s rights compared to such granted by the laws can be proved the author and the employer jointly, unless it is otherwise agreed as void. in writing. The employer should pay to the employee an author’s remuneration for the creation and use of a copyright. The amount and terms of such payment are prescribed by an agreement between 3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)? the employee and the employer.

All types of copyright work and related rights have collective 2.4 Is there a concept of joint ownership and, if so, what licensing bodies. Currently, there are 18 collective licensing bodies, rules apply to dealings with a jointly owned work? namely the following: ■ Ukrainian Union of Copyright and Related Rights Owners Joint ownership arises if a single work is created by more than “Oberig”. one author. Relationships between co-authors can be regulated by ■ State Organisation “Ukrainian Agency of Copyrights and an agreement between them. Copyright to a jointly owned work Related Rights”. belongs to each author regardless of whether a jointly created ■ Enterprises Union “Ukrainian Musical Alliance”. work is inseparable or not. If a jointly owned work is inseparable, neither author can forbid the other to publish, amend or otherwise ■ Enterprises Union “Ukrainian League of Musical Works”. use a work. If a jointly owned work consists of independent parts, ■ Association “Musical Authors’ House”.

■ Ukrainian Public Organisation “The Author”. 5) versions, adaptations, arrangements and other similar ■ Association “Guild of Videograms and Phonograms alterations to works; Producers”. 6) inclusion of works as components into collections, databases, ■ Ukrainian Public Organisation “Ukrainian Agency of etc.; Copyright and Related Rights”. 7) distribution of originals of works by first sale or by transferring ■ Ukrainian Public Organisation “Ukrainian Agency of for property lease prior to the first sale of specimens of a Copyrights”. work; ■ Ukrainian Public Organisation “Agency of Protection of 8) general notification of the public of the works in sucha Performers’ Rights”. manner that the works can be accessed at any place and at any time at their own discretion;

Ukraine ■ Private Organisation “Collective Licensing Body for Copyrights and Related Rights”. 9) transfer for property lease and/or commercial rental after the first sale of the original or specimens of audiovisual works, ■ Ukrainian Public Organisation “CINEMA”. computer software, databases, musical works such as sheet ■ Ukrainian Public Organisation “Music Authors’ Treasury”. music, as well as works on a phonogram, videogram or in a ■ Ukrainian Public Organisation “Ukrainian Authors’ League”. computer-readable form; ■ Private Organisation “Ukrainian League of Copyrights and 10) importation of specimens of a work; and Related Rights”. 11) other acts. ■ Citizens Association Society “Film Managing Association “ARMA-Ukraine”. 4.2 Are there any ancillary rights related to copyright, ■ Ukrainian Public Organisation “Management of Intellectual such as moral rights, and if so what do they protect, Property”. and can they be waived or assigned? ■ Ukrainian Public Organisation “Ukrainian author’s service”. The author has the following moral rights related to copyright 3.5 Where there are collective licensing bodies, how are (personal non-proprietary rights): they regulated? 1) to require recognition of his authorship by indicating the author’s name on a work and its specimens and during any Collective licensing bodies should be registered with the State public use of the work, if practicable; Intellectual Property Service of Ukraine and act on the grounds of 2) to prohibit the mentioning of his name during a public use of their statutes and authorities entitled by copyright owners. Collective a work, if the author wishes to remain anonymous; licensing bodies cannot conduct commercial activity or use copyright 3) to choose a pseudonym or to indicate and require the objects entrusted by copyright owners. Authorities concerning indication of a pseudonym instead of the author’s real name management of copyright should be entrusted by copyright owners on a work and its specimens and during any public use on the grounds of a written agreement. Additionally, in the scope thereof; and as prescribed by the laws, the collective licensing bodies are 4) to require preservation of the integrity of a work, and to empowered by the laws to collect remuneration for the use of works counteract any twisting, distortion or other alteration of a of copyright and related rights, and further distribute it among the work, or any other encroachment thereon that may prejudice the author’s honour and reputation. owners of copyright and related rights. Collective licensing bodies can be entitled to provide non-exclusive licences, collect royalties, The author’s personal non-proprietary rights cannot be assigned to and bring civil actions on behalf of copyright owners. other persons and shall be protected in perpetuity.

3.6 On what grounds can licence terms offered by a 4.3 Are there circumstances in which a copyright owner collective licensing body be challenged? is unable to restrain subsequent dealings in works which have been put on the market with his consent? Licence terms can be challenged if a collective licensing body is not authorised by the copyright owner, or the licence terms offered If specimens of a lawfully published work are legally put on the by a collective licensing body overstep the powers granted by the market through their first sale in Ukraine, further sale, gift thereof, copyright owner. etc., they shall be allowed for further reselling without the consent of the author (or other copyright owner) and without remunerating the author, except for the leasing or commercial rental of such work. 4 Owners’ Rights In the case of transferring a work of fine art, the author shall be entitled to demand access to such a work for the purpose of using it for reproduction, provided that this does not prejudice the legitimate 4.1 What acts involving a copyright work are capable of being restricted by the rights holder? rights and interests of the owner of the work of fine art. Further, the owner of the work of fine art or art of architecture is The rights holder is entitled to restrict the following acts with regard not authorised to ruin the work without making a prior offer to to the copyright work: the author to purchase the work for the price equal to the price of 1) reproduction; materials used for its creation. In the case the ruining of the work is inevitable, the author has the right of access to the work with the 2) public performance, broadcast, demonstration and public purpose of taking its photo or other form of copy. After that, the display; author cannot prohibit the ruining of the work. 3) any repeated promulgation of works, if carried out by an organisation other than the one that carried out the first Further, the laws prescribe the following requirements as to the promulgation; subsequent dealings in audiovisual works: unless otherwise is 4) translations; prescribed by the agreements, authors/co-authors of audiovisual

work or its fragments that assigned proprietary rights to the For instance, the following uses of works of copyright are permitted producing organisation cannot object to further performance, or without obtaining the consent of the right owner, provided that the use in other ways, of the audiovisual work, except for prohibiting author’s name and the source of reference is duly indicated: the separate public performance of the musical works. Still, the 1. Free use of works for purposes other than commercial use: authors are entitled to remuneration for every subsequent use of the ■ use of quotations (excerpts) from published works to the audiovisual work. extent justified by the intended purpose; ■ use of literary works or works of art to the extent justified 5 Copyright Enforcement by the intended purpose as illustrations in publications, broadcasts and recordings of an educational nature; ■ reproduction in the press and carrying out public Ukraine 5.1 Are there any statutory enforcement agencies and, if performances or broadcast of previously published so, are they used by rights holders as an alternative newspaper or magazine articles provided that it has not to civil actions? been specially prohibited by the author; ■ reproduction with the purpose of presenting current events There is a number of agencies in Ukraine authorised with copyright to the extent justified by the informational purpose; law enforcement, namely: ■ reproduction of works displayed at exhibitions and other 1. police bodies which prosecute infringements that constitute fairs open to the public in catalogues for coverage of these administrative or criminal offences; events, without use of the catalogues for commercial purposes; 2. the bodies of the Antimonopoly Committee, which pursue infringements that constitute an act of unfair competition; ■ issuing of works for the blind, published in Braille and characters; 3. the State Inspectors of the State Intellectual Property Service ■ reproduction of works for court and administrative of Ukraine, which act on the matters of copyright enforcement proceedings, to the extent justified by this purpose; such as distribution, storage, transportation, and circulation ■ public performance of musical works during official and of the specimens of audiovisual works, computer software religious ceremonies and funerals, to the extent justified and databases. by the nature of these ceremonies; In our experience, police bodies act more effectively in cases related ■ reproduction for informational purposes in newspapers to copyright infringement. and other periodicals, and transmission by air or other broadcast of publicly delivered speeches, addresses, reports and other similar works, to the extent justified by 5.2 Other than the copyright owner, can anyone else bring the intended purpose; and a claim for infringement of the copyright in a work? ■ use of lawfully published works for the creation on their basis of other works in the literary, musical or other According to Ukrainian legislation, only copyright owners are parodies genre, caricatures or potpourri genres. entitled to bring a claim for copyright infringement. In certain 2. Reprographic reproduction by libraries and archives of non- cases, the collective management organisation (or other persons) commercial activities, if: may claim infringement on behalf of a copyright owner on the basis ■ reproduction is not performed on a regular basis, and and within the scope of the authorities contemplated by the power is made upon request of the private individual for non- of attorney or respective agreement. Further, based on practice, commercial purposes. This exception does not apply to provided that this is prescribed by the licence agreements, the computer software and databases; or licensees are able to bring the infringement claims on behalf of the ■ reproduction is performed with the aim of replacing or copyright owner. substituting other specimens of work which have been lost, damaged, or otherwise cannot be used, and if such a reproduction is a one-time event. 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, 3. Reproduction of excerpts of works for educational purposes on what basis can someone be liable for secondary and one-time (not regular) reprographic reproduction by infringement? educational establishments to the extent justified by the intended purpose. Primary and secondary infringements, as specific types of copyright 4. Use of computer software, if no damage is caused by the use infringement, are not determined in Ukrainian legislation. Thus, no of the software and the right-owner’s rights and legitimate actions explicitly related to primary or secondary infringement are interests are not violated by: available. ■ making changes in order to ensure its operation with the user’s technical equipment, including recording and An action for copyright infringement can be brought provided that storing such software in computer memory and correcting the fact of infringement is established according to the relevant laws. evident errors; It is possible that the fact of infringement, as specified by relevant ■ making one software copy for archival purposes; laws, may relate to secondary infringement. ■ decompiling the software with the aim of obtaining the information required for the achievement of its interaction 5.4 Are there any general or specific exceptions which with independently developed software; or can be relied upon as a defence to a claim of ■ studying software functioning. infringement? 5. Reproduction of works for private use, except for: ■ works of architecture (buildings and facilities); Ukrainian copyright law provides for a number of exceptions and ■ computer software, except in aforementioned cases; and limitations to the exclusive rights of the copyright owner.

■ reprographic reproduction of books, sheet music and Otherwise, compensation may be claimed instead of damages or original works of fine art, except for the use previously collection of profit. The compensation can be calculated on the mentioned. merits of an infringement and/or the intentions of the infringing 6. Reproduction of works and performances on phonograms, party. The amount of compensation should be no less than the videograms, audiovisual works and specimens thereof, at equivalent of approximately EUR 1,000 and should not exceed the home for private purposes or for use within the family circle, equivalent of approximately EUR 5,330,000. subject to remuneration of the author. The laws also provide for limitations of related rights, allowing certain uses of works without obtaining authorisation 5.7 What are the typical costs of infringement from the right-owners, but subject to payment of equitable proceedings and how long do they take?

Ukraine remuneration, such as: ■ use of excerpts; The amount of state fees for submitting the civil claim on the grounds of copyright infringement depends on the nature and ■ use for informative purposes, training, or scientific amount of stated claims, as well as on the chosen court (general research; jurisdiction court or commercial court). The state fees are paid for ■ private use; and each stated claim. ■ public performance, broadcasting and cable broadcasting for commercial purposes, of phonograms and videograms In the case of monetary claims, the state fees amount to 1 or 1.5 per published for commercial use. cent of the claimed amount. The state fees for non-monetary claims amount to approximately EUR 20 to EUR 60. Additional state fees are paid for applying for injunctions, submitting 5.5 Are interim or permanent injunctions available? appeal or second appeal and certain other actions related to court proceedings. Ukrainian copyright legislation provides for interim injunctions that may be applied by the court upon the plaintiff’s solicitation prior to There are no fees for bringing the administrative or the criminal or immediately after the claim is submitted. action on the ground of copyright infringement, in the case of enforcement before the Antimonopoly Committee or application to The interim injunctions may include: the State Inspector of Intellectual Property. ■ an order for inspection of the premises of the alleged location The civil proceeding in the court takes approx. from six months to of the infringing activities; one year in the first instance court, from two to four months in the ■ the arrest and taking into protective custody the specimen of appeal court, and from two to four months in the cassation appeal possible counterfeit works, materials and equipment used for court. unauthorised manufacturing or reproduction of works; ■ the arrest and taking into custody of documents that may The criminal proceeding takes approximately from three months to serve as evidence of copyright infringement or actions one year. creating such an infringement (or intention to infringe); The administrative proceeding as well as the proceeding before the ■ an order to prohibit certain activities of the suspected party, Antimonopoly Committee bodies takes up to six months. such as manufacturing, reproduction, sale, rental, importation, The proceeding before the State Inspector of Intellectual Property etc. of specimen of work, as well as transportation, storage, takes up to three months with possible further administrative action etc. of specimen of works for the purpose of issuing into civil before the court. turnover (may be applied by the general jurisdiction court upon the plaintiff’s solicitation prior to or immediately after the claim is submitted and may be applied by the commercial 5.8 Is there a right of appeal from a first instance court upon the plaintiff’s solicitation after the claim is judgment and if so what are the grounds on which an submitted); and appeal may be brought? ■ in the case the copyright infringement may invoke administrative or criminal liability, the state authority In the case of disagreement with the rendered decision (i.e. if the (investigative body or the court) may issue an order for the rendered decision is not considered well-grounded and/or lawful), search and arrest of specimens of possibly counterfeit works, appeal can be submitted by the party of the proceeding or any party materials and equipment used for unauthorised manufacturing whose rights and interests are determined by the rendered decision. or reproduction of works, or documents that may serve as evidence of copyright infringement. The court accepts the appeal for consideration if all procedural Permanent injunctions can be granted by a final decision of the requirements, as to its submission and content, are duly met. court, such as orders to do or cease from doing certain activities; for The second appeal can be submitted in the case of disagreement with instance, prohibiting unauthorised publishing, performance, staging the rendered decision of the first instance and/or appeal courts. The of works, making the specimen of works, their distribution, etc. ground for submitting the second appeal is claimed non-conformity of the rendered decision with the substantive and/or procedural laws.

5.6 On what basis are damages or an account of profits The third appeal to the Supreme Court of Ukraine can be submitted calculated? only in cases where: ■ there is non-conformity in applying the same laws by the Proprietary and non-proprietary damages are calculated with due court and this results in rendering sufficiently different regard to the merits of an infringement, the damages suffered by the decisions on similar matters; or rights owner, and the estimated income that could have been earned ■ the rendered decision violates the international obligations by this person. Additionally, the damages may include the state fees of Ukraine, when the relevant international judicial body and other court expenses of the rights-owner. establishes such a fact. As an alternative, the right-owner may request the collection of Please note that the judicial reform commenced in Ukraine in profits from the infringer derived from the copyright infringement. 2016. According to it, the specialised court for intellectual property

matters should be established within the three years’ time. Decisions of such a court will be appealed in the Supreme Court only with no 7 Current Developments possibility of filing second appeals. 7.1 Have there been, or are there anticipated, any significant legislative changes or case law 5.9 What is the period in which an action must be developments? commenced?

The period in which civil action can be commenced is three years On 1 June 2016, the Cabinet of Ministers of Ukraine adopted the from the date of the infringement. It is calculated from the date ‘Concept for reforming the intellectual property system’ which, among other things, envisages creation of the National Agency for

when the person became aware, or should have become aware, of Ukraine the fact of infringement of his rights. intellectual property and adoption changes to IP Laws during the course of 2016–2017. The subject of reorganisation of the Ukrainian The period for bringing an action on the ground of unfair competition intellectual property system is currently in progress. is six months from the date when the person became aware of the fact of infringement. On 3 June 2016, the Parliament of Ukraine adopted a law on reforming the judicial system of Ukraine. The reform provides for The decision for administrative action on the ground of copyright establishing the High Court on Intellectual Property Issues as a court infringement can be rendered within three months from the date of of the first instance for copyright, trademark and patent disputes. commencement of the administrative violation, and in the case of Judicial decisions will be reviewed in the specialised court of appeal repeated violation, from the date of detection of the administrative within the chamber of the Supreme Court of Ukraine. The noted violation. judicial reform is currently in progress. It should be completed The period for commencement of a criminal action may vary within three years. from two to 10 years, depending on the gravity of the crime, and According to amendments made to copyright legislation in 2016, is calculated from the date of the crime’s commencement until the the terms such as parody, caricature and potpourri (fantasia) have date of the verdict. been introduced. Now, the use of lawfully published works for the In certain cases, the extension or renewal of specified periods is creation on the noted works does not require the copyright owner’s possible. authorisation and does not prescribe obligation to payment of remuneration to the copyright owner. 6 Criminal Offences 7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in 6.1 Are there any criminal offences relating to copyright relation to digital content (for example, when a work infringement? is deemed to be made available to the public online, hyperlinking, etc.)? Illegal reproduction, distribution or other illegal use of a work protected by copyright can be defined as a crime according to the Ukrainian copyright legislation does not contain specific provisions Criminal Code of Ukraine. with regard to copyright in relation to digital content. Placement of works on the Internet which are available for public use is regarded as reproduction thereof, and according to the provisions of the 6.2 What is the threshold for criminal liability and what effective copyright legislation, such reproduction can be prohibited are the potential sanctions? by the copyright owner of such works.

Criminal liability occurs in cases where copyright infringement The main issues related to the enforcement of copyright in the causes damages in the amount of at least the equivalent of digital environment concern the technical possibility of providing approximately EUR 560. enforcement authorities with relevant and legal evidence of the fact of copyright infringement, as well as identification of the person The penalty for such illegal actions can be a fine from the equivalent responsible for such infringement (owner of the website). of approximately EUR 120 to approximately EUR 1,800, correctional works for up to two years or imprisonment for up to Confidential information on the individual that is the owner of six years. If such illegal actions are committed by an official, such the respective domain name can be disclosed according to a court sanctions as deprivation of right to hold certain positions or perform request only. certain activities for the period of three years of without such right It is worthy to mention here the law “On the State Support of can be additionally applied. Cinematography in Ukraine” adopted by Verkhovna Rada (to be If damages caused by copyright infringement are lower than signed by the President in order for the changes to take effect), the equivalent of approximately EUR 560, an administrative which provides for the “notice & takedown” procedure, i.e. request responsibility occurs. to stop copyright and related rights infringement on the Internet on the basis of the copyright owner’s notification issued to the owner The penalty for such administrative offence is a fine of the equivalent of a website or web page. The stipulated procedure will only be of approximately EUR 10 to approximately EUR 120 and the applied in respect to the following copyright objects: music; confiscation of goods, tools and equipment used in the production audiovisual works; computer programs; videograms; phonograms; of the goods. and media broadcasts (programmes).

Nina Moshynska Gorodissky & Partners (Ukraine) 25, V. Chornovola Str, Office 227 Kyiv 01135 Ukraine

Tel: +380 44 2784 958 Fax: +380 44 27968 96 Email: [email protected] URL: www.gorodissky.ua Ukraine Nina Moshynska, а Ukrainian patent and trademark attorney, is a founder and a managing partner in Ukraine of Gorodissky & Partners. Ms. Moshynska has extensive practice and experience in patent matters, trademark proceedings and copyright, and also counsels clients on issues related to infringement of intellectual property owners’ rights, licensing and unfair competition. She frequently attends and delivers speeches at IP seminars and conferences in Ukraine and abroad. Ms. Moshynska is a founder, the first President and a member of the Ukrainian Association of Patent Attorneys, Ukrainian Chamber of Commerce and Industry, International Association for the Protection of Intellectual Property, the International Trademark Association, the Licensing Executives Society International, the Association of European Trade Mark Owners and the AEA International Lawyers Network. For many years, her expertise has been highly appreciated by recognised annual rankings such as Best Lawyers, The International Who’s Who of Trademark Lawyers, World Trademark Review 1000, The Legal 500, Corporate INTL, Global Law Experts and Leaders in Law. Moreover, IP Stars and WIPR Leaders ranked Ms. Moshynska as one of the best experts in the categories of patent disputes and patent prosecution, and as one of best and remarkable Ukrainian IP protection professionals.

Gorodissky & Partners (Ukraine) is a full-service intellectual property law firm established in 2000. Gorodissky & Partners has been consistently ranked as one of the best firms in Ukraine in the field of IP rights protection in annual international surveys conducted by Managing Intellectual Property. IP Stars recognised the firm among the leaders in such categories as trademark contentious and trademark prosecution. According to the World Trademark Review 1000, it is among the leading Ukrainian firms providing trademark protection services. The patent/trademark attorneys and IP lawyers of Gorodissky & Partners provide a full range of services in the field of intellectual property, including inventions, trademarks, designs, utility models, copyright, computer programs, domain names, litigation, franchising, licensing, etc. The clients of Gorodissky & Partners range from major domestic, foreign and international companies to small and medium-sized businesses, as well as individuals. The patent/trademark attorneys and IP lawyers of Gorodissky & Partners are members of the International Association for the Protection of Intellectual Property, the International Trademark Association, the Licensing Executives Society International, the Association of European Trade Mark Owners, the Ukrainian Association of Patent Attorneys, the Ukrainian Chamber of Commerce and Industry and the AEA International Lawyers Network.

United Kingdom Rebecca O’Kelly-Gillard

Bird & Bird LLP Phil Sherrell

1 Copyright Subsistence 1.4 What is the duration of copyright protection? Does this vary depending on the type of work?

1.1 What are the requirements for copyright to subsist in a work? In general, the terms of protection in the UK are as follows: ■ Copyright in a literary, dramatic, musical or artistic work For copyright to subsist: lasts for the life of the author plus 70 years from the end of the calendar year in which the author dies. ■ literary, dramatic, musical and artistic works must comply with the criterion of originality, i.e. the work must originate ■ Copyright in computer-generated literary, dramatic, musical from its author and must not be copied from another work. or artistic works lasts 50 years from the end of the calendar This does not mean that the work must be the expression of year in which the work was made. original or inventive thought; the originality required relates ■ Copyright in a film expires 70 years after the end ofthe to the expression of the thought and is not a subjective test calendar year in which the death occurs of the last to survive regarding the ‘artistic’ originality or novelty. The standard of of the principal director, the authors of the screenplay and originality is low and depends on the author having created dialogue, and the composer of any music specifically created the work through his own skill, judgment and individual for the film. effort, and not having copied from other works; ■ Copyright in a sound recording expires 50 years from the end ■ the work must be fixed, i.e. recorded in writing or in some of the calendar year in which the recording is made; or if, other material form; and during that period, the recording is published, 70 years from ■ the work must meet UK qualification requirements, either the end of the calendar year in which it was first published; through the nationality of its author or through its place of or if, during that period, the recording is not published but is first publication. played or communicated in public, 70 years from the end of the calendar year in which it was first so made available. ■ Copyright in a broadcast expires 50 years from the end of the 1.2 On the presumption that copyright can arise in calendar year in which the broadcast was made. literary, artistic and musical works, are there any ■ Copyright in the typographical arrangement of a published other works in which copyright can subsist and are there any works which are excluded from copyright edition expires at the end of the period of 25 years from protection? the end of the calendar year in which the edition was first published. Copyright can also subsist in the following works: dramatic (e.g. plays, dance); typographical arrangements of published editions 1.5 Is there any overlap between copyright and other (e.g. magazines, periodicals); sound recordings (which may be intellectual property rights such as design rights and recordings of other copyright works, e.g. musical and literary); database rights? films; and broadcasts. Some works are also covered by other intellectual property rights in Computer programs are protected as literary works. However, addition to copyright, e.g. 3-D and other designs can be protected copyright protects the expression of an idea, not the idea itself, by design rights; a database may be protected by the sui generis therefore, certain forms may not carry copyright protection, e.g. the database right (this is intended to protect and reward investment functionality, programming language and interfaces (such as data in the creation and arrangement of databases); and a logo can also file formats) of computer programs are not protected by copyright to potentially be protected by a trade mark. the extent that they are not contained in the software’s source code (which is the written expression in which copyright can subsist). 1.6 Are there any restrictions on the protection for copyright works which are made by an industrial 1.3 Is there a system for registration of copyright and if process? so what is the effect of registration? No. Until recently in the UK, where articles embodying a copyright No, copyright subsists automatically. work were made with the copyright owner’s consent by means of an

industrial process, and had been marketed, the work could be copied agree otherwise in writing. No further formalities are required and without infringing copyright in the work 25 years after those articles the employee has no rights to subsequent compensation. were first marketed. A work is regarded as made by an industrial process if it is one of more than 50 articles made as copies of a work 2.4 Is there a concept of joint ownership and, if so, what (this can include miniature replicas of a work). New legislation in rules apply to dealings with a jointly owned work? 2016 repealed this provision in the UK with effect from 28 July 2016 so that all artistic works, whether or not made by industrial Yes. A work will be of joint authorship if it is produced by the process, now benefit from copyright protection for the life of the collaboration of two or more authors in which the contribution of author plus 70 years. In addition, the transitional period ended on 28 each author is not distinct from that of the other author or authors. January 2017, after which date any work created in reliance on the If the contribution is distinct then separate copyrights will subsist in old section, and which does not fall within an exception to copyright each author’s respective parts of the work. law, must be destroyed or authorised by the rightsholder.

United Kingdom A joint author will have individual rights that they can assign independently of the other author or authors. However, a joint 2 Ownership owner cannot grant a licence which is binding on the other co- owners, nor can a joint owner grant an exclusive licence.

2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 3 Exploitation 2.3 apply)?

The author, i.e. the person who creates the work, is usually the first 3.1 Are there any formalities which apply to the transfer/ owner of copyright in that work. The presumption is that the author assignment of ownership? will be: ■ the person who creates a work for literary, dramatic, musical Copyright is transmissible by assignment, by testamentary or artistic works; disposition or by operation of law, as personal or movable property. ■ the producer of a sound recording; The only formal requirements for an assignment of copyright are ■ the producer and the principal director of a film; that it is in writing and signed by or on behalf of the assignor. The terms of the assignment (and how they are expressed) are entirely at ■ the publisher of a published edition; the discretion of the contracting parties. ■ the person making a broadcast or effecting a retransmission of a broadcast; An assignment or other transfer of copyright may be partial, that is, limited so as to apply to one or more, but not all, of the acts ■ the publisher of a typographical arrangement; and the copyright owner has the exclusive right to do; and can be in ■ the person making the arrangements necessary for the relation to part or the whole of the period for which the copyright creation of the work for computer-generated works. is to subsist. However, this may be amended by agreement. For example, it is possible for someone who would ordinarily be deemed to be the copyright owner to assign the benefit of future copyright, even prior 3.2 Are there any formalities required for a copyright licence? to that work having been created.

Unlike an assignment, a licence of copyright need not be in writing 2.2 Where a work is commissioned, how is ownership of nor comply with particular formalities and may, therefore, be oral the copyright determined between the author and the or implied. However, in order to obtain the statutory rights of commissioner? an exclusive licensee, e.g. the right to sue third party infringers, an exclusive licence must be recorded in writing signed by or on Copyright will belong to the author of the work (i.e. the person behalf of the licensor. If an exclusive licence is not in writing, the commissioned), unless there is an agreement to the contrary licensee will only have a contractual right to use the copyright, not assigning the copyright and which is signed by the commissioned to enforce it. party, e.g. in a services contract. However, where a work has been commissioned and there is no express assignment of the copyright to the commissioner or licence to the commissioner to use the work, 3.3 Are there any laws which limit the licence terms the courts have often been willing to imply a contractual term that parties may agree (other than as addressed in questions 3.4 to 3.6)? copyright should be licensed to the commissioner for the use that was envisaged when the work was commissioned. Occasionally, the court will even assign the copyright to the commissioner. The Please see the answers to questions 2.4 and 4.2. extent of any implied licence will depend on the facts of any given case, but generally the licence will only be that necessary to meet 3.4 Which types of copyright work have collective the needs of the commissioner. licensing bodies (please name the relevant bodies)?

2.3 Where a work is created by an employee, how is There are numerous collecting societies in existence in the UK, ownership of the copyright determined between the including: employee and the employer? ■ the Performing Rights Society (PRS), which administers the public performance rights (including in relation to broadcasts, If a work is produced as part of an employee’s employment, the streaming services, and non-theatrical performances) of first owner will automatically be the company that employs the authors, composers and music publishers in musical works; individual who created the work, unless the employee and employer

■ the Mechanical-Copyright Protection Society (MCPS), ■ renting or lending the work to the public; which administers the reproduction rights (e.g. in relation ■ performing, showing or playing the work in public; to CDs, digital downloads and musical toys) of songwriters, ■ communicating the work to the public; and composers and music publishers (PRS and MCPS operate jointly as PRS for Music); ■ adapting the work. ■ Phonographic Performance Ltd (PPL), which administers the The copyright owner can restrict these acts in relation to the whole public performance rights of producers in sound recordings; or any substantial part of the work. ■ NLA Media Access (formerly the Newspaper Licensing The courts have shown that they are willing to find intermediary Agency), which administers the reproduction rights of service providers (ISPs) liable for primary copyright infringement newspaper and some magazine publishers in articles; where they have infringed the exclusive right of copyright owners ■ the Copyright Licensing Agency (CLA), which administers to authorise any of the above acts, most notably where ISPs have the reproduction rights of authors and publishers in literary authorised the copying of works or making them available to the

and artistic works; public. United Kingdom ■ the Authors’ Licensing and Collecting Society (ALCS), The courts have also shown a willingness to use common law which administers various rights of authors in literary and principles to protect the rights of copyright owners. For example: dramatic works; and ■ parties have been found to infringe copyright where they act ■ the Design and Artists Copyright Society (DACS) and the in a common design with each other to induce others to do Artists’ Collecting Society (ACS), which administer rights in any of the above infringing acts; and artistic works (including resale rights). ■ recent case law has also found that where website operators or service providers provide the key means by which 3.5 Where there are collective licensing bodies, how are copyright can be infringed, and they know or intend for their they regulated? service to be used for that purpose, they can be held to be joint tortfeasors with those who actually do the infringing act. Collecting societies are regulated by the Collective Management of Copyright (EU Directive) Regulations 2016. They are also subject 4.2 Are there any ancillary rights related to copyright, to the supervision of the Copyright Tribunal in relation to licensing such as moral rights, and if so what do they protect, terms. and can they be waived or assigned?

3.6 On what grounds can licence terms offered by a There are a number of ancillary rights associated with the creation collective licensing body be challenged? of copyright works, the most common of which are: ■ Moral rights: the author or director of a copyright work A reference in respect of the terms of a proposed licensing scheme usually has moral rights in relation to the work. These are may be made to the Copyright Tribunal by an organisation claiming the rights to: i) be identified as the work’s author or director; to be representative of persons claiming that they require licences ii) object to derogatory treatment of the work; iii) privacy in under the proposed scheme. A licensee may also refer to the respect of certain photographs and films; and iv) not have the work’s authorship wrongly attributed. These rights may be Copyright Tribunal the terms on which a licensing body proposes waived by the author or director but not assigned. The first to grant a licence to it. A reference to the Copyright Tribunal in three rights have the same duration as copyright, but the right respect of the terms of an existing licence scheme may be brought to object to false attribution lasts for the author’s or director’s by a person claiming that he requires a licence under it, or an lifetime plus 20 years. organisation claiming to be representative of such persons. ■ Performers’ rights: performers have various rights in their The primary grounds of challenge which the Copyright Tribunal can performances, as well as in the recordings or broadcasts of consider are that the terms are unreasonable or discriminate unfairly their performances. between licensees. ■ Publication right: the publication right grants rights In addition, a person can make an application to the Copyright equivalent to copyright to a person who publishes for the first Tribunal where an operator of a scheme has unreasonably refused to time a literary, dramatic, musical or artistic work, or a film in which copyright has expired. grant a licence under that scheme. In addition to copyright claims, the Collective Management of Copyright (EU Directive) Regulations 2016 require copyright 4.3 Are there circumstances in which a copyright owner licensing bodies to make available alternative dispute resolution is unable to restrain subsequent dealings in works which have been put on the market with his consent? procedures in relation to any breach of the Regulations, except in relation to tariffs. The doctrine of exhaustion of rights provides that once copies of a copyright work are issued to the public in one EEA Member 4 Owners’ Rights State with the owner’s consent, the owner cannot object to their circulation anywhere else within the EEA. The courts have held that the principle does not apply to subsequent/back-up copies of digital 4.1 What acts involving a copyright work are capable of works. In those cases it appears that the copyright owner’s rights being restricted by the rights holder? would only be exhausted in relation to the original digital version placed on the market. Copyright holders have the exclusive right to do or authorise the following: ■ copying the work; ■ issuing copies of the work to the public;

To be liable for secondary acts of infringement, the secondary 5 Copyright Enforcement infringer must have some actual or imputed knowledge of the primary infringement of the copyright work. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative 5.4 Are there any general or specific exceptions which to civil actions? can be relied upon as a defence to a claim of infringement? HMRC is the UK customs authority responsible for national policy governing IP rights enforcement at the UK external border. In certain A number of provisions of the CDPA permit various activities which circumstances, HMRC (and Border Force, the law enforcement would otherwise be infringements of copyright in literary, dramatic command within the Home Office responsible for carrying out the or musical works. frontier interventions that implement this policy) are empowered to

United Kingdom The most common exceptions relate to: detain goods that may infringe intellectual property rights such as copyright. There are two regimes in existence, one governed by ■ temporary copies technically required to enable a lawful use; European Regulations and the other by purely domestic legislation. ■ fair dealing, including the use of copyright works for the The two regimes, which are mutually exclusive, are as follows: purpose of: ■ Regulation (EU) No 608/2013 (in force in the UK since 1 ■ news reporting; January 2014), which regulates pirated goods infringing ■ parody, caricature of pastiche; and copyright; and ■ quotation; ■ Section 111 of CDPA 1988, which permits the owner of ■ incidental inclusion; copyright in certain types of works to lodge a notice with HMRC stating their ownership of copyright in a work and ■ educational use; requesting infringing copies be treated as prohibited goods. ■ use in libraries, Trading Standards officers in the UK are also under a statutory duty ■ archives and public administration; to enforce copyright and have the powers, among others, to make ■ works permanently situated in public places; test purchases of infringing goods, to enter premises and to inspect ■ the making of digital copies by various institutions; and seize goods and documents which infringe. ■ text and data mining; The City of London Police and the UK Intellectual Property ■ making copies accessible to disabled people; Office have also set up the Police Intellectual Property Crime ■ further exceptions for the purpose of research or private Unit (PIPCU) to tackle serious and organised intellectual property study; crime (counterfeit and piracy) affecting physical and digital goods ■ public interest; and (with the exception of pharmaceutical goods). PIPCU’s focus is ■ copying for the visually impaired. on offences committed online. PIPCU is an independent, national enforcement unit designed to protect and enforce existing rights. There is currently no private copying exception under UK law.

5.2 Other than the copyright owner, can anyone else bring 5.5 Are interim or permanent injunctions available? a claim for infringement of the copyright in a work? Yes, both interim and permanent injunctions are available, as are Yes, an exclusive licensee has the same rights and remedies, in “site-blocking injunctions” (orders against ISPs to prevent access to respect of matters that occur after the exclusive licence was granted, websites held to infringe copyright). as if the licence had been an assignment. This statutory position can be modified by contract. 5.6 On what basis are damages or an account of profits A non-exclusive licensee can also bring a claim for infringement, calculated? although only in limited circumstances; specifically, if the infringement is directly connected to an act which the licensee had Damages are calculated so as to put the claimant in the position been licensed to carry out under the licence, and the licence is in it would have been in if the infringing act had not occurred. This writing, signed by the copyright owner, and expressly grants the is often based on what would have been a reasonable licence fee non-exclusive licensee a right of action. had the copyright owner entered into an arm’s length licence with the party found to infringe the copyright. An account of profits 5.3 Can an action be brought against ‘secondary’ is calculated so as to make the defendant forfeit to the copyright infringers as well as primary infringers and, if so, owner the profits made as a result of the infringing act. A successful on what basis can someone be liable for secondary claimant must elect one of the two remedies. In the event that the infringement? infringement has been particularly flagrant, the copyright owner will be able to claim punitive damages in addition to the basic amount. Yes, a person will be liable for secondary infringement of copyright if they do or authorise any of the following: 5.7 What are the typical costs of infringement ■ import an infringing copy; proceedings and how long do they take? ■ possess or deal with an infringing copy; ■ provide means for making infringing copies; The traditional forum for IP litigation at first instance in the UK ■ permit the use of premises for an infringing performance; and is the High Court. Costs can vary from £250,000–£1 million per side (depending on the complexity of the claims at issue) to take an ■ provide apparatus for an infringing performance. action to trial, and the winner can usually expect to recover about

two-thirds of its actual costs from the loser. The typical time for a ■ communicating a work to the public in the course of a case to be heard at the High Court is about 12–15 months, and with business or in such a way as to prejudicially affect the an appeal within a further 12–18 months. copyright owner; Infringement proceedings can also be brought in the Intellectual ■ causing an infringing public performance of a literary, Property and Enterprise Court (IPEC) in which court procedures dramatic or musical work; are simplified to make the cost of actions significantly lower: recent ■ causing an infringing public showing of a sound recording or experience has shown that typical costs are of the order of £75,000– film; and £200,000 per side, although costs recovery by the winner is limited ■ circumventing technological measures or removing or to a maximum of £50,000. The typical time for a case to be heard is altering electronic rights management information or dealing 8–12 months in the IPEC. in devices meant for that purpose.

6.2 What is the threshold for criminal liability and what

5.8 Is there a right of appeal from a first instance United Kingdom judgment and if so what are the grounds on which an are the potential sanctions? appeal may be brought? Infringements carried out with knowledge and intent for a Yes, the appeal court will allow an appeal where the decision of the commercial purpose can attract criminal liability; there is no lower court was one of the below: criminal liability where a protected work is copied but not made ■ Wrong (which is presumed to mean: an error of law; or available for commercial sale or hire. an error of fact; or an error in the exercise of the court’s Criminal remedies apply in parallel with civil remedies, and discretion). offences carry varying levels of possible punishment including fines ■ Unjust because of a serious procedural or other irregularity in and/or imprisonment with, in certain cases, a maximum term of the proceedings in the lower court. imprisonment of 10 years. Criminal sanctions for online copyright infringement have recently been brought in line with those for physical infringement (i.e. to increase the sanction from a maximum 5.9 What is the period in which an action must be commenced? two-year imprisonment to a maximum of 10 years’ imprisonment).

The limitation period for bringing a copyright infringement claim 7 Current Developments in the UK is six years from the date when the cause of action arose.

7.1 Have there been, or are there anticipated, any 6 Criminal Offences significant legislative changes or case law developments?

6.1 Are there any criminal offences relating to copyright The most significant developments in caselaw have been in the infringement? CJEU cases on hyperlinking, referred to in Chapter 1. The High Court has continued to develop its jurisprudence in relation to site- There are various criminal offences in respect of copyright blocking injunctions, which were most recently extended to the live infringement, including: blocking of sports streaming sites (see FAPL v BT [2017] EWHC ■ making an infringing article for sale or hire; 480 Ch). ■ importing an infringing article into the UK other than for It is unclear how the UK referendum decision to leave the EU will private and domestic use; affect copyright in the UK, and in particular how many of the EU’s ■ possessing an infringing article in the course of business with Digital Single Market reforms will be implemented in the UK prior a view to committing any act infringing copyright; to departure. ■ selling, letting for hire, offering/exposing for sale or hire, exhibiting in public, or distributing an infringing article in the course of business; 7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in ■ distributing an infringing article not in the course of business relation to digital content (for example, when a work but to such an extent as to prejudice the copyright owner, for is deemed to be made available to the public online, example, a large number of infringing copies are given away hyperlinking, etc.)? free, therefore affecting the copyright owner’s revenue; ■ making/possessing an article specifically designed for See Chapter 1, Communication to the Public: the Only Right Worth making copies of a copyright work; Talking About?

Rebecca O’Kelly-Gillard Phil Sherrell Bird & Bird LLP Bird & Bird LLP 12 New Fetter Lane 12 New Fetter Lane London, EC4A 1JP London, EC4A 1JP United Kingdom United Kingdom

Tel: +44 20 7415 6000 Tel: +44 20 7415 6000 Email: [email protected] Email: [email protected] URL: www.twobirds.com URL: www.twobirds.com

Rebecca is a senior associate in Bird & Bird’s intellectual property Phil is a partner at Bird & Bird specialising in IP/media litigation, and department. She was admitted to the New York Bar in 2005, qualified heads the firm’s Media, Entertainment & Sports sector. He hasa

United Kingdom as an Irish solicitor in 2007 and was admitted to the roll of solicitors of particular focus on copyright work. England and Wales in October 2012. Phil has handled several Copyright Tribunal cases in relation to the Rebecca has represented major ISPs in litigation brought by the licensing of music and newspaper content, including representing recorded music industry relating to peer-2-peer music downloading the media monitoring industry in the well-known Meltwater dispute. and the blocking of Pirate Bay websites. Rebecca has also worked He also advises a wide range of clients on other copyright law extensively with customs authorities in relation to counterfeit goods related issues, including content owners and licensees in the music, on behalf of numerous global media, clothing, automotive, and food & publishing, broadcast and advertising industries. drink organisations. As a result of this work, Rebecca was invited to Phil is ranked as a leading individual for Media & Entertainment in the be the Irish liaison between rightsholders and international customs Chambers UK 2017 Guide. authorities in the initial phase of the World Customs Organisations’ innovative Interface Public-Members Tool project. More recently, Rebecca has acted in numerous actions involving copyright infringement relating to broadcasting sports events in pubs around the UK and in relation to infringing activity online.

USA Roberta L. Horton

Arnold & Porter Kaye Scholer LLP Michael Kientzle

1 Copyright Subsistence 1.3 Is there a system for registration of copyright and if so what is the effect of registration?

1.1 What are the requirements for copyright to subsist in a work? The U.S. Copyright Office affords a system of registration online at https://www.copyright.gov/. The copyright filing fee is $35.00 USD for one work by a single author who is also the claimant No formalities are necessary for copyright to exist in a work. provided that the work is not made for hire. Otherwise, the filing Copyright arises as soon as an author “puts pen to paper”, that is, fee is $55.00 USD. The registration dates back to the filing date as soon as any original work is “fixed in any tangible medium of of the copyright application if the application, deposit and filing expression”. 17 U.S.C. § 102. The threshold for originality is very fee are all acceptable. Although the Copyright Office examines low. the application, the examination process is not as exhaustive as the In general, copyright protection in the United States is governed by trademark examination process at the U.S. Patent and Trademark the U.S. Copyright Act, 17 U.S.C. §§ 101 et seq., effective January 1, Office. Indeed, the infrequent refusals are usually based upon those 1978. Some works are still governed by the former U.S. Copyright submissions that do not meet low originality thresholds. Act of 1909. In addition, U.S. copyright law changed to some extent Although a copyright registration is not necessary for protection to when the United States became signatory to the international Berne adhere, it does provide important advantages to the copyright owner: Convention in 1989. In general, a copyright registration is necessary for a copyright owner to file a copyright infringement suit (or for a litigant to file a 1.2 On the presumption that copyright can arise in counterclaim of infringement) in the United States. Note, however, literary, artistic and musical works, are there any that an applicant whose copyright application is refused registration other works in which copyright can subsist and are may also bring a suit for infringement, as long as the applicant there any works which are excluded from copyright protection? services notice upon the Register of Copyrights. Limited exceptions to this registration prerequisite include: actions for violations of artists’ rights (see question 4.2); actions by owners of foreign works; The U.S. Copyright Act, 17 U.S.C. § 102, lists the following suits for declarations of copyright ownership; and actions under the categories of works of authorship that may be subject to copyright Digital Millennium Copyright Act (see question 4.2). protection: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and Aside from the ability to bring suit, the principal benefit of sculptural works; motion pictures and other audiovisual works; and registration – depending upon the timing of that registration – is the architectural works. copyright owner’s potential to collect statutory damages pursuant to Section 504 of the Copyright Act. Such damages may be Copyright in other types of works is limited. Among other things, significant and much easier for a copyright plaintiff to obtain than a third party may generally make and use a photograph, drawing or actual damages, as the plaintiff need not show such damages. See other pictorial representation of an architectural work if that work discussion in question 5.6. is visible from a public place. 17 U.S. C. § 120(a). As discussed in question 1.5, limited copyright protection is accorded to industrial Other benefits to copyright registration, if made within five years of designs such as semiconductor chips and vessel hulls. first publication of the work, include a prima facie evidence of the validity of the copyright and the facts that the registration certificate Notably, several categories of items are not subject to copyright states. In addition, registration provides constructive notice of protection. Specifically, mere ideas are not copyrightable; nor are copyright transfers and priority against any subsequent transfers of ideas that may only be expressed in a limited amount of ways (this is copyright. considered the “merger” of ideas and expression). In addition, mere facts that are not arranged or selected in any creative matter is not subject to copyright protection. See Feist Publications, Inc. v. Rural 1.4 What is the duration of copyright protection? Does Telephone Service Co., Inc., 499 U.S. 340, 363-364, 111 S. Ct. 1282 this vary depending on the type of work? (1991) (names, towns and telephone numbers of utility’s subscribers were uncopyrightable facts). The duration of a copyright may depend upon whether or not the work was published; whether or not it bore the requisite notice; and whether or not the copyright was renewed in the work.

General Principle: Assuming any requisite formalities (including, if necessary, notice and renewal) were met, all works copyrighted on 1.6 Are there any restrictions on the protection for or after 1924 are still under copyright protection. (This is calculated copyright works which are made by an industrial process? 95 years from first publication of a work for hire – the longest conceivable period, or 95 + 1924 = 2019.) Only humans can be “authors” of works for the purposes of U.S. Works created on or after January 1, 1978 (the effective date of the copyright law, although courts have indicated that divinely-inspired 1976 Copyright Act), the following rules apply: works, fixed by humans, can be copyrightable. Humans may use ■ A work created by an individual author (natural person): Life tools and industrial processes to create works, which are only of the author plus 70 years.

USA entitled to copyright protection if they reflect a sufficient level of ■ For joint authors, life of the last surviving author plus 70 originality. Conversely, works created by forces of nature or works years. that are randomly-generated (such as a random series of numbers) ■ A work made for hire: Either 95 years from first publication are not copyrightable. or 120 years from creation, whichever expires first. The position that only humans may be authors has been litigated ■ An anonymous or pseudonymous work: Also 95 years from recently. See Naruto v. Slater, Case No. 15-cv-04324-WHO, first publication or 120 years from creation, whichever 2016 WL 362231 (N.D. Cal. Jan. 28, 2016), in which People for expires first. If the identity of one or more authors is revealed the Ethical Treatment of Animals (PETA) sued a photographer on in a registration record, that period converts to the life of the (last surviving) author plus 70 years. behalf of the monkey “Naruto”, claiming that the photographer had infringed Naruto’s copyright in a “selfie” photograph taken Works created before 1978: Assessing the length of protection for by Naruto with the photographer’s camera. The court dismissed a copyrighted work created prior to the effective date of the 1976 the infringement claim, finding that only humans could be authors. statute is more complex; it is governed under the 1909 Copyright PETA appealed to the U.S. Court of Appeals for the Ninth Circuit. Act: After argument on appeal, in August 2017, the parties jointly moved ■ A work published with valid notice: A total of 95 years from for a stay in view of settlement negotiations. when statutory copyright is obtained (aggregating an initial term of 28 years and a renewal term of 67 years, unless not renewed, in which case copyright protection would be lost in 2 Ownership the 28th year of the copyright). ■ A work published under the author’s authority without proper notice, which notice was not cured, lost copyright protection 2.1 Who is the first owner of copyright in each of the and was injected into the public domain. works protected (other than where questions 2.2 or 2.3 apply)? ■ Curing of notice: Works published without notice between January 1, 1978 and March 1, 1989 could be “rescued” from the public domain in certain cases if affixed with The author(s) of a U.S. work are the initial owners of the copyright. proper notice in that interval. See 17 U.S.C. § 405(a). Initial ownership of a foreign work, on the other hand, may be ■ A work “created but not published or copyrighted before governed by the laws of the country of origin. See 17 U.S.C.A. § January 1, 1978” (17 U.S.C. § 303): In general, duration is 104(b) (initial owner of restored works “determined by the law of measured by the 1976 Act rules, although: the source country of the work”); Itar-Tass Russian News Agency v. ■ the copyright expired, if the term specified in the 1976 Act Russian Kurier, Inc., 153 F.3d 82, 89-90 (2d Cir. 1998) (applying had already expired; and choice-of-law principles to determine the law governing ownership). ■ if the work was published between 1978 and 2002, the The U.S. government may not itself hold a copyright as an initial copyright will not expire until December 31, 2047. matter, but it may obtain copyright ownership by assignment. ■ “Rescue” of a foreign work non-compliant with U.S. formalities: Certain works penned by foreign authors are 2.2 Where a work is commissioned, how is ownership of restored to copyright protection even with notice defects if the copyright determined between the author and the they were still eligible for copyright protection in their home commissioner? countries, pursuant to certain international agreements.

Under the 1976 Act, a commissioned work, or “work made for hire”, 1.5 Is there any overlap between copyright and other may arise in two ways: (1) as a work made by an employee within intellectual property rights such as design rights and the scope of employment, with the employer generally owning the database rights? copyright (see question 2.3); or (2) pursuant to a written work made for hire agreement executed before creation, but only as to works in Under the Semiconductor Chip Protection Act of 1984, copyright the following categories: contributions to collective works; parts of protection in semiconductor chips adheres, but only on a limited motion pictures or audiovisual works; translations; supplementary basis: the copyright in the chip must be registered within two years works (commentary prepared as an adjunct to a publication written of its first commercial exploitation, and protection endures for only by a third party); compilations; instructional texts; tests and answer 10 years. Copyright protection in the design of vessel hulls is also material for tests; and atlases. limited; protection only applies to those designs reflected in actual In the 1909 Act era, the case law generally held that, for vessel hulls publicly exhibited, distributed, on sale or sold since commissioned works, the commissioned party had presumptively October 28, 1998. agreed to convey not only the work, but also the copyright in Electronic databases are considered compilations subject to the work, to the party hiring the work to be created, unless the copyright protection. The aspects of a database that may be commissioned party reserved the copyright. protected by copyright are therefore similar to other compilations – The owner of a work made for hire holds the copyright for its full the author is protected in his or her selection of data, and the way in duration. Conversely, a licensee or assignee is subject to a narrow which he or she arranges the data.

five-year reversionary period in which that grant may be terminated (notwithstanding any agreement to the contrary). 3.2 Are there any formalities required for a copyright licence?

2.3 Where a work is created by an employee, how is Although an exclusive licence must be written and signed by the ownership of the copyright determined between the copyright owner, a nonexclusive licence need not be in writing. Nor employee and the employer? does a conveyance by “operation of law”, 17 U.S.C. §204(a), that, although not defined, may be construed to mean by will, bankruptcy, In the seminal case CCNV v. Reid, 490 U.S. 730 (1989), the U.S. merger, dissolution, foreclosure, and the like. Supreme Court held that the courts must apply general common law agency principles in determining whether a work is prepared by an The law on implied licences, particularly in the Internet context, is USA employee or independent contractor. If the author is an employee still in flux. Historically, an implied licence generally existed only and creates the work within the scope of his or her employment, when the licensee requested that the work be created and that the then the work is a work for hire, with the copyright owned by the licensor provided the work to the licensee. More recently, some employer; conversely, if the author is an independent contractor, cases held, in the Internet context, an unrelated party could obtain then the work may only be treated as a work for hire if there is a an implied licence based on the copyright holder’s knowing failure written agreement to treat it as such and the work falls within one of to object to the use of his or her work, while other decisions hold the statutory categories discussed in question 2.2. that where the Internet visitor has not requested permission to use the work, and the copyright holder and Internet visitor have no Comment: an agreement may thus include language stating that, if interaction, no implied licence exists. Earlier this year, an appellate not considered a work for hire, the creator assigns the copyright in court held that to establish an implied licence, a party need show: the work to the commissioning party. the licensee requested the creation of the work; the creator not only made the work but also delivered it to the licensee requesting 2.4 Is there a concept of joint ownership and, if so, what it; and the licensor intended that the licensee copy and distribute rules apply to dealings with a jointly owned work? the work. Muhammad-Ali v. Final Call, Inc., 832 F.3d 755, 762 (7th Cir. 21016) (the newspaper did not have the implied licence Pursuant to the 1976 Act, a joint ownership arises when two or more to copyrighted portrait where it did not commission portrait and authors prepare a work intending that their independent contributions portrait was not delivered to it). be one whole work. A joint work may also arise, among other things, if a copyright owner conveys her right to multiple persons, 3.3 Are there any laws which limit the licence terms either during her lifetime or through her will or intestate succession. parties may agree (other than as addressed in Although most authorities require that an author make some tangible questions 3.4 to 3.6)? contribution to a work to be considered a joint owner, at least one case has held that the contribution of ideas to a joint work may be Sections 203 and 304 of the Copyright Act provide a “termination sufficient. Gaiman et al. v. Mcfarlane et al., 360 F.3d 644 (7th Cir. right” that permits the grantor of any copyright interest (including 2004). both licences and assignments) the ability to terminate its grant after Absent an agreement to the contrary among joint owners, each a certain period of time. Section 203 applies to all grants made by individual owner has the right to grant non-exclusive licences in the the author of the work on or after January 1, 1978, and provides a work to third parties. If a joint owner wishes to convey an exclusive termination right that may be exercised during the five-year window licence, however, all joint owners must convey the same, exclusive beginning 35 years after the first grant of the right or publication grant for the licence to be effective. of the work, whichever is earlier. Section 304 applies to any grant made prior to January 1, 1978, and provides a five-year termination window beginning on the date the copyright was secured or 3 Exploitation beginning on January 1, 1978, whichever is later. Both of these sections provide that the termination of the grant 3.1 Are there any formalities which apply to the transfer/ may be effected “notwithstanding any agreement to the contrary”, assignment of ownership? and therefore are generally understood not to be waivable. The legislative history of Section 203, however, includes a House Report Under the 1976 Act, a copyright assignment must be in writing, stating that Section 203 would not prevent the parties to any grant signed by the copyright owner or his “authorised agent”, although from agreeing to terminate a grant voluntarily so that they may enter it need not be notarised. Conveyances “by operation of law” (with into a new agreement, thereby causing a new 35-year period to start this phrase being undefined) under the 1976 Act need not bein running. writing. In view of the ESIGN Act (15 U.S. Code § 7001 et seq.), electronic signatures likely suffice. See, e.g., Metro. Reg’l Info. 3.4 Which types of copyright work have collective Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591, 600-03 licensing bodies (please name the relevant bodies)? (4th Cir. 2013). There is some debate, however, as to the type of conduct that qualifies as an electronic signature. Books, Journals, Magazines: The Copyright Clearance Center The country of origin determines whether a written notice is (CCC) provides global licensing for works including academic necessary for assignment of copyrights in restored foreign works. journals, newspapers, blogs, and e-books. The CCC offers an The prior transferee must record the copyright assignment within “Annual Copyright Licence” that covers a broad range of works for one month from the time of its execution in the United States or two a fee. Although the scope of its licence may be broad, the CCC does months from the time of its execution outside the United States, or not have the right to license all published works. at any time before recordation in such manner of the later transfer to Broadcast Television: The Copyright Royalty Board is a be effective against a subsequent transferee. government agency within the Copyright Office that is responsible

for administering numerous statutory licences, including licences that permit cable service operators and satellite carriers to retransmit 4 Owners’ Rights over-the-air broadcast signals without securing a licence from the owners of the copyrights in the programmes or music embodied in 4.1 What acts involving a copyright work are capable of he broadcast signal. being restricted by the rights holder? Musical Compositions: The right to make a new recording (i.e. using new musicians and engineers) of a musical composition owned by Under Section 106 of the 1976 Copyright Act, a copyright owner another party is described as the “mechanical right”. The Harry has the exclusive right to: Fox Agency licenses the right to reproduce and distribute musical (1) reproduce the copyrighted work; USA compositions on behalf of most owners of mechanical rights. (2) prepare derivate works of the copyrighted work (adapt it to Three separate entities are broadly responsible for licensing the other forms, such as creating a movie from a play); right publicly to perform such works on behalf of most musical (3) publicly distribute copies or phonorecords of the copyrighted composers: the American Society of Composers, Authors and work; Publishers (ASCAP); Broadcast Music, Inc. (BMI); and the Society (4) perform the copyrighted work publicly, if that work is of European Stage Authors and Composers (SESAC). The latter, a literary, musical, dramatic, or choreographic work, a established in 1930, licenses public performances of more than pantomime, a motion picture, or other audiovisual work; 400,000 songs. (5) display publicly the copyrighted work, if that work is Motion Pictures: The Motion Picture Licensing Corporation (MPLC) a literary, musical, dramatic, choreographic work, a licenses the right publically to perform motion pictures on behalf of pantomime, a pictorial work, a graphic work, or a sculptural over 1,000 motion picture studios and producers. For instance, a work (including individual images of motion picture or other audiovisual works); and licence from the MPLC may permit an entity like a public library to host a public viewing of the library’s copy of The Godfather. The (6) if the work is a sound recording, to perform it publicly through a digital audio transmission, with sound recordings Copyright Clearance Center, discussed above, also provides certain fixed before February 15, 1972 protected by state law. licences to motion pictures and other audiovisual works. Section 602 of the 1976 Act also gives copyright owners the right Sound Recordings: SoundExchange collects and distributes royalties to bar importation of copies of their works. The U.S. Supreme paid pursuant to the statutory licence that permits certain Internet Court held this right limited, however, in Quality King Distrib., services to stream sound recordings. The Copyright Clearance Inc. v. L’Anza Research Int’l, Inc., 523 U.S. 135 (1998): subsequent Center, discussed above, also licenses sound recordings. purchasers of copies of a work may, in spite of the Section 602 bar, Visual Works of Art: The Artists Rights Society and VAGA provide import those copies under the “first sale” doctrine, discussed below copyright clearance and licensing services on behalf of visual artists in question 4.3. and, in VAGA’s case, also photographers.

4.2 Are there any ancillary rights related to copyright, 3.5 Where there are collective licensing bodies, how are such as moral rights, and if so what do they protect, they regulated? and can they be waived or assigned?

ASCAP and BMI operate subject to antitrust consent decrees Although U.S. law does not recognise moral rights per se, Section entered in 1941, which limit their ability to modify the public 106A of the 1976 Act affords some protection to creators of visual performance licences they offer. The purpose of these decrees is arts. These include the right of attribution and the right to prevent to balance the potential antitrust concerns posed by collectively deliberate mutilation, distortion, or other changes to the work licensing large numbers of musical works that may otherwise that would prejudice the artist’s reputation, and to prevent the compete with one another with the benefits – including ease of use destruction of the work of “recognized stature”. The right may not – provided by competitive licensing. The Antitrust Division of the be transferred, but the artist may waive it. This right survives only United States Department of Justice has the principal responsibility until the artist’s death. for administering these consent decrees.

Other than ASCAP and BMI, the collective licensing bodies in the 4.3 Are there circumstances in which a copyright owner United States are generally unregulated. is unable to restrain subsequent dealings in works The Copyright Royalty Board sets rates for compulsory licences which have been put on the market with his consent? mandated under the Copyright Act, and distributes certain of the royalties collected pursuant to those licences. Decisions of the A main restraint on a copyright owner’s control over subsequent use Copyright Royalty Board may be appealed to the United States Court of his or her work lies in the “first sale” doctrine. Under Section 109 of Appeals for the D.C. Circuit. Judges on the Copyright Royalty of the 1976 Act, the owner of a specific copy of work may dispose of Board are appointed to terms of varying duration by the Librarian of that copy without the copyright owner’s permission. The doctrine Congress, after consultation with the Register of Copyrights. does not extend to rental or leasing of computer programs for profit. The first sale doctrine does not mean that, when an author sells a copy of her work, she parts with the copyright in that work. As 3.6 On what grounds can licence terms offered by a noted in question 4.1, the first sale doctrine constitutes an exception collective licensing body be challenged? to the ban on unauthorised imports. The United States District Court for the Southern District of New The doctrine aims to prevent double recoveries, i.e., once a creator York is responsible for enforcing the consent decrees under which has reaped the benefits of selling or otherwise disposing of a copy BMI and ASCAP operate, and challenges to the terms of the consent of her work, she may not obtain the same benefit by restraining its decree (or the Department of Justice’s interpretation of those terms) further distribution without additional compensation. may be brought there.

Additionally, the 1976 Act and accompanying regulations include exceptions allowing third parties to make educational uses of 5.4 Are there any general or specific exceptions which copyrighted materials. The Act also permits libraries to make can be relied upon as a defence to a claim of infringement? archival uses of copyrighted works belonging to others. See 17 U.S.C. § 108. Further, the statute includes other limitations on a copyright owner’s exclusive rights, such as compulsory licences The “fair use” defence, codified under 17 U.S.C. § 107, permits for reproduction and distribution of phonorecords of nondramatic limited use of copyrighted material without the user acquiring musical works (id. § 115); reproduction, performance, and display permission from the rights holder, typically where the user is of nondramatic musical works, as well as pictorial, graphic and engaged in commentary, criticism, or parody of the work, or is sculptural works, by public broadcasting entities (id. § 118(b) using the work for a limited, educational purpose. In assessing the USA (4)); and the digital transmission of certain subscription and availability of this defence, the courts generally look to four factors: nonsubscription digital audio (id. § 114(d)). 1. the purpose of the use (including whether it is “transformative”, meaning adding new elements that Finally, defences such as the fair use defence may restrain an change the nature of the work, either visually or with social author’s ability to control subsequent dealings of her work in the commentary); marketplace. See question 5.4. 2. the nature of the copyrighted work (i.e., whether it is highly original and thus more protected, or merely factual); 5 Copyright Enforcement 3. the amount of the work used by the defendant; and 4. the effect upon the market for the work caused by the defendant’s use. 5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative Other defences may include statute of limitations (see question 5.9) to civil actions? and the equitable defences of laches, acquiescence and estoppel. While not technically a defence available to the general public, The U.S. legal system offers no specific statutory enforcement internet service providers may benefit from Section 512 of the agencies for copyright owners. Copyright owners may, however, Copyright Act, the Digital Millennium Copyright Act (DMCA). record their copyrights – provided those copyrights are registered The DMCA provides several “safe harbors” for certain categories with the Copyright Office – with U.S. Customs and Border of Internet service providers. A complete description of these safe Protection (CBP). Acting pursuant to 19 C.F.R. §133.31 et seq. harbors is beyond the scope of this chapter. Perhaps the most well- of the U.S. regulations, CBP should then act to detect and seize known safe harbor applies to service providers who store content infringing items. CBP seizes, among other infringing goods, on their systems or networks at the direction of their users. Under counterfeits as they pass into the United States from abroad. CBP the DMCA, these service providers are immune from liability will inform the copyright owner of the seizure and may destroy for copyright infringement by reason of the storage of infringing the goods. As a practical matter, although the agency may be very content on their systems or networks at the direction of their users effective in policing infringing imports, CBP’s detection is not an so long as they comply with several requirements of the DMCA, absolute net, and some goods may pass into the States undetected. including removing any infringing content from their systems or networks if they are notified of its presence by the copyright owner or otherwise become aware of it. 5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work? 5.5 Are interim or permanent injunctions available? Only a person or entity with a copyright ownership interest may sue for infringement of that ownership interest. An exclusive licensee In civil cases, U.S. courts may grant a preliminary injunction and/ (as opposed to a non-exclusive licensee) has standing to sue for or a permanent injunction ordering the copyright defendant to cease the rights for which it has an exclusive licence. When a copyright use of the copyrighted work. The civil injunctive remedies are set owner grants to a third party an exclusive licence, that third party forth in 17 U.S.C. §502 (preliminary and permanent injunctions) has the right to sue for subsequent infringements. and §503 (impoundment and disposition of infringing articles). While the elements of establishing a claim for preliminary relief are essentially the same across the U.S. Circuit courts, those courts 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, articulate them somewhat differently. on what basis can someone be liable for secondary infringement? 5.6 On what basis are damages or an account of profits calculated? A party may be held secondarily liable for copyright infringement under two broad doctrines: (1) contributory infringement; and (2) In civil cases, a copyright holder may “elect” to recover actual vicarious liability. In either case, it is necessary to demonstrate that damages and any additional profits of the infringer or statutory an underlying act of direct infringement occurred. damages, if available. 17 U.S.C. §504. With respect to actual Liability for contributory infringement arises when an individual damages, §504(b) states that in establishing the infringer’s profits, (1) has knowledge of another’s infringement, and (2) either (a) the copyright owner need only give proof of the infringer’s gross materially contributes to it, or (b) induces that infringement. See, revenue. The infringer must show deductible expenses and profits e.g., Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657, at 671 (9th attributable to factors other than the copyrighted work. Attorneys’ Cir. 2017). fees may be available to the prevailing party, at the court’s discretion. Vicarious liability for infringement arises when an individual (1) has Statutory damages are only available in certain situations when the the right and ability to supervise the infringing conduct, and (2) a copyright holder (a) registered its work before the infringement direct financial interest in the infringing activity. Id. at 673. occurred, or (b) registered its work within three months of publication

of the work. See 17 U.S.C. §§411, 412(2). (A limited exception exists for suits by an author for violations of the rights of attribution 5.9 What is the period in which an action must be and integrity under 17 U.S.C. §106A(a), for which registration prior commenced? to suit is not necessary.) Statutory damages may range from $750 to $30,000 per work infringed. If the defendant proves that it was not Under 15 U.S.C. § 507, a civil action must be brought within three aware her actions constituted copyright infringement, damages may years of when the cause of action accrues, while a criminal action be reduced to $200 per work infringed. On the other hand, if the must be brought within five years of accrual. Pursuant to the plaintiff proves willfulness, damages may be increased to $150,000 “separate-accrual rule”, each new act of infringement gives rise to a per work infringed. separate claim that accrues. Petrella v. Metro Goldwyn-Mayer, 134

USA S. Ct. 1962, 1969, 1976 (2014). Although a copyright plaintiff does not recover damages for periods prior to the three-year look-back, 5.7 What are the typical costs of infringement the plaintiff is, if successful, entitled to prospective injunctive relief. proceedings and how long do they take?

In U.S. copyright litigation, there is no standard yardstick for 6 Criminal Offences litigation costs. A preliminary injunction proceeding that involves U.S. discovery and a hearing may cost more than $100,000, particularly if expert witnesses are involved. 6.1 Are there any criminal offences relating to copyright infringement? Should a case proceed to a full length trial in most jurisdictions, the litigation may last years and cost more than $1 million. Criminal prosecutions for copyright-related crimes are rare in the Even a case in the famous “Rocket Docket” (such as the U.S. District United States; however, there are a number of copyright-related acts Court for the Eastern District of Virginia), which may proceed to that are technically subject to criminal prosecution. These sections trial in under a year, may cost hundreds of thousands of dollars to in highlight the most common criminal copyright issues, but are not excess of $1 million. intended to be exhaustive. Although U.S. law does not subscribe to the “loser pays” system Criminal copyright offences in the United States focus primarily on for awarding attorneys’ fees, such fees are available to a prevailing acts that infringe the author’s reproduction and distribution rights. party in certain situations. See 17 U.S.C. § 505 (allowing for (See discussion in question 6.2). Violations of other rights, such as award of costs, and of attorneys’ fees to prevailing party). The the performance right, may also be subject to criminal penalties if U.S. Supreme Court ruled in 2016 that the most important factor the violation is wilful and for the purpose of profit or commercial in determining whether to award attorney’s fees is the “objective advantage. reasonableness” of the losing party’s position. Kirtsaeng v. John In addition to criminal infringement, criminal penalties may also Wiley & Sons, Inc., 136 S.Ct. 1979 (2016). The court may also apply to the fraudulent use of the “©” copyright notice, or the consider litigation misconduct, or whether a party is frequently fraudulent destruction or removal of the “©” from another’s being sued for infringement (or frequently bringing losing copyright work. Additionally, it is a crime in the United States to make claims). an unauthorised recording of a motion picture or a live musical performance. Finally, if a copyright owner utilises a label, 5.8 Is there a right of appeal from a first instance certificate, licensing document or similar device to mark its genuine judgment and if so what are the grounds on which an goods, it is a crime to use such device in connection with the sale of appeal may be brought? an unauthorised copy of the copyright owner’s work.

A losing party in a copyright case may appeal in federal court, generally in the circuit in which the district court action was 6.2 What is the threshold for criminal liability and what are the potential sanctions? litigated. Note, however, that copyright claims accompanying patent claims must be appealed to the U.S. Court of Appeals for To be held criminally liable for the unauthorised reproduction the Federal Circuit. See, e.g., Jacobsen v. Katzer, 535 F.3d 1373, or distribution of a copyrighted work, the government must 1377 (Fed. Cir. 2008); see also 28 U.S.C. § 1295(a)(1) (exclusive demonstrate the infringement was wilful and was: jurisdiction in Federal Circuit for patent appeals) . a. for the purpose of commercial advantage or private financial A reviewing court will apply a de novo standard to legal findings and gain; a clear error standard to factual findings. b. by the reproduction or distribution, in a 180-day period, of With respect to damages (and profits), actual damages are evidently one or more works having a total retail value of more than subject to review for abuse of discretion. Statutory damages awards $1,000; or may be subject to this standard of review also, although some courts c. by the distribution of a work being prepared for commercial have held that “so long as the trial court’s statutory damages award distribution, by making it available on a computer network falls within the statute’s prescribed limits, our review of such award accessible to members of the public, if such person knew ‘is even more deferential than abuse of discretion’”. Broad. Music, or should have known that the work was intended for Inc. v. Crocodile Rock Corp., 634 F. App’x 884, 886 (3d Cir. 2015) commercial distribution (citation omitted). If the government proves the elements listed in section c, or demonstrates that the defendant reproduced or distributed at least 10 works having a total value of at least $2,500 within a 180-day period, the infringement is a felony carrying a potential punishment of up to five years’ imprisonment and a $250,000 fine. All other cases are treated as misdemeanours, for which the maximum term of imprisonment is one year.

held that visual designs on certain cheerleading costumes could be 7 Current Developments protectable, and also observing that the U.S. Supreme Court had decided to take up the case. The U.S. Supreme Court has now 7.1 Have there been, or are there anticipated, any affirmed that decision in Star Athletics, LLC v. Varsity Brands, significant legislative changes or case law Inc., 137 S.Ct. 1002 (2017). Specifically, at issue was a suit by developments? a manufacturer of cheerleading uniforms against a competitor for allegedly infringing the copyrighted designs of its uniforms. This year saw cases of first impression, a U.S. Supreme Court Answering the plaintiff’s rallying cry, the Court found the plaintiff’s decision examining the criteria for discerning between a lines, chevrons, and colourful shapes in its uniform design elements copyrightable design and a mere “useful article”, and an amusing protectable. The Court interpreted Section 101 of the Copyright Act, USA fair use case. which affords limited protection to “pictorial, graphic, or sculptural Cases of First Impression features” of the “design of a useful article”. Such elements are only copyrightable, the Court emphasised, where they would constitute Failure To Plead Domestic Copyright Infringement Held Not a two-dimensional or three-dimensional work of art extracted, or Jurisdictional Defect. In Geophysical Service, Inc. v. TGS- separable, from a useful article (such as the cheerleading garments NOPEC Geophysical Co., 850 F.3d 785 (5th Cir. 2017), the themselves), and would comprise a pictorial, graphic, or sculptural U.S. Court of Appeals for the Fifth Circuit examined a novel work on its own or fixed in another tangible medium of if imagined jurisdictional question, as well as complex international law separated from the useful article. Interestingly, the Court abrogated questions. There, a Canadian company in the seismic data field a recent appellate decision that had found it necessary to distinguish sued a domestic company for copyright infringement, alleging that between physical separability and conceptual separability for the defendant unlawfully copied its pictures of the ocean floor, copyright protection to adhere; in other words, the physical article copies the defendant obtained from the Canadian government. need not survive after the design is extracted for copyright protection The appellate court held that, although the plaintiff did not in the design to apply. As the Court remarked: “A fresco painted on allege domestic copyright infringement, this failure was not a a wall . . . would not lose copyright protection, for example, simply fatal jurisdictional defect. The court explained that the necessity because it was designed to track the dimensions of the surface on that infringing behaviour be domestic is a necessary element of which it was painted.” Id. at 1012. the merits of the plaintiff’s claim – but not of jurisdiction. On a second issue, whether the defendant had unlawfully imported Is it “Fair Use” to Ask “Who’s on First”? Fans of the great copies of the subject works, the court disagreed with the plaintiff’s American comedy team Abbott and Costello may take great interest argument that the “act of state” doctrine, which limits a U.S. court’s in a decision applying the fair use defence (defence discussed in determination of the validity of a foreign government’s acts, barred Section 5.4): TCA TelevisionCorp. v. McCollum, 839 F.3d 168 (2nd the court from determining whether the copies of the works at issue Cir. 2016). This case involved the mid-twentieth century comedy made by the Canadian government were lawfully made. The court duo’s famous baseball routine, in which the two men played off a held the importation question to be outside the scope of the act of misunderstanding about the line-up of a baseball team including state doctrine. As to the plaintiff’s claim that the Canadian seismic players called “Who”, “What”, and “I Don’t Know”, illustrating how company was also contributorily liable for inducing the copying those names created confusion in their dialogue. The defendants of the works by the Canadian government agency, the court held created and produced a play mimicking that routine, in which the that the doctrine of extraterritoriality barred this claim, because main character, wooing his hoped-for girlfriend, acts out parts of the direct infringement upon which it was premised occurred in the Abbott and Costello routine with no less than a puppet for his Canada, not in the United States. partner. Unhappy with this production, Abbott and Costello’s heirs sued for copyright infringement. Finding the defendant’s play did Posting on the Internet Does Not Automatically Create not so clearly constitute a fair use so as to warrant dismissal of the Inference of Defendant’s Access to Copyrighted Work. In case, the U.S. Court of Appeals for the Second Circuit applied the Design Basics, LLC v. Lexington Homes, Inc., 858 F3d 1093 (7th fair use factors articulated in the Copyright Act. The court observed Cir. 2017), an owner of copyrights for architectural designs of that: The play was not “transformative” where it did not alter the homes sued a competitor for copyright infringement. The plaintiff, routine; that the defendant used the comedy sketch at issue for a effectively a copyright “troll” that paid its employees and agents a commercial purpose; the comedy sketch was very protectable as an bounty to spot potential cases, furnished scant evidence to prove original comedy for public entertainment; that the amount of the the defendant ever saw its architectural plans or reproduced them, work appropriated played on the central joke in the routine; and that relying upon a declaration from a draftsman stating that Design the plaintiff had alleged a derivative market for licensing the routine Basics’ plans were widely distributed on its company’s website. In and market harm caused by the defendant’s infringement. The court turn, the defendants’ shareholders and employees denied seeking the nevertheless upheld dismissal of the case, finding the plaintiffs plaintiff’s plans prior to suit. In upholding the grant of summary to be out of luck because they did not plead ownership of a valid judgment for the defendant, the U.S. Court of Appeals for the copyright interest in the routine as a matter of law by assignment, Seventh Circuit explained that the plaintiff had to show that the work for hire, of merger of the routine (into certain films) so that the defendant had “access” to the plaintiff’s work for infringement to plaintiffs did not have to renew the copyright in it separately. lie. “Access”, in turn, meant the defendant had the opportunity to copy the original work. Considering the novel issue within the Pending Copyright Legislation. On the legislative front, pending Circuit as to whether mere posting of the copyrighted work on the in the U.S. Senate currently is legislation that would affect the plaintiff’s website, without more, constituted access, the court noted Register of Copyrights, the chief executive officer of the United that, even if the defendant were aware of the plaintiff, that fact alone States Copyright Office. “The Register of Copyrights Selection and would not suffice to show access. Accountability Act”, H.R. 1695 – which at the time of this writing has passed in the U.S. House of Representatives – would require the The U.S. Supreme Court Speaks on the Protectability of Design President, with the advice and consent of the Senate, to appoint the Elements. The 2017 Guide reported on a case out of the U.S. Court Register of Copyrights. The Register of Copyrights is currently is of Appeals for the Sixth Circuit considering when design elements appointed by the Librarian of Congress. of a useful article are protectable, noting that the appellate court

Recent Decisions Rejecting Application of DMCA Safe Harbors: 7.2 Are there any particularly noteworthy issues around The Digital Millennium Copyright Act (DMCA) provides immunity the application and enforcement of copyright in from secondary liability for copyright infringement to certain relation to digital content (for example, when a work classes of Internet service providers, so long as they comply with is deemed to be made available to the public online, hyperlinking, etc.)? certain provisions designed to diminish the amount of copyright infringement engaged in through their systems. Among these is the requirement that the service provider adopt a reasonable policy The U.S. courts decided several cases examining the necessary for terminating customers who are repeat copyright infringers. In elements for liability of an actor in the digital realm, as well as a EMI Christian Music Grp. v. MP3tunes, LLC, 844 F.3d 79 (2d Cir. suit involving whether an Internet streaming company should enjoy USA 2016), the U.S. Court of Appeals for the Second Circuit reversed a compulsory licence rights. district court decision on the meaning of “repeat infringer” under Liability for Direct Infringement Requires “Volitional” the DMCA. The lower court had ruled that only those infringers Conduct: In Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th who upload infringing content to the Internet knowing that their Cir. 2017) and BWP Media USA, Inc. v. T&S Software Assocs., Inc., conduct infringes another’s copyright could be considered “repeat 852 F.3d 436 (5th Cir. 2017), the U.S. Courts of Appeals for the infringers.” In reversing, the Second Circuit clarified that the Ninth and Fifth Circuits confirmed that the so-called “volitional DMCA’s definition of “repeat infringer” does not include an intent conduct” requirement is an element of a claim for direct copyright element. infringement against any entity that provides a service or technology No Compulsory Licence for Streaming Broadcast TV On-Line: (for instance, a tape recorder or DVR) that could enable its customers The Copyright Act provides a statutory licence that permits cable potentially to infringe a copyright. In other words, when an entity system operators to re-transmit over-the-air broadcast signals on like an on-line message board website provides the means for its their system without negotiating for copyright licences for the customers to infringe a copyright through the use of its services – works embodied on the over-the-air signal. In a recent decision, Fox for instance, by uploading an infringing photograph to the message Television Stations, Inc. v. Aereokiller, LLC, 851 F.3d 1002 (9th Cir. board – it will not be held liable for direct copyright infringement 2017), the Ninth Circuit ruled that this compulsory licence was not merely for passively providing these tools. To be found liable for available to an Internet streaming company that retransmitted over- direct infringement, it must instead have engaged in “volitional the-air broadcast signals via the Internet, because the streaming conduct”, which has been commonly understood not to state an company did not qualify as a “cable system” as it is defined intent requirement, but rather to mean that the entity to be found in the statutory licence. In so ruling, the court relied heavily on liable for direct infringement must have been actively involved in Copyright Office reports and testimony before Congress stating that the infringement, not just a passive participant. There had been the Internet-based retransmission services are not “cable systems” doubt whether this rule survived the U.S. Supreme Court’s ruling in under the terms of the statutory licence. American Broadcasting Cos. v. Aereo, Inc., 134 S.Ct. 2498 (2014), in which the U.S. Supreme Court found that the provider of an online streaming service was liable for direct infringement without Acknowledgment squarely addressing the volitional conduct requirement. While some observers and litigants had argued that the U.S. Supreme Court’s The authors acknowledge the valuable contributions to this chapter decision impliedly overruled the volitional conduct requirement, by their colleague, Maxwell C. Preston, Esq., an associate in the these decisions show that, at least in the Fifth and Ninth Circuits, New York office of the firm. that is not the case.

Roberta L. Horton Michael Kientzle Arnold & Porter Kaye Scholer LLP Arnold & Porter Kaye Scholer LLP 601 Massachusetts Ave, NW 601 Massachusetts Ave, NW Washington, DC 20001 Washington, DC 20001 United States United States

Tel: +1 202 942 5161 Tel: +1 202 942 5653 Email: [email protected] Email: [email protected] URL: www.apks.com URL: www.apks.com USA

Roberta Horton focuses her practice on trademark, domain name, Michael Kientzle has experience representing clients in a wide and copyright law. She handled one of the first cases challenging range of civil matters before state and federal courts, as well as domain name infringers, and assisted in writing the statute protecting representing copyright owners before the United States Copyright trademark owners against domain name infringers. She litigates both Office. Additionally, Mr. Kientzle’s practice includes advising clients on before the federal courts and the Trademark Trial and Appeal Board. trademark matters and assisting clients in enforcing their trademark rights, including through arbitration proceedings before the World Ms. Horton has represented clients in many industries, including Intellectual Property Organization and the National Arbitration Forum. sports, food, telecommunications, tobacco, and hospitality. She also represents numerous nonprofits, including the environmental Mr. Kientzle graduated cum laude from Georgetown University Law organisation EarthShare and the largest children’s literacy organisation Center. While at Georgetown, Mr. Kientzle served as a law clerk to nationwide, Reading Is Fundamental. Senator Amy Klobuchar, and was a judicial intern to the Hon. Judge Block of the Court of Federal Claims. Ms. Horton has been ranked in Chambers (Washington DC region), IP Legal 500 and listed in the 2010 Guide to the World’s Leading Women in Business Law. Ms. Horton is a summa cum laude graduate of Yale University and a graduate of Yale Law School. Prior to joining the firm, she clerked on the US Court of Appeals for the Fourth Circuit for the Honorable Sam J. Ervin III.

Arnold & Porter Kaye Scholer is a 1,000+ lawyer firm with sophisticated litigation and transactional capabilities, and renowned regulatory experience. Market-leading companies turn to us for help protecting their IP rights in the United States, European Union, and other parts of the world. Our copyright practice is unique in terms of the clients we represent, the issues we handle, and the bodies before which we practice. We work across geographic, cultural, technological and ideological borders, to offer clients forward-looking, results-oriented solutions that resolve their US, international and cross-border legal needs.

Vietnam

BROSS & PARTNERS Le Quang Vinh

transformed, compiled, annotated or selected work) of the above 1 Copyright Subsistence list shall only be protected if such protection is not prejudicial to the copyright in the works used to create such derivative works. 1.1 What are the requirements for copyright to subsist in However, Vietnam does not accept protection in favour of three a work? types of subject matters: (a) daily news as mere items of information; (b) legal instruments, administrative and other documents in the There are no special requirements for copyright to subsist in a work, judicial domain, and official translations of such documents; and (c) thereby in accordance with the global norm, all literary and artistic processes, systems, operational methods, concepts, principles and works as defined in the Berne Convention are copyrightable in data. Vietnam on the condition that they are created and fixed in a certain material form or also known as fixed in any tangible medium of 1.3 Is there a system for registration of copyright and if expression with originality. A work’s originality, as explained at so what is the effect of registration? Section 14(3) of the 2005 IP Law as revised in 2009 (IP Law), is understood to mean that it must be created directly and personally Yes. Upon request, a certificate of registered copyright or a certificate by authors through their intellectual labour and without copying the of registered related rights may be granted by the Copyright Office works of others. Performances, audio and visual fixation, broadcasts of Vietnam (COV), an agency under the Ministry of Culture, Sports or satellite signal carrying coded programmes are protected in the and Tourism. However, such certificate shall not be a compulsory form of related rights (neighbouring rights) provided that they are pre-requisite for entitlement to copyright or related rights. Indeed, fixed or displayed without causing loss or damage to copyright. concerned parties are recommended to register, since those who are granted certificates of registered copyright or certificates of 1.2 On the presumption that copyright can arise in registered related rights shall not bear the burden of proving such literary, artistic and musical works, are there any copyright or related rights in a dispute. other works in which copyright can subsist and are there any works which are excluded from copyright protection? 1.4 What is the duration of copyright protection? Does this vary depending on the type of work? Protected literary and artistic works under Section 14 of the IP Law comprise: The duration of protection varies subject to the type of copyrighted work, and under the laws of Vietnam, the term of protection (a) literary works, scientific works, textbooks, teaching courses applicable for a set of moral rights is different from that of a group and other works expressed in written language or other characters; of economic rights. (b) lectures, addresses and other speeches; Such Section 19 moral rights as (a) to give titles to their works, to attach their real names or pseudonyms to their works, (b) to have (c) press works; their real names or pseudonyms acknowledged when their works (d) musical works; are published or used, (c) to protect the integrity of their works, (e) stage works; and to forbid other persons to modify, edit or distort their works in (f) cinematographic works and works created by a process whatever form, causing harm to the honour and reputation of the analogous to cinematography; author, and (d) to publish their works or to authorise other persons (g) plastic art works and applied art works; to publish their works, shall be protected indefinitely, except for the (h) photographic works; moral right under (d) above. (i) architectural works; Relating to Section 20, economic rights comprise the right (a) to (j) sketches, plans, maps and drawings related to topography or make derivative works, (b) to display their works to the public, (c) scientific works; to reproduce their works, (d) to distribute or import the original (k) folklore and folk art works; and or copies of their works, (e) to communicate their works to the public by wireless or landline means, electronic information (l) computer programs and collections of data. networks or other technical means, and (f) to lease the original or Please bear in mind that derivative works (defined as a work copies of cinematographic works and computer programs, in case translated from one language into another, or an adapted, modified,

of being published, cinematographic, photographic, stage, applied art and anonymous works are protected for a period of 75 years 2.2 Where a work is commissioned, how is ownership of from the date of first publication. Where these cinematographic, the copyright determined between the author and the commissioner? photographic, stage and applied art works have not yet been published for 25 years from the date of fixation, their protection term would be 100 years from their fixation date. In the case that any organisation or individual enters into a contract with an author (other than the author whose creation is formed whilst Works that are absent from the above list shall be protected for the performing on the basis of an employee-employer relationship) for whole life of the author and 50 years after his or her death, and in the creation of a work, that organisation or individual shall be the case of a work of joint authors, the term of protection shall expire owner of all economic rights under Section 20, plus one of the four in the 50th year after the death of the last surviving co-author. It is

moral rights under Section 19, being the right to publish his/her Vietnam worth noting that the last right belonging to the group of moral rights works or to authorise other persons to publish his/her works, unless is the right “to publish their works or to authorise other persons to otherwise agreed. publish their works” and has a definite term of protection the same as that of the economic rights mentioned above. 2.3 Where a work is created by an employee, how is ownership of the copyright determined between the 1.5 Is there any overlap between copyright and other employee and the employer? intellectual property rights such as design rights and database rights? Where any organisation assigns the task of creating a work to an author who belongs to such organisation, the organisation shall be Yes, except for databases. Under the laws of Vietnam, copyright the owner of the copyright entitled to hold all economic rights under protection conferred on computer programs shall include databases Section 20, plus one of the four moral rights under Section 19, being or data collections that are defined as a set of data which has been the right to publish his/her works or to authorise other persons to selected or arranged in a creative way and expressed in electronic or publish his/her works, unless otherwise agreed. other forms. Nevertheless, copyright protection of data collections shall not extend to the protection of the data itself, and must not be prejudicial to copyright in the data itself. 2.4 Is there a concept of joint ownership and, if so, what rules apply to dealings with a jointly owned work? Overlap between copyright and other IP rights may occur if the subject matter (e.g. information on a package of product) is granted Section 38(1) of the IP Law provides that co-authors who use their protection in the form of all or either a copyright, trademark or time, finance and material or technical facilities to jointly create industrial design, provided that such subject matter is deemed to works shall share the rights to such works stipulated in Section have qualified for protection of each or all of these types ofIP 19 (moral rights) and Section 20 (economic rights). Section 38(2) rights. Hence, there might occur a conflict of law where the same further defines that co-authorship means two or more than two subject matter is protected in the form of a copyright, trademark or authors that jointly create a work, and this provision also ascertains industrial design by different entities or individuals. In settlement the rule that each of the joint authors who own their joint moral and of this conflict, there are some rules, although incomplete and economic rights may exploit or use independently his/her rights on inadequately generalised, in the IP Law and its regulations; namely, the condition that such independent use may be detachable and does industrial property rights may be cancelled or prohibited from use not prejudice the parts of the work of the other co-authors. if they conflict with another organisation’s or person’s previously established rights. 3 Exploitation 1.6 Are there any restrictions on the protection for copyright works which are made by an industrial process? 3.1 Are there any formalities which apply to the transfer/ assignment of ownership? No provision is available. By law, the transfer/assignment of ownership of a copyrighted work shall comply with some required formalities; in particular, the 2 Ownership contract must be made in writing wherein contains the following principal terms and conditions: (a) names and addresses of the assignor and the assignee; 2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or (b) grounds for the assignment; 2.3 apply)? (c) price and method of payment; (d) rights and obligations of the parties; and Basically speaking, an author is deemed as the first owner of (e) liability for contractual breach. copyright. Section 36 of the IP Law defines the copyright owner It is to be observed that the authors shall not be permitted to assign as an organisation or individual who holds one, several or all of the moral rights stipulated in Section 19 except for the right of the economic rights. Further, where there is evidence to believe publication and of allowing others to publish. Likewise, performers that authors are duly those who used their own time, finance and shall not be permitted to assign the moral rights stipulated in material or technical facilities to create works then they would Section 29(2). In addition, attention is drawn that the performance, enjoy protection under both Section 19 moral rights and Section 20 amendment, termination or cancellation of a contract for the economic rights. assignment of copyright or related rights must comply with the provisions of the Civil Code of 2015.

3.2 Are there any formalities required for a copyright 4 Owners’ Rights licence?

4.1 What acts involving a copyright work are capable of Like the rule for prohibiting assignment of moral rights except being restricted by the rights holder? for the right of publication and of allowing others to publish, in the case of licensing a copyrighted work, except for the right of Generally speaking, acts involving a copyright work which are publication, neither of the moral rights may be licensed. Also, capable of being restricted by the rights holder would be one of acts performers shall not be permitted to license Section 29(2) moral of copyright infringement listed under Section 28 and below: rights consisting of right (a) to have their name acknowledged 1. Appropriating copyright in a literary, artistic or scientific Vietnam when performing, distributing audio and visual fixation or when work. broadcasting performances, and/or (b) to protect the integrity of the imagery of the performance, and to prevent others from modifying, 2. Impersonating an author. editing or distorting the work in any way prejudicial to the honour 3. Publishing or distributing a work without permission from and reputation of the performer. the author. 4. Publishing or distributing a work of joint authors without permission from the co-authors. 3.3 Are there any laws which limit the licence terms 5. Modifying, editing or distorting a work in any way which parties may agree (other than as addressed in questions 3.4 to 3.6)? prejudices the honour and reputation of the author. 6. Copying a work without permission from the author or No, there are not. copyright holder, except for two instances of fair use, being a copy of a work being made for scientific research or teaching purposes, and/or the copying of a work by a library for 3.4 Which types of copyright work have collective archival and research purposes under Section 25(1)(a)(dd). licensing bodies (please name the relevant bodies)? 7. Making a derivative work without permission from the author or copyright holder of the original work, except for Up to now, most common types of works have been managed the Section 25(1) fair use-based 10 circumstances. and granted licences to use by collective licensing bodies, such as 8. Using a work without permission from the copyright holder Vietnam Literary Copyright Center (VLCC), Recording Industry and without paying royalties, remuneration or other material Association of Vietnam (RIVA), Vietnam Center for Protection benefits in accordance with law, except for the Section 25(1) of Music Copyright (VCPMC), Vietnam Reproduction Right fair use-based 10 circumstances. Organization (VIETRRO) and Association for Protection of 9. Leasing out a work without paying royalties, remuneration or Performing Artist (APPA). The names of each of the collective other material benefits to the author or copyright holder. management bodies basically describe the types of works that each 10. Duplicating, producing copies of, distributing, displaying or one grants licences to. communicating a work to the public via a communications network or digital means without permission from the copyright holder. 3.5 Where there are collective licensing bodies, how are 11. Publishing a work without permission from the copyright they regulated? holder. 12. Deliberately destroying or de-activating the technical As provided by law, collective licensing bodies are all non-profit solutions applied by the copyright holder to protect copyright and non-governmental and their establishment and operation shall in his or her work. strictly comply with the current laws and regulations on setting up 13. Deliberately deleting or modifying electronic information in associations, according to which the charter for operation of each a work regarding the management of the rights to such work. collective licensing body, among other things, must have been 14. Manufacturing, assembling, transforming, distributing, approved by the State competent agency. As usual, among other importing, exporting, selling or leasing out equipment when things, the principles for the organisation and operation of collective knowing, or having grounds to know, that such equipment licensing bodies include that they are to be voluntary, self-managed; may de-activate technical solutions applied by the copyright democratic, equal, open and transparent; bear all of its operating holder to protect copyright in his or her work. costs; be non-profitable; and be obedient to the Constitution, laws 15. Making and selling a work with a forged signature of the and association’s charter. author of such work. 16. Importing, exporting or distributing copies of a work without 3.6 On what grounds can licence terms offered by a permission from the copyright holder collective licensing body be challenged?

4.2 Are there any ancillary rights related to copyright, Licence terms offered by a collective licensing body are regularly such as moral rights, and if so what do they protect, challenged in Vietnam in some particular cases; for example, in and can they be waived or assigned? circumstances where no authorisation is made by the owner of copyright in favour of the collective licensing body or, beyond the Yes. There are some statutory rights related to copyright and related scope of authorisation, the collective licensing body grants and rights which are known as moral rights, and these are separately and collects royalty, the user may refuse to pay such royalties when the independently existent for both copyright and related rights, except collective licensing body lists out extra works that are not actually the right of publication and except where all economic rights and used by them, or the rate of royalties is arguably too high and moral rights are held by the same person who has duly created the unreasonable. work bearing those copyright or related rights.

For copyright, the moral rights, as laid out above, are set out at force as they are assigned by the State to control and deal with the Section 19 and comprise four rights: (a) to give titles to their works, culture sector and copyright and related right matters. to attach their real names or pseudonyms to their works: (b) to have their real names or pseudonyms acknowledged when their works 5.2 Other than the copyright owner, can anyone else bring are published or used; (c) to protect the integrity of their works, a claim for infringement of the copyright in a work? to forbid other persons to modify, edit or distort their works in whatever form, causing harm to the honour and reputation of the In addition to the copyright holder, the licensee or the copyright author; and (d) to publish their works or to authorise other persons owner’s heirs are entitled to take legal action against infringement to publish their works. in a work, as long as the documents or evidences presented by For related rights provided for at Section 29(2), there are two types such persons prove that he/she has been granted a licence by the Vietnam of moral rights pertaining to performers: (a) to have their name copyright holder through a written licence contract or he/she is the acknowledged when performing, when distributing audio and visual heir of the copyright holder through a will and grant of probate. fixation or when broadcasting performances; and (b) to protect the integrity of the imagery of the performance, and to prevent others from modifying, editing or distorting the work in any way 5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, prejudicial to the honour and reputation of the performer. on what basis can someone be liable for secondary As presented above, Section 19 moral rights, except for the right infringement? of publication, cannot be subject to any licence or assignment transaction. Similarly, Section 29(2) moral rights enjoyable by In the IP Law, there is no provision regarding ‘secondary’ infringers, performers are not transferable. Therefore, under no circumstances only primary infringers. However, some regulatory provisions can these moral rights be waived, licensed or assigned. guiding the implementation of the IP Law regarding ‘secondary’ infringers are found, for example, in Joint Circular No. 07/2012/ 4.3 Are there circumstances in which a copyright owner TTLT-BTTTT-BVHTTDL on Stipulations on the Responsibilities is unable to restrain subsequent dealings in works for Intermediary Service Providers in the Protection of Copyright which have been put on the market with his consent? and Related Rights on the Internet and Telecommunications Networks (in force August 2012). Under this Joint Circular, This question relates to the exhaustion of intellectual property rights, intermediary service providers are obliged, among other things, establishing one of the limitations of intellectual property rights to remove and erase digital content in violation of copyright and commonly known as the exhaustion doctrine or first sale doctrine. related rights, and to cut off, stop and temporarily disconnect an internet cable or telecommunication transmission upon receipt of Under Section 125(2)(b), owners of protected industrial property a written request by the Ministerial Inspectorates of Ministry of rights have no right to prevent others from performing the following Information and Communications or Ministry of Culture, Sports acts: circulating, importing, exploiting utilities of products which and Tourism or other competent ministries. Also, intermediary were lawfully put on the market including overseas markets, except service providers are liable directly for damage recovery due to their for products put on the overseas markets by someone other than copyright or related rights violation in some cases, namely: a) when the mark owners or their licensees. Thus, this exhaustion rule is they are the initial source that uploaded, transmitted or provided merely applicable for IP subject matters consisting of inventions, digital content through a telecommunication network and internet designs, layout designs, business secrets, trademarks, tradenames or without the permission of copyright or related rights holders; or b) geographical indications, but not for copyright and related rights. when they modified, distorted or reproduced digital content in any In other words, up to now, Vietnam has been absolutely silent in form without the permission of the copyright or related rights holder. terms of whether a copyright owner is able or unable to restrain subsequent dealings within works which have been put on the market with his consent. 5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement? 5 Copyright Enforcement Yes, there are. A defence against a claim of infringement of a copyrighted work or a related right may be accepted if the defendant 5.1 Are there any statutory enforcement agencies and, if has successfully proved that his/her use of the work or related right so, are they used by rights holders as an alternative to civil actions? is within the fair use provisions set out in the IP Law. Such fair use is explicitly stated in Section 25 and Section 32 as cases where the Yes, there are. Under Section 200 of the IP Law, apart from copyright or related rights may be exercised without having to seek courts, the competent agencies (such as inspectorates, market permission or pay royalties or remuneration. management offices, customs offices, police offices and people’s The 10 defence circumstances as fair use included in Section 25(1) committees at all levels) have the authority to deal with acts of comprise: copyright infringement. Unlike most other countries across the (a) making one copy of the work for scientific research or world, administrative measures against copyright infringement or teaching purposes; pirated goods are commonly used by copyright holders rather than (b) reasonable quoting from a work in order to comment on civil proceedings or criminal liability because of practical reasons, or illustrate one’s own works, without misrepresenting the namely swift seizure and prevention, less time-consuming and author’s views; a simple procedure. However, it is recommended that copyright (c) quoting from a work in order to write an article published in infringement or piracy cases are submitted before the Ministry of a newspaper or periodical, in a radio or television broadcast Culture, Sports and Tourism’s inspectorates or its provincial junior or in a documentary, without misrepresenting the author’s views;

(d) quoting from a work in school or university for lecturing (b) goods suspected of infringement of intellectual property rights purposes without misrepresenting the author’s views and not or evidence related to the act of infringement of industrial for commercial purposes; property rights are likely to be dispersed or destroyed unless (e) copying a work by a library for archival and research they are protected in time. purposes; The goods suspected of infringing copyright or a related right or raw (f) performing of a stage work or other art work in mass cultural, materials and materials, facilities of production or trading of such communication or mobilisation activities without collecting goods may be subject to one of the following interim injunctions: fees in any form; (a) retention; (b) seizure; (c) sealing, or prohibiting any alteration of (g) audio-visual recording of a performance in order to report the original state, or prohibiting any movement; or (d) prohibiting current events or for teaching purposes; transfer of ownership. Other provisional urgent measures may be

Vietnam (h) photographing or televising plastic art, or an architectural, applied in accordance with the Civil Procedure Code of 2015. photographic, or applied art work displayed at a public place As a result of a court’s award, five permanent injunctions as in order to present images of such work; mentioned below may be decided to deal with organisations and (i) transcribing a work into braille or into characters of other individuals who have committed acts of infringement of copyright languages for the blind; and or a related right: (j) importing copies of another’s work for personal use. 1. Compulsory termination of the infringing acts. However, it is worth noting that the circumstances in (a) and (e) 2. Compulsory public apology and rectification. indicated above shall not be applied to architectural works, plastic 3. Compulsory performance of civil obligations. works and computer programs. 4. Compulsory payment of damages for loss. Four defence circumstances as fair use by Section 32(1) consist of: 5. Compulsory destruction, distribution or use for non- (a) the making of one copy of a work for personal scientific commercial purposes of goods, raw materials and materials, research purposes; and facilities used principally for the production or trading of (b) the making of one copy of a work for teaching purposes, goods which infringed intellectual property rights, provided except for performances, audio-visual fixation or broadcasts that such destruction, distribution or use will not affect the which have been published for teaching purposes; exploitation of rights by intellectual property right holders. (c) reasonable quoting from a work in order to provide information; and 5.6 On what basis are damages or an account of profits (d) the making of provisional copies of a work by a broadcasting calculated? organisation for broadcasting purposes when such organisation has the broadcasting right. The general principle for determining the damage and extent of Special attention should be paid to the structure of the Berne- damage shall be made on the basis of actual losses suffered by based three-step test in both Section 25 and Section 32, as this may intellectual property right holders due to acts of infringement of easily cause misunderstanding for many people including IP right intellectual property rights; thereby, loss and damage caused by acts enforcement bodies. However, in practice, in view of the current of infringement of copyright, related right shall comprise: fair use provisions, Vietnam’s transposition of its Berne Convention (a) material loss and damage including property loss, decrease and TRIPs members’ obligation is deemed obedient because these in income and profit, loss of business opportunity, and provisions incorporate the Berne-based three-step test comprising reasonable expenses for mitigating and remedying the (1) in certain special cases, provided that (2) such reproduction does material damage; and not conflict with a normal exploitation of the work, and (3) does (b) spiritual loss and damage including damage to honour, not unreasonably prejudice the legitimate interests of the author. dignity, prestige, reputation and other spiritual loss caused Thus, readers should go through Sections 25 and 32, especially to authors of literary, artistic and scientific works, as well as their sub-sections 2 which state, for instance, that organisations performers. and individuals who use the works stipulated in section 1 of this Where the plaintiff proves that an act of infringement of copyright article must neither affect the normal use of such works nor cause or related rights has caused the plaintiff material damage and upon prejudice the rights of the author or copyright holder, and must the request by the plaintiff, the court may decide the amount of provide information being the author’s name and the source and damages on one of the following bases: origin of the work, or organisations and individuals who use works (a) total material damage calculated in an amount of money stipulated in section 1 of this article must neither affect the normal plus profit derived by the defendant as a result of the act use of performances, audio and visual fixation or broadcasts, nor of infringement of intellectual property rights, where the cause prejudice the rights of performers, producers of audio and reduced profit amount of the plaintiff has not yet been visual fixation, or broadcasting organisations. included in such total material damage; (b) the cost of licensing an intellectual property object on the assumption that the defendant was licensed by the plaintiff 5.5 Are interim or permanent injunctions available? to use that object under a licence contract within a scope corresponding to the act of infringement that was committed; Yes. Interim and/or permanent injunctions are available in the or IP Law. Interim injunctions, also known as provisional urgent (c) where it is impossible to determine the amount of damages measures, may be awarded by a court upon or after the initiation of for material damage on the bases stipulated in sub-clauses (a) a lawsuit and before hearing the counter-opinion of the party that and (b) above, such amount of damages shall be set by the will be affected by such interim injunction if one of the following court depending on the extent of loss, but must not exceed cases occurs: 500 million dong. (a) there is a danger of irreparable damage to such intellectual Where a plaintiff proves that the act of infringement of intellectual property right holder; or property rights caused the plaintiff spiritual damage, the plaintiff shall have the right to request the court to decide on the amount of

damages depending on the extent of loss; this amount may range two years: (a) reproducing works, phonograms or video recordings, from 5 million to 50 million dong. or (b) distributing to the public copies of works, phonograms or In addition to the amount of damages stipulated above, a copyright video recordings. In the case a crime that has be committed falls holder also has the right to request the court to compel the into one of the abovementioned circumstances or such crime has organisation or individual who committed the act of infringement to been committed more than once, the offender may be served an pay reasonable costs of engaging a lawyer. aggravating penalty, being a fine of between 400 million and 1 billion dong, or sentenced to between six months and three years of imprisonment. 5.7 What are the typical costs of infringement proceedings and how long do they take? 6.2 What is the threshold for criminal liability and what Vietnam Typical costs for dealing with a claim of infringement before a court are the potential sanctions? include court fees and costs, lawyers’ fees and other costs such as translation and notarisation cost. In the case of dealing with the In order to determine whether an infringement of copyright or a infringement by administrative measures, no official cost is required related right is criminally liable under Section 170a(1) and subject in addition to lawyers’ fees and other disbursements. According to to a fine of between 50 million and 500 million dong or subject to the 2015 Civil Procedure Code, the time limit for a court to hear and non-custodial reform for up to two years, the following thresholds decide a lawsuit is two months counting from the date of acceptance should be met: (a) the offender reproduces works, phonograms or of the case. However, since this provision does not stipulate the video recordings, or the offender distributes to the public copies time limit applicable for a lawsuit having a foreign element, the time of works, phonograms or video recordings; and (b) the offender’s limit for this type of lawsuit is, therefore, indefinite. Please bear in infringement must be determined on a commercial scale. mind that, in practice, it may take six to 12 months to receive a first instance judgment. 7 Current Developments

5.8 Is there a right of appeal from a first instance judgment and if so what are the grounds on which an 7.1 Have there been, or are there anticipated, any appeal may be brought? significant legislative changes or case law developments? Yes. One of the litigants is entitled, within a period of 15 days from the date of the judgment, to appeal against the first instance Yes, there have been. The Penal Code No. 100/2015/QH13, as judgment. In case of appealing against a decision of temporary amended, supplemented some articles under Law No. 12/2017/ suspension or suspension of a proceeding made by the court of first QH14 (herein called the 2015 Penal Code) that will come into effect instance, the time limit for lodging an appeal shall be seven days as from January 1, 2018 and is the most significant and striking from the date on which the appellant receives the decision. development because (a) not only can the offender (natural person) who committed a crime infringing a copyright or related right be Subject to the particulars of the case, in its appeal, the appellant may charged criminally, but also the corporation of which offender is substantiate legal grounds and factual events on which the appeal is working on behalf or for the benefit of may be criminally liable, relied upon to persuade the appellate court to rehear a part or whole (b) criminal liability is imposed more aggravatingly, and (c) of the first instance judgment that is deemed not be fair or incorrect. enforceability and realisability of a crime which is an infringement of copyright or related right has reportedly become much clearer 5.9 What is the period in which an action must be and more feasible than before. In particular, Section 225 of the commenced? 2015 Penal Code stipulates that those who without permission of copyright or related copyright holders deliberately infringe on The statute of limitation for initiating a copyright infringement a commercial scale upon copyright or related rights currently lawsuit, where profit nature is directed at by both the plaintiff and protected in Vietnam by performance of either reproducing works, defendant, is two years counting from the date on which plaintiff phonograms or video recordings, or distributing to the public copies knew or should have known that his/her right and legal interest was of works, phonograms or video recordings, have gained illicit profit infringed. Where an infringement is dealt with via administrative of between fifty million dong and below three hundred million dong remedy, the statute of limitation would be the same. or have caused damage to the holders from one hundred million dong to below five hundred million dong or their infringing commodities valued at a range of one hundred million dong to below five hundred 6 Criminal Offences million dong shall be imposed a fine of between fifty million and three hundred million dong or subject to non-custodial reform for up to three years. 6.1 Are there any criminal offences relating to copyright infringement? 7.2 Are there any particularly noteworthy issues around Yes, there are. Criminal offence for infringing copyright or related the application and enforcement of copyright in rights is set out at Section 170a of the Penal Code of 1999 as revised relation to digital content (for example, when a work in 2009 (the 2009 Penal Code as amended) providing that those is deemed to be made available to the public online, hyperlinking, etc.)? who, without permission of holders of copyright or related rights, commit either of the following acts of infringing upon copyright or related rights currently protected in Vietnam on a commercial Protection of copyright or a related right of content in a digital or scale, shall be imposed a fine of between fifty million and five internet environment is presented briefly in the question 5.3 above. hundred million dong or subject to non-custodial reform for up to

Le Quang Vinh BROSS & PARTNERS Unit 1602A, 16th Floor, Charmvit Tower 117 Tran Duy Hung Street Cau Giay district, Hanoi Vietnam

Tel: +84 24 3555 3466 Email: [email protected] URL: www.bross.vn

Vietnam Le Quang Vinh is founding and senior partner of BROSS & PARTNERS. With 17 years of IP practice, including intensive experience accumulated during his time holding key positions in three prestigious IP local law firms, Vinh has been advising, prosecuting and representing thousands of cases or applications of both international and domestic companies in various fields of intellectual property law, in particular in the areas of trademarks, patents, designs and copyrights. Thanks to his non-stop effort and dedication, he has been honoured as one of the leading lawyers for four consecutive years (2014–2017) by the AsiaLaw Profiles. He has been selected as one of two researchers by the Ministry of Science and Technology and INTA and is finalising an academic report on how to effectively protect well-known trademarks in Vietnam. He also successfully defended his client “EMOBI”, one of his various successes, against allegations of copyright infringement with the game software “Playcrab” based on the App Store in the name of Beijing Playcrab Technologies Inc.

Being constantly recommended by Managing Intellectual Property, World Trademark Review, The Legal 500 Asia Pacific, AsiaLaw Profiles and Asian Legal Business, BROSS & PARTNERS’ non-stop developing Intellectual Property practice has proved its excellent competitiveness among other local law firms. As a Patent, Design and Trademark Agent already registered before the National Office of Intellectual Property of Vietnam (NOIP) and copyright agent before the Copyright Office of Vietnam since 2008, BROSS & PARTNERS is now offering reliable, contentious and non- contentious Intellectual Property services with affordable costs regarding Trademark, Industrial Design, Patent, Copyright and Domain Names in Vietnam. BROSS & PARTNERS’ clients include corporations listed in Forbes Magazine’s ‘Asia’s 200 best under A billion’ list, companies in the ‘Top 500 Vietnamese Largest Private Enterprises (VNR500)’ list and a number of regional and local companies as well. Hanoi Office (principal): Unit 1602A, 16th Floor, Charmvit Tower, 117 Tran Duy Hung str., Trung Hoa Ward, Cau Giay Dist., Hanoi, Vietnam. Ho Chi Minh City Office (branch): Suite 501, 5th Floor, HAD Building, 31A Nguyen Dinh Chieu Street, District 1, Ho Chi Minh, Vietnam. Phone: +84 24 3555 3466; Email: [email protected]; Website: www.bross.vn.

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